AnitaB.org v. Steve
Claim Number: FA2006001901471
Complainant is AnitaB.org (“Complainant”), represented by Chidera N. Anyanwu of Wilson Sonsini Goodrich & Rosati, California, United States. Respondent is Steve (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gracehoppercelebration.com>, registered with Google LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 23, 2020; the Forum received payment on June 23, 2020.
On June 23, 2020, Google LLC confirmed by e-mail to the Forum that the <gracehoppercelebration.com> domain name is registered with Google LLC and that Respondent is the current registrant of the name. Google LLC has verified that Respondent is bound by the Google LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 25, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 15, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@gracehoppercelebration.com. Also on June 25, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default. Respondent did however send an email to the Forum, see below.
On July 21, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant states that it is a non-profit organization that was established in 1994 with the main purpose of encouraging and supporting women in their technology-related aspirations. Complainant is well recognized as an organization on the frontlines of advancing women in technology and has received national and international recognition for its role in the advancement of women technologists. Its programs, reach millions of people, including students and employers. Since 1994, Complainant has accomplished its mission by offering social, professional and educational opportunities to women across the globe. Its notable offerings include BRAID, the Building Recruiting and Inclusion for Diversity program that helps computer science departments increase the percentage of women and underrepresented minority students in their undergraduate computing programs, as well as the Partner Program, which equips employers with the knowledge and resources they need to ensure equitable treatment of women in technical roles and create a pipeline for graduates into those roles. Most notable of Complainant’s offerings is its Grace Hopper Celebration, named for Grace Hopper, a rear admiral in the U.S. Navy who invented the first compiler in 1952. The Grace Hopper Celebration is a gathering of women in the technology and computer science industries from countries across the globe; it accommodates tens of thousands of people annually around technology-related events and presentations. Last year, over 27,000 people attended the Grace Hopper Celebration and represented 94 countries. Complainant’s annual Grace Hopper Celebration has been recognized worldwide, including features in news articles in NBC News, Forbes, Business Wire, CNBC US News, Fortune and Tech Crunch. Complainant asserts rights in the GRACE HOPPER CELEBRATION mark through its application for registration of the mark in the United States in 2017; it also asserts common law trademark rights dating back to 1994. Complaint owns other registered marks and a registered logo.
Complainant alleges that the disputed domain name is identical to its mark, as it incorporates the mark in its entirety and merely adds the “.com” generic top-level domain (“gTLD”).
According to Complainant, Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name and Complainant has not authorized Respondent’s use of the GRACE HOPPER CELEBRATION mark. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate or noncommercial fair use. Rather, Respondent uses the domain name to divert Internet users to a fraudulent website that impersonates Complainant in furtherance of a phishing scheme. The resolving website displays one of complainant’s registered marks and its registered logo. The disputed domain name was purchased during high preparations for the Grace Hopper Celebration, at a time when information regarding the event was in high demand. The registration of the disputed domain name has already caused harm to Complainant and its consumers who have submitted personal information to Respondent via the resolving website, believing the website to be affiliated with Complainant. Respondent’s registration of the disputed domain name is a blatant effort to exploit and mislead persons seeking information from Complainant, which is exactly the kind of abusive behavior that the UDRP was designed to address and correct.
Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith. Respondent uses the disputed domain name to disrupt Complainant’s business and attract Internet users to a website that phishes for personal information by passing off as Complainant. Additionally, Respondent had actual knowledge of Complainant’s rights in the GRACE HOPPER CELEBRATION mark at the time of registration.
B. Respondent
Respondent failed to submit a Response in this proceeding. In its email to the Forum, Respondent states in pertinent part: “We have purchased this domain for resale purposes. You can see there is no active website on this domain. But no one contacted us to purchase this domain, if you want to purchase it. It is available for resale.”
Complainant has rights in the mark GRACE HOPPER CELBRATION and uses it to organize an annual conference.
Complainant’s rights in its mark date back to at least 2017.
The disputed domain name was registered in 2019.
Complainant has not licensed or otherwise authorized Respondent to use its marks.
Respondent uses the disputed domain name to pass off as Complainant to conduct a phishing scheme, the resolving website mimics Complainant’s website featuring Complainant’s registered marks and logo.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant asserts rights in the RACE HOPPER CELEBRATION mark through its application to register the mark with the USPTO. A pending application may establish rights under Policy ¶ 4(a)(i). See Love City Brewing Company v. Anker Fog/Love City Brewing Company, FA1753144 (Forum Nov. 17, 2017) (pending trademark application which had been issued a Notice of Allowance held to sufficiently establish rights in the mark under ICANN Rule ¶ 4(a)(i)). Here, the Panel notes that the Second IU Extension was due on July 16, 2020. Therefore, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant also presents evidence showing that it has acquired common law rights in the mark, dating back to 1994. Policy ¶ 4(a)(i) does not require a complainant to own a trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding that “The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”). The Panel finds that Complainant does hold common law rights in the name for the purposes of Policy ¶ 4(a)(i).
The disputed domain name incorporates Complainant’s GRACE HOPPER CELEBRATION mark in its entirety and merely adds the “.com” gTLD. The addition of a gTLD does not distinguish a domain name from a mark. See Longo Brothers Fruit Markets Inc. v. John Obeye / DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM, FA 1734634 (Forum July 17, 2017) (“[O]f course it is well established in prior UDRP cases that the addition of a ‘.com’ suffix is irrelevant when determining if a disputed domain name is identical or confusingly similar to a trademark.”). Therefore, the Panel finds that the disputed domain name is identical to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant has not licensed or otherwise authorized Respondent to use its mark. Respondent is not commonly known by the disputed domain name: where a response is lacking, relevant WHOIS information can be used to determine if a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Here, the WHOIS information for the disputed domain name shows that the registrant’s name is “STEVE”. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Respondent uses the disputed domain name to cause confusion by directing Internet users to a website that seems to be connected to Complainant’s business in order to obtain their personal information. Specifically, the resolving website displays Complainant’s mark, and also its registered GHC mark and a related registered logo, and it prompts users to enter personal information in order to register for Complainant’s conference. Use of a disputed domain name in furtherance of a fraudulent phishing scheme is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See United States Postal Service v. Kehinde Okunola / Genuine ICT Centre, FA 1785420 (Forum June 6, 2018) (“Respondent uses the <uspscouriers.com> domain name both to sell services competing with the business of Complainant and to phish for personal identification information from Internet users. Neither of these uses of the domain name constitutes a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy.”); see also UBS AG v. Sms Vine / Ubs, Case No. FA 1889560 (Forum Apr. 16, 2020) (noting that website attached to domain name used complainant’s mark and logo to offer financial services in phishing scheme that was not legitimate or fair use); see also DaVita Inc. v. Cynthia Rochelo, Case No. FA 1738034 (Forum July 20, 2017) (“Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”); see also Juno Online Servs., Inc. v. Nelson, Case No. FA 241972 (Forum Mar. 29, 2004) (finding that using a domain name in a fraudulent scheme to deceive Internet users into providing their credit card and personal information is not bona fide offering of goods or services nor legitimate noncommercial or fair use). Accordingly, the Panel finds that Respondent fails to use the disputed domain name to make a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). And the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.
Respondent states that it acquired the disputed domain name in order to sell it. Offering to sell a confusingly similar domain name to the trademark owner for a price in excess of out of pocket costs can constitute bad faith registration and use under the Policy. While the case file does not contain any evidence of the price that Respondent would request, it would be reasonable to infer that a price in excess of out of pocket costs was intended. However, for the reasons given below, the Panel need not consider this matter further.
Apart from the above, Respondent has not presented any explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply (an in particular from its failure to specify a price for the sale of the disputed domain name) as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, as already noted, Respondent uses the disputed domain name to phish for Internet users’ personal information. This is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Wells Fargo & Co. v. Maniac State, FA 608239 (Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers); see also Hess Corp. v. GR, FA 770909 (Forum Sept. 19, 2006) (finding that the respondent demonstrated bad faith registration and use because it was attempting to acquire the personal and financial information of Internet users through a confusingly similar domain name).
Further, Respondent registered the disputed domain name with actual knowledge of Complainant’s mark: the resolving website mimics Complainant’s website and displays Complainant’s registered marks and logo. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant’s rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark prior to Respondent’s registration of the disputed domain name and that this constitutes bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <gracehoppercelebration.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: July 21, 2020
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