Bayer Cropscience LP v. ike defelice / m defelice
Claim Number: FA2007001904197
Complainant is Bayer Cropscience LP (“Complainant”), represented by Phillip Barengolts of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, United States. Respondent is ike defelice / m defelice (“Respondent”), United States.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <forbid4f.com> and <forbid4f.info>, registered with GoDaddy.com, 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 14, 2020; the Forum received payment on July 14, 2020.
On July 15, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <forbid4f.com> and <forbid4f.info> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 July 20, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 10, 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@forbid4f.com, postmaster@forbid4f.info. Also on July 20, 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.
On August 13, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 names be transferred from Respondent to Complainant.
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” The WHOIS information for the domain names indicates that the two listed registrant names are “ike defelice” and “m defelice” which have the same last name of “defelice,” and further have the same mailing address. Complainant therefore claims that the two registrants are connected. Complainant’s unopposed evidence tends to show that the nominal registrants of the at-issue domain names are actually the same person or entity. Therefore, the Panel will treat the domain names’ registrants as a single entity for the purposes of this proceeding.
A. Complainant
Complainant contends as follows:
Complainant is a global leader in agricultural products.
Complainant has rights in the FORBID mark through its registration with the United States Patent and Trademark Office (“USPTO”).
Complainant has common law rights in the FORBID 4F mark due to the longstanding use in commerce of the mark.
Respondent’s <forbid4f.com> and <forbid4f.info> domain names are identical to Complainant’s FORBID 4F mark. Respondent incorporates the mark in its entirety and adds the “.info” or “.com” generic top-level domain (gTLD).
Respondent lacks rights or legitimate interests in the <forbid4f.com> and <forbid4f.info> domain names as Respondent is not commonly known by the at-issue domain names nor did Complainant authorize Respondent to use its FORBID or FORBID 4F marks in any way. Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent attempts to sell Complainant’s product and obtain financial information from its customers.
Respondent registered and used the <forbid4f.com> and <forbid4f.info> domain names in bad faith as Respondent uses the domain names to attempt to sell Complainant’s products with authorization and without the intent to deliver such products and also attempts to fraudulently gather financial information from consumers. Respondent had actual knowledge of Complainant’s rights in the FORBID and FORBID 4F marks prior to registration of the disputed domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the FORBID mark through its registration of such mark with the USPTO and otherwise.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain names after Complainant acquired rights in its FORBID trademark.
Respondent registered and uses the at-issue domain names to defraud third parties.
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”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of its FORBID mark with the USPTO is sufficient to allow the Panel to find that Complainant has rights in a mark under the Policy. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office.)
Respondent’s at-issue < <forbid4f.com> and <forbid4f.info> domain names consists of Complainant’s entire FORBID trademark followed by the characters “4F” and the top-level domain name of either “.com” or “.info.” Although Complainant claims it has common law trademark rights in FORBID 4F the Panel need not reach a determination as to whether or not Complainant’s has such common law rights since the differences between the at-issue domain names and Complainant’s registered FORBID trademark are insufficient to distinguish either domain name from Complainant’s FORBID mark for the purposes of Policy ¶ 4(a)(i). Therefore, the Panel finds that the at-issue domain name is confusingly similar to Complainant’s FORBID mark. See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Absent contrary evidence of Policy ¶ 4(c) circumstances or other evidence supporting a finding of Respondent’s having rights or legitimate interests in the domain name(s), Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain names. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of either at-issue domain name.
The WHOIS information for the at-issue domain names identifies the domain names’ registrants as “ike defelice / m defelice” and there is no evidence in the record which suggest that the Respondent is known by either at-issue domain name. Therefore, the Panel concludes that under Policy ¶ 4(c)(ii) Respondent is not commonly known either at-issue domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name).
Furthermore, Respondent uses the <forbid4f.com> and <forbid4f.info> domain names to pretend to sell Complainant’s products and obtain financial information from would be customers. Respondent’s use of the domain names to offer unauthorized products without the intent to deliver such products and/or to fraudulently extract private financial information is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See The Lincoln Electric Company v. Privacy protection service - whoisproxy.ru, FA 1651493 (Forum Jan. 13, 2016) (noting that, as Respondent used the disputed domain to promote Complainant’s distributor without license to do so, Respondent did not demonstrate any bona fide offering of goods or services or any legitimate noncommercial or fair use), see also Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Given the forgoing, Complainant satisfies its initial burden under Policy ¶ 4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of legitimate interests in respect of either at-issue domain name.
Respondent’s <forbid4f.com> and <forbid4f.info> domain names were each registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First as mentioned above regarding rights and legitimate interests, Respondent pretends to sell Complainant’s products without the intent of delivering such products (or any product) and also attempts to gather financial information from defrauded consumers. The websites addressed by the at-issue domain names use both FORBID and FORBID 4F to offer Complainant’s insecticide/miticide products to website visitors and in the process requests their credit card information. Respondent delivers nothing. Using the at-issue domain names to commit fraud by pretending to sell Complainant’s products and gather private financial information shows Respondent’s bad faith per Policy ¶ 4(b)(iii) and otherwise. See Kipling Apparel Corp. v. Yan Feng Geng, FA 1703296 (Forum Dec. 20, 2016) (finding the respondent registered and used the <kiplingstores.com> domain name in bad faith per Policy ¶ 4(b)(iii) because the respondent used the domain name to sell the complainant’s products that were either counterfeit or genuine products resold without authorization) see also Google Inc. v. Domain Admin / Whois Privacy Corp., FA1506001622862 (Forum Aug. 10, 2015) (finding that the respondent’s apparent use of the disputed domain name in furtherance of a ‘phishing’ scheme further established its bad faith registration and use of the disputed domain name under Policy ¶ 4(a)(iii)).
Moreover, Respondent had actual knowledge of Complainant’s rights in the FORBID mark when it registered <forbid4f.com> and <forbid4f.info> as a domain names. Respondent’s actual knowledge is evident from the notoriety of Complainant’s trademark, the inclusion of “4F” in the at-issue domain names thereby mimicking a claimed common law mark of Complainant, and the offering of Complainant’s products for sale at the <forbid4f.com> and <forbid4f.info> websites as discussed above. Respondent’s registration and use of confusingly similar domain names with prior knowledge of Complainant’s rights in such domain names further shows Respondent’s bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); see also, Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <forbid4f.com> and <forbid4f.info> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: August 13, 2020
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