Stroer & Graff, Inc. v. Human Resourc
Claim Number: FA2007001906121
Complainant is Stroer & Graff, Inc. (“Complainant”), represented by Kevin M. Bovard of Baker & Hostetler LLP, California, USA. Respondent is Human Resourc (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <stroerandgraf.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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 27, 2020; the Forum received payment on July 27, 2020.
On July 28, 2020, Google LLC confirmed by e-mail to the Forum that the <stroerandgraf.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 August 3, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 24, 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@stroerandgraf.com. Also on August 3, 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 25, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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, Stroer & Graff, Inc., is a piledriving and shoring contractor. Complainant has common law rights in the STROER & GRAFF INC mark based upon continuous use of the mark for over 40 years. Respondent’s <stroerandgraf.com> domain name is identical and/or confusingly similar to Complainant’s mark since it merely removes a single letter “f” and the term “inc” from the mark and adds the “.com” generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <stroerandgraf.com> domain name because Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed Respondent’s use of the STROER & GRAFF INC mark. Additionally, Respondent fails to use the disputed domain name in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent fails to make any active use the disputed domain name. Further, Respondent uses the disputed domain name to impersonate Complainant in furtherance of a fraudulent email scam.
Respondent registered and uses the <stroerandgraf.com> domain name in bad faith. Respondent disrupts Complainant’s business and attracts users for commercial gain by impersonating Complainant in an email scam. Respondent also uses a privacy service to conceal its identity and provided false contact information. Finally, Respondent’s registration of the disputed domain name constitutes typosquatting.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, based upon Complainant’s uncontested allegations and evidence, the Panel finds that Complainant is entitled to the requested relief of transfer of the <stroerandgraf.com> domain name.
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 common law rights in the STROER & GRAFF INC mark. Under Policy ¶ 4(a)(i), a complainant is not required to own a registered trademark prior to the registration of the disputed domain name if the complainant can establish common law rights in the mark. See Psyonix Inc. v. robert gray / notpsyonix, FA 1759780 (Forum Jan. 3, 2018) (“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.”). Complainant need not provide evidence of trademark registration to show rights in the STROER & GRAFF INC mark.
Complainant claims common law rights in the STROER & GRAFF INC mark based upon continuous use of the mark for over 40 years. Common law rights in a mark may be established through evidence that the mark has acquired a secondary meaning. See Marquette Golf Club v. Al Perkins, 1738263 (Forum July, 27, 2017) (finding that Complainant had established its common law rights in the MARQUETTE GOLF CLUB mark with evidence of secondary meaning, including “longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising.”). Complainant provides evidence that the STROER & GRAFF INC mark has acquired a secondary meaning in connection with Complainant’s use of the mark in its business operations as well as its incorporation under the name “Stroer & Graff, Incorporated” and its use of the <stroerandgraff.com> domain name. The Panel finds that Complainant has sufficiently established common law rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <stroerandgraf.com> domain name is identical and/or confusingly similar to Complainant’s mark since it merely removes a single letter “f” and the term “inc” from the mark and adds the “.com” gTLD. Under Policy ¶ 4(a)(i), removal of a single letter from a mark is insufficient to overcome confusing similarity between a domain name and a mark. See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”). Similarly, deletion of a generic term and addition of a gTLD generally do not negate confusing similarity. See The Pros Closet, Inc. v. Above.com Domain Privacy, FA 1616518 (Forum June 3, 2015) (finding confusing similarity where the <proscloset.com> domain name merely omitted the first term (“the”) from Complainant’s THE PROS CLOSET mark, eliminated spacing between words, and added the “.com” gTLD.). The Panel finds that Respondent’s disputed domain name is confusingly similar to the STROER & GRAFF INC mark under Policy ¶ 4(a)(i).
Complainant has proved this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”). The Panel finds Complainant has made a prima facie case.
Complainant argues that Respondent does not have rights or legitimate interests in the <stroerandgraf.com> domain name because Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed Respondent’s use of the STROER & GRAFF INC mark. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.). Additionally, lack of authorization to use a complainant’s mark may demonstrate the respondent is not commonly known by the disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information of record lists the registrant as “Human Resourc,” and Complainant contends that it did not authorize Respondent’s use of the STROER & GRAFF INC mark. Complainant also claims that Respondent provided false WHOIS information based upon a business entity search. The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant also argues that Respondent fails to use the <stroerandgraf.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent fails to make any active use the disputed domain name. Failure to make active use of a domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or (iii). See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). Complainant provides a screenshot of the disputed domain name which resolves to an error message. The Panel finds that this use does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Complainant claims that Respondent uses the disputed domain name to impersonate Complainant in furtherance of a fraudulent email scam. Use of an email address associated with a disputed domain name to pass off as a complainant in furtherance of fraud is not indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the at-issue domain name to pose as Complainant’s CEO by means of email addresses at the confusingly similar domain name in an attempt to determine Complainant’s ability to process a transfer. Using the domain name in this manner is neither a bona fide offering of goods and services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)). Complainant claims that Respondent uses the disputed domain name to impersonate Complainant’s employees through email and unlawfully solicit payment from Complainant’s customers. Complainant provides an example of a fraudulent email sent by respondent. The Panel finds that Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has proved this element.
Complainant argues that Respondent registered and uses the <stroerandgraf.com> domain name in bad faith because Respondent impersonates Complainant in an email scam. Use of a disputed domain name to impersonate a complainant in furtherance of a fraudulent scheme may constitute bad faith pursuant to Policy ¶ 4(b)(iii). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the <abbuie.com> domain name to impersonate Complainant’s CEO. Such use is undeniably disruptive to Complainant’s business and demonstrates bad faith pursuant to Policy ¶ 4(b)(iii), and/or Policy ¶ 4(b)(iv)”). Complainant claims that Respondent uses the disputed domain name to impersonate Complainant’s employees through email and unlawfully solicit payment from Complainant’s customers. This is evidence that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iii) and/or (iv).
Complainant also argues that Respondent’s registration of the <stroerandgraf.com> domain name
constitutes typosquatting. Typosquatting may act as independent evidence of bad
faith per Policy ¶ 4(a)(iii). See Adorama, Inc. v. Moniker Privacy Services,
FA1503001610020 (Forum May 1,
2015) (“Respondent has also engaged in typosquatting, which is additional
evidence of bad faith registration and use under Policy ¶ 4(a)(iii).
Respondents who capitalize on common typing errors engage in bad faith
registration under Policy ¶ 4(a)(iii).”). Complainant argues that Respondent
has engaged in typosquatting by omitting a single letter and the term “inc”
from Complainant’s mark. Complainant also notes that Respondent’s domain name
differs from Complainant’s legitimate <stroerandgraff.com> domain name
only by the deletion of a single letter “f.” The Panel finds that Respondent
had engaged in typosquatting which is evidence of bad faith pursuant to Policy
¶ 4(a)(iii). The Panel finds that Respondent registered and uses the domain
name in bad faith.
Complainant has proved this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <stroerandgraf.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
August 31, 2020
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page