Carvajal Technology Group, LLC v. Mark Carvajal / Carvajal Technology Group
Claim Number: FA2008001908193
Complainant is Carvajal Technology Group, LLC (“Complainant”), represented by Stephanie Schmidt of Norton Rose Fulbright US LLP, United States. Respondent is Mark Carvajal / Carvajal Technology Group (“Respondent”), United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <carvajaitech.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Charles A. Kuechenmeister, Panelist.
Complainant submitted a Complaint to the Forum electronically on August 12, 2020; the Forum received payment on August 12, 2020.
On August 14, 2020, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <carvajaitech.com> domain name (the Domain Name) is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 17, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of September 8, 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@carvajaitech.com. Also on August 17, 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 September 14, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister 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 is in the business of hosting, managing, upgrading, and servicing pharmacy software solutions. It has common law rights in the CARVAJAL TECHNOLOGY GROUP mark based on continuous use and industry recognition. Respondent’s <carvajaitech.com> Domain Name is confusingly similar to Complainant’s mark since it differs from the mark only by changing the “l” in CARVAJAL to an “i,” shortening TECHNOLOGY to “tech,” dropping the word GROUP, and adding the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the Domain Name. The person or entity which registered the Domain Name furnished false information to the registrar. That person or entity is not affiliated or connected with Complainant and Complainant has not authorized or permitted it to use Complainant’s CARVAJAL TECHNOLOGY GROUP mark. Additionally, Respondent is not using the Domain Name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, Respondent uses it to impersonate Complainant in furtherance of an e-mail phishing scheme. Respondent’s intentional typosquatting is further evidence of a lack of rights or legitimate interests in the Domain Name.
Respondent registered and uses the Domain Name in bad faith. It uses the Domain Name in connection with a fraudulent phishing scheme and registered the Domain Name with actual knowledge of Complainant’s rights in the CARVAJAL TECHNOLOGY GROUP mark.
B. Respondent
Respondent did not submit a Response in this proceeding.
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 a complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:
(1) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) the 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, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations 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. Nevertheless, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. 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”), WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), at ¶ 4.3 (“In cases involving wholly unsupported and conclusory allegations advanced by the complainant, . . . panels may find that—despite a respondent’s default—a complainant has failed to prove its case.”).
The Panel finds as follows with respect to the matters at issue in this proceeding:
Complainant has not registered its CARVAJAL TECHNOLOGY GROUP mark with the United States Patent and Trademark Office, but Policy ¶ 4(a)(i) does not require a complainant to own a registered its mark if it can demonstrate common law rights in the mark. 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.”). To establish common law rights in a mark, a complainant generally must prove that the mark has generated a secondary meaning, which is proven by showing exclusive use of the mark in commerce for a period of time, evidence of advertising and sales, recognition of the mark by customers, unsolicited media attention, or other evidence showing that the relevant consuming public has come to associate the mark with goods or services provided by a single vendor. Karen Koehler v. Hiroshi Ishiura/ Lifestyle Design Inc., FA 1730673 (Forum June 1, 2017) (holding that Complainant established common law rights in her personal name since “[a] mark can generate a secondary meaning sufficient to establish Complainant’s rights when consistent and continuous use of the mark has created distinctive and significant good will….”), Gourmet Depot v. DI S.A., FA 1378760 (Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”). The WIPO Overview, at ¶ 1.3 lists a number of factors that support a claim of common law trademark rights, including “(i) the nature and duration of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.”
Complaint Exhibit C is a declaration of Mark Carvajal, who organized Complainant and is its chief executive officer. In this Declaration he states as follows: Carvajal Technology was formed on January 25, 2012. Since that time, Carvajal Technology has continuously and prominently used the trademark CARVAJAL TECHNOLOGY GROUP to identify its services, namely, pharmacy software services. Carvajal Technology achieved approximately $3.7 million in sales in the 2019 fiscal year. Carvajal Technology spends approximately $40,000 annually on its advertising and marketing efforts under the CARVAJAL TECHNOLOGY GROUP trademark. Today, Carvajal Technology offers its services in 23 states across the U.S. To promote recognition of the CARVAJAL TECHNOLOGY GROUP name and mark, Carvajal Technology makes appearances and/or speaking engagements at industry conferences. Such appearances have included participation at the Integra, Softwriters, and QS1 conferences. Carvajal Technology has been recognized as a business partner by the Senior Care Pharmacy Coalition, a non-profit advocacy organization dedicated to representing the legislative and regulatory interests of independent Long Term Care (LTC) pharmacies. Complaint Exhibit E is a screenshot of Complainant’s web site featuring its CARVAJAL TECHNOLOGY GROUP mark as shown on the Wayback archiving service, which demonstrates that the site was active in the period from mid-May 2013 to early August 2019. On this evidence the Panel has no trouble finding that Complainant has demonstrated its rights in the CARVAJAL TECHNOLOGY GROUP mark for the purposes of Policy ¶ 4(a)(i).
Respondent’s <carvajaitech.com> domain name is confusingly similar to Complainant’s mark since it differs from the mark only by changing the “l” in CARVAJAL to an “i,” shortening TECHNOLOGY to “tech,” dropping the word GROUP, and adding the “.com” gTLD. These changes are not sufficient to distinguish the Domain Name from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). Coachella Music Festival, LLC v. Domain Administrator / China Capital Investment Limited, FA 1734230 (Forum July 17, 2017) (“The addition of letters—particularly of those that create a common misspelling—fails to sufficiently distinguish a domain name from a registered mark.”, VNY Model Management, Inc. v. Lisa Katz / Domain Protection LLC, FA 1625115 (Forum Aug. 17, 2015) (finding that Respondent’s <vnymodels.com> domain name is confusingly similar to the VNY MODEL MANAGEMENT mark under Policy ¶ 4(a)(i).).
For the reasons set forth above, the Panel finds that the Domain Name is identical or confusingly similar to the CARVAJAL TECHNOLOGY GROUP mark, in which Complainant has substantial and demonstrated rights.
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. 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”). If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0, at ¶ 2.1.
Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate a respondent’s rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) before any notice to the respondent of the dispute, the respondent has used or has made demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name because (i) Respondent is not affiliated or connected with Complainant and Complainant has not licensed, authorized, or otherwise permitted Respondent to use its mark, (ii) Respondent is not using the Domain Name in connection with a bona fide offering of goods or services because it uses the Domain Name for an email address from which it conducts a phishing scheme which attempts to defraud Complainant and its customers, and (iii) the Domain Name is a typosquatted version of Complainant’s mark. These allegations are addressed as follows:
The Whois information submitted as Complainant Exhibit B lists “Mark Carvajal / Carvajal Technology Group” as the registrant of the Domain Name. This name is identical to that of the Complainant, but Complainant states unequivocally that it did not register the Domain Name and that both the registrant name and address listed for it with the registrar are false (Complaint Exhibit D). There is no evidence to the contrary, or of the real name of the registrant. The Panel finds that the registrant has not been commonly known by the Domain Name. All references to “Respondent” in this Decision refer to the person or entity that registered the Domain Name and not, obviously, to the Complainant.
Complainant states that Respondent is not affiliated or associated with it and that it has never licensed or authorized Respondent to use its mark in any way. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel. In the absence of evidence that a respondent is authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights or legitimate interests in the domain name. IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name), Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. 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 the at-issue domain name.”).
Complaint Exhibit C is a copy of an email sent to Complainant by one of its customers forwarding an email it received from “mark@carvajaitech.com” advising the customer that Complainant no longer accepted checks in payment of its invoices and directing the customer to transfer funds to a certain bank account, furnishing the account number and the “routine” [sic] number of the bank. The account specified in the email from Respondent is not owned by Complainant (Complaint Exhibit D). Respondent is using the Domain Name in connection with an email address which he uses to impersonate Complainant and defraud Complainant and its customers of money due from the customers to Complainant. Using a domain name to gain commercially through a fraudulent email scam is neither a bona fide offering of goods or services as contemplated by Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use as contemplated by Policy ¶ 4(c)(iii). Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“Passing off as a complainant through e-mails is evidence that a respondent lacks rights and legitimate interests under Policy ¶¶ 4(c)(i) & (iii).”), Chevron Intellectual Property LLC v. Thomas Webber / Chev Ronoil Recreational Sport Limited, FA 1661076 (Forum Mar. 15, 2016) (finding that the respondent had failed to provide a bona fide offering of goods or services or any legitimate noncommercial or fair use, stating, “Respondent is using an email address to pass themselves off as an affiliate of Complainant. Complainant presents evidence showing that the email address that Respondent has created is used to solicit information and money on false pretenses. The disputed domain name is being used to cause the recipients of these emails to mistakenly believe Respondent has a connection with Complainant and is one of the Complainant’s affiliates.”), Emerson Electric Co. v. Adilcon Rocha, FA 1735949 (Forum July 11, 2017) (finding that respondent’s attempt to pass off as complainant through emails does not constitute a bona fide offering of goods or services and, as such, respondent lacked rights or legitimate interests in the disputed domain name).
Finally, by changing the letter “l” in the CARVAJAL element of Complainant’s mark to an “i” in the Domain Name, Respondent is guilty of typosquatting, which is the intentional misspelling of a protected trademark to take advantage of typing errors made by Internet users seeking the web sites of the owners of the mark. Registering a typosquatted domain name has been held to evidence a lack of rights and legitimate interests in the domain name for the purposes of Policy ¶ 4(a)(ii). Chegg Inc. v. yang qijin, FA1503001610050 (Forum Apr. 23, 2015) (“Users might mistakenly reach Respondent’s resolving website by misspelling Complainant’s mark. Taking advantage of Internet users’ typographical errors, known as typosquatting, demonstrates a respondent’s lack of rights or legitimate interests under Policy ¶ 4(a)(ii).”).
Complainant has made its prima facie case. On the evidence presented, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
Policy ¶ 4(b) sets forth a nonexclusive list of four circumstances, any one of which if proven would be evidence of bad faith use and registration of a domain name. They are as follows:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the respondent’s web site or location or of a product of service on the respondent‘s web site or location.
The evidence of Respondent’s conduct discussed above in the rights or legitimate interests analysis also supports a finding of bad faith registration and use. As discussed above, Respondent registered and uses the Domain Name in connection with an email scheme designed to impersonate Complainant and fraudulently divert invoice remittances due to Complainant to a bank account not owned by Complainant. This conduct may not fall precisely within any of the circumstances described Policy ¶ 4(b), but that paragraph acknowledges that mischief can manifest in many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (January 5, 2005). The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and using a confusingly similar domain name to perpetrate fraud is manifest evidence of bad faith registration and use. Hewlett-Packard Development Company, L.P. v. Hyatt, FA1811001818756 (Forum Dec. 28, 2018) (“using a domain name to pose as a complainant to promote a fraudulent scheme has often been held to constitute bad faith”) (citations omitted); Yahoo! Inc. v. Kalra, FA1512001650447 (Forum Dec. 31, 2015) (“Respondent's registration of domain names obviously intended to create confusion with Complainant, together with its use of those domain names in connection with a fraudulent scheme involving passing itself off as Complainant and attempting to defraud Complainant's customers, is indicative of bad faith under paragraphs 4(b)(iii) and 4(b)(iv)”), MidFirst Bank v. Smith, FA0907001274302 (Forum August 31, 2009) (use of the disputed domain name to pass oneself off as the Complainant constitutes bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv)).
Second, it is evident that Respondent had actual knowledge of Complainant and its mark when it registered the Domain Name in February 2020 (Complaint Exhibit B shows creation date). At that time Complainant had been using its CARVAJAL TECHNOLOGY GROUP mark since 2012 (Complaint Exhibit D). Respondent copied the mark with a subtle misspelling into the Domain Name, attempts to pass off as Complainant (Complaint Exhibits D and E), and even registered the Domain Name in a name identical to that of Complainant (Complaint Exhibit B). Again, the non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and registering a confusingly similar domain name with actual knowledge of a complainant’s rights in its mark has often been held to be evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii). 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).
Finally, as discussed above, Respondent is guilty of typosquatting. Given the non-exclusive nature of Policy ¶ 4(b), typosquatting has, in and of itself, been held to be evidence of bad faith registration and use. Vanguard Trademark Holdings USA LLC v. Shuai Wei Xu / Xu Shuai Wei, FA 1784238 (Forum June 1, 2018) (finding the respondent engaged in typosquatting—and thus registered and used the at-issue domain names in bad faith—where the names consisted of the complainant’s mark with small typographical errors introduced therein).
For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Name in bad faith within the meaning of Policy ¶ 4(a)(iii).
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 <carvajaitech.com> Domain Name be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
September 17, 2020
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