Massachusetts Institute of Technology v. Dmitriy Koloskin
Claim Number: FA2009001912057
Complainant is Massachusetts Institute of Technology (Complainant), represented by Steven M. Levy, District of Columbia, USA. Respondent is Dmitriy Koloskin (Respondent), Ukraine.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <technologyreview.site>, registered with Registrar of Domain Names REG.RU 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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 11, 2020; the Forum received payment on September 11, 2020.
On September 15, 2020, Registrar of Domain Names REG.RU LLC confirmed by e-mail to the Forum that the <technologyreview.site> domain name is registered with Registrar of Domain Names REG.RU LLC and that Respondent is the current registrant of the name. Registrar of Domain Names REG.RU LLC has verified that Respondent is bound by the Registrar of Domain Names REG.RU 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 September 18, 2020, the Forum served the Complaint and all Annexes, including a Russian Language Written Notice of the Complaint, setting a deadline of October 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@technologyreview.site. Also on September 18, 2020, the Russian Language 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 October 13, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson 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.
PANEL NOTE: LANGUAGE OF THE PROCEEDINGS
The Panel notes that the Registration Agreement is written in Russian, thereby making the language of the proceedings in Russian. Complainant did not submit a Russian language complaint, but argues that because the disputed domain name is comprised of English words, the resolving website is written in English, and Complainant’s business is primarily in English, the language of the proceedings should be English. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Russian language Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
A. Complainant
Complainant is a world-renowned university offering courses and research in a wide variety of math, science, and related fields. Complainant has rights in the TECHNOLOGY REVIEW mark through its registration with the United States Patent and Trademark Office (“USPTO”). (e.g. Reg. 668,713, registered Oct. 21, 1958). Respondent’s <technologyreview.site> domain name is identical or confusingly similar to Complainant’s mark as it incorporates the mark in its entirety and adds the “.site” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <technologyreview.site> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its TECHNOLOGY REVIEW mark in the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use, but instead attempts to pass off as Complainant on the disputed domain name’s resolving website.
Respondent registered and uses the disputed domain name in bad faith. Respondent uses the disputed domain name for bad faith disruption for commercial gain by passing off as Complainant. Additionally, Respondent attempts to phish for user information on the disputed domain name’s resolving website. Respondent also failed to respond to Complainant’s cease-and-desist letters and used a privacy shield to hide its identity. Finally, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the TECHNOLOGY REVIEW mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Massachusetts Institute of Technology (Complainant) of Cambridge, MA, USA. Complainant is the owner of the domestic registration for the mark TECHNOLOGY REVIEW which Complainant has continuously used since at least as early as 1958 in connection with the publication of its magazine reviewing new technologies and their commercial, social, and political impact.
Respondent is Dmitriy Koloskin (Respondent), of Chernihiv, Ukraine. Respondent’s registrar’s address is listed as Moscow, Russia. The Panel notes the <technologyreview.site> domain name was registered on or about August 13, 2020.
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 claims rights in the TECHNOLOGY REVIEW mark through its registration with the USPTO (e.g. Reg. 668,713, registered Oct. 21, 1958). Registration with the USPTO is generally sufficient to establish rights in mark under Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). The Panel here finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <technologyreview.site> domain name is identical or confusingly similar to the TECHNOLOGY REVIEW mark, as it incorporates the mark in its entirety and merely adds the “.site” gTLD. A disputed domain name is generally considered identical or confusingly similar under Policy ¶ 4(a)(i) where it incorporates a mark in its entirety and only adds a gTLD. See Tupelo Honey Hospitality Corporation v. King, Reggie, FA 1732247 (Forum July 19, 2017) (“Addition of a gTLD is irrelevant where a mark has been fully incorporated into a domain name and the gTLD is the sole difference.”). The Panel here finds the disputed domain name is identical or confusingly similar under Policy ¶ 4(a)(i).
Respondent raises no contentions regarding Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel notes that 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 here finds that Complainant has set forth the requisite prima facie case.
Complainant argues that Respondent is not commonly known by the <technologyreview.site> domain name, nor has Complainant authorized or licensed Respondent to use its TECHNOLOGY REVIEW mark in the disputed domain name. Where a response is lacking, relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name under Policy ¶ 4(c)(ii). See SPTC, Inc. and Sotheby’s v. Tony Yeh shiun, FA 1810835 (Forum Nov. 13, 2018) (finding no rights or legitimate interests in the <sothebys.email> domain name where the WHOIS identified Respondent as “Tony Yeh shiun,” Complainant never authorized or permitted Respondent to use the SOTHEBY’S mark, and Respondent failed to submit a response.). The WHOIS of record identifies Respondent as “Dmitriy Koloskin”, and nothing in the record rebuts Complainant’s assertion that it never authorized Respondent to use its mark in the disputed domain name. The Panel here finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent is not using the <technologyreview.site> domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use, but instead attempts to pass itself off as Complainant on the disputed domain name’s resolving website. Attempting to pass off as a Complainant by closely copying a Complainant’s website and marks on the disputed domain’s resolving website is generally not considered a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See ShipChain, Inc. v. 谢东东 / 谢东东, FA 1785189 (Forum June 21, 2018) (“The resolving webpages between Complainant’s and Respondent’s websites are virtually the same. Respondent’s use of the disputed domain name does not confer rights and legitimate interests under Policy ¶¶4(c)(i) and (iii).”). Complainant provides screenshots of the disputed domain name’s resolving website, which features a nearly identical layout to Complainant’s website, as well as Complainant’s mark and similar news stories shared by Complainant. The Panel here finds that Respondent does not use the disputed domain name for any bona fide offering of goods or services nor any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
Respondent raises no contentions regarding Policy ¶ 4(a)(ii).
The Complainant has proven this element.
Complainant argues that Respondent is using the <technologyreview.com> domain name in bad faith for attraction and commercial gain by passing off as Complainant on the disputed domain name’s resolving website. Passing off as a Complainant on the disputed domain name’s resolving website may be considered bad faith disruption and attraction for commercial gain under Policy ¶ 4(b)(iii) and (iv). See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that the respondent’s registration and use of the disputed domain name, which displayed a website virtually identical to the complainant’s website, constituted bad faith pursuant to Policy ¶ 4(b)(iii)); see also Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”). The Panel again notes that the disputed domain name’s resolving website appears to closely resemble Complainant’s website and uses Complainant’s mark. Complainant further asserts that Respondent may be profiting by attempting to gain user information from the site’s contact page and sell it to third parties. The Panel here finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Complainant argues that Respondent registered and uses the <technologyreview.site> website in bad faith by potentially phishing for user information. Using a disputed domain name in connection with phishing is considered bad faith use under Policy ¶ 4(a)(iii). See Morgan Stanley v. Bruce Pu, FA 1764120 (Forum Feb. 2, 2018) (“[T]he screenshot of the resolving webpage allows users to input their name and email address, which Complainant claims Respondent uses that to fraudulently phish for information. Thus, the Panel agrees that Respondent phishes for information and finds that Respondent does so in bad faith under Policy ¶ 4(a)(iii).”). Complainant provides screenshots of the disputed domain name’s resolving website, where users can submit email, name, and other information in a “contact” box. Complainant argues that Respondent is using this website feature to phish for user information. The Panel here finds that Respondent’s actions noted above further support a finding that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant finally argues that Respondent registered the <technologyreview.site> domain name with actual knowledge of Complainant’s rights in the mark. Actual knowledge of rights in a mark is generally considered sufficient to establish bad faith under Policy ¶ 4(a)(iii) and can be demonstrated by the entirety of circumstances surrounding registration and use of the domain name. See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”); see also Twentieth Century Fox Film Corporation and Fox International Channels (US), Inc. v. Daniel Pizlo / HS, FA1412001596020 (Forum Jan. 27, 2015) (finding that the respondent must have had actual knowledge of the complainant and its rights in the FOX LIFE mark, where the respondent was using the disputed domain name to feature one of the complainant’s videos on its website, indicating that the respondent had acted in bad faith under Policy ¶ 4(a)(iii)). Complainant argues that Respondent had actual knowledge of Complainant’s rights in the TECHNOLOGY REVIEW mark based upon the well-known nature of the mark and Respondent’s attempt to pass off as Complainant. The Panel here finds that Respondent’s use of the domain name supports the conclusion that Respondent registered the disputed domain name with actual knowledge of Complainant’s marks and thus acted in bad faith under Policy ¶ 4(a)(iii).
Respondent raises no contentions regarding Policy ¶ 4(a)(iii).
The Complainant has proven this element.
As the Complainant has established all three elements required under the applicable ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <technologyreview.site> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: October 27, 2020
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