Sheridan Ross P.C. v. Phone INC
Claim Number: FA2106001952856
Complainant is Sheridan Ross P.C. (“Complainant”), represented by Miriam D. Trudell of Sheridan Ross P.C., Colorado, USA. Respondent is Phone INC (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sherldanross.com>, registered with NameCheap, Inc..
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 27, 2021; the Forum received payment on June 27, 2021.
On June 28, 2021, NameCheap, Inc. confirmed by e-mail to the Forum that the <sherldanross.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 29, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 19, 2021 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@sherldanross.com. Also on June 29, 2021, 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 July 26, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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
1. Respondent’s <sherldanross.com> domain name is confusingly similar to Complainant’s SHERIDAN ROSS mark.
2. Respondent does not have any rights or legitimate interests in the <sherldanross.com> domain name.
3. Respondent registered and uses the <sherldanross.com> domain name in bad faith.
B. Respondent did not file a Response.
Complainant is a law firm specializing in intellectual property. Complainant holds a registration for the SHERIDAN ROSS mark with the United States Patent and Trademark Office (“USPTO”) (Reg. 3,233,239, registered Apr. 24, 2007).
Respondent registered the <sherldonross.com> domain name on May 27, 2021, and uses it to display parked links, and to pass off as Complainant in emails.
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 Panel finds that Complainant has rights in the SHERIDAN ROSS mark through its registration with the USPTO. See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”)
Respondent’s <sherldanross.com> domain name uses a slightly misspelled version of Complainant’s SHERIDAN ROSS mark and merely adds a gTLD. Swapping out a single letter in a mark and adding a gTLD is insufficient to distinguish a disputed domain name from the mark it incorporates under Policy ¶ 4(a)(i). See Royal Bank of Scotland Grp. plc et al. v. Demand Domains, FA 714952 (Forum Aug. 2, 2006) (“The Panel finds that merely by misspelling Complainants’ mark, Respondent has not sufficiently differentiated the <privelage.com> domain name from the PRIVILEGE mark under Policy ¶ 4(a)(i).”). Therefore, the Panel finds that Respondent’s <sherldanross.com> domain name is confusingly similar to Complainant’s SHERIDAN ROSS mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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”).
Complainant argues that has no rights or legitimate interests in the <sherldanross.com> domain name, as Respondent is not commonly known by the domain name. Complainant has not authorized or licensed Respondent to use its SHERIDAN ROSS mark in the disputed domain name. The WHOIS of record identifies Respondent as “Phone INC.” Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name, and thus has no rights 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).
Complainant also argues that Respondent does not use the <sherldanross.com> domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use, as Respondent uses the domain name to pass off as Complainant in emails, and to display links. Under Policy ¶¶ 4(c)(i) and (iii), using a disputed domain name for parked pay-per-click links, and to pass off as a complainant in emails, does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Microsoft Corporation v. Terrence Green / Whois Agent / Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr. 4, 2016) (finding the respondent’s use of the disputed domain names to send fraudulent emails purportedly from agents of complainant to be neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). Complainant provides screenshots of the disputed domain name’s resolving website, which features parked links. Complainant also provides screenshots of email correspondence showing that Respondent attempts to pass itself off as Complainant. The Panel finds these are not bona fide offerings of goods or services or legitimate noncommercial or fair uses, and thus Respondent has no rights under Policy ¶¶ 4(c)(i) or (iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and uses the <sherldanross.com> domain name for bad faith attraction for commercial gain. Under Policy ¶ 4(b)(iv), inactively holding a disputed domain name, and displaying parked pay-per-click links demonstrates bad faith under Policy ¶ 4(b)(iv). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Forum Apr. 25, 2007) (holding that the use of a confusingly similar domain name to display links to various third-party websites demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). Passing off as a complainant in emails is also evidence of bad faith. See Qatalyst Partners LP v. Devimore, FA 1393436 (Forum July 13, 2011) (finding that using the disputed domain name as an e-mail address to pass itself off as the complainant in a phishing scheme is evidence of bad faith registration and use). Accordingly, the Panel finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant also argues that Respondent registered the <sherldanross.com> domain name with actual knowledge of Complainant’s rights in the SHERIDAN ROSS mark. The Panel agrees, noting that the disputed domain name incorporates a slightly misspelled version of Complainant’s mark, and Respondent attempts to pass off as Complainant. The Panel finds bad faith under Policy ¶ 4(a)(iii).
Complainant contends that Respondent’s bad faith is further evinced by its use of a privacy service. Under Policy ¶ 4(a)(iii), hiding registrant information behind a WHOIS privacy service may contribute to a finding of bad faith. See Phoenix Niesley-Lindgren Watt v. Contact Privacy Inc., Customer 0150049249, FA 1800231 (Forum Sept. 6. 2018) (“In a commercial context, using a WHOIS privacy service raises the rebuttable presumption of bad faith registration and use of the disputed domain name. An honest merchant in the marketplace does not generally try to conceal the merchant’s identity. Good faith requires honesty in fact. Respondent did nothing to rebut this presumption of bad faith. Therefore, the Panel will find bad faith registration and use for this reason.”). The Panel notes that Respondent’s WHOIS information was initially hidden behind a privacy service. Therefore, the Panel agrees finds further bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Complainant has satisfied 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 <sherldanross.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: July 27, 2021
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