NetSuite Inc. v. Thomasine Greer
Claim Number: FA2107001953964
Complainant is NetSuite Inc. ("Complainant"), represented by Lian Ernette of Holland & Hart LLP, Colorado, USA. Respondent is Thomasine Greer ("Respondent"), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sent-via-mail-netsuite-protection.management>, registered with NameCheap, Inc..
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 6, 2021; the Forum received payment on July 6, 2021.
On July 6, 2021, NameCheap, Inc. confirmed by email to the Forum that the <sent-via-mail-netsuite-protection.management> 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 July 7, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 27, 2021 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@sent-via-mail-netsuite-protection.management. Also on July 7, 2021, the Written Notice of the Complaint, notifying Respondent of the email 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 30, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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 provides cloud-based business management software to more than 20,000 customers in more than 200 countries and territories. Complainant states that its presence in the relevant marketplace is nearly ubiquitous, with approximately 90% of IPO companies running its software in 2018. Complainant has used the NETSUITE mark in connection with its services since 1998.
Respondent registered the disputed domain name <sent-via-mail-netsuite-protection.management> in June 2021. The domain name resolves to what appears to be a registrar-generated parked page containing pay-per-click links. Complainant states that the domain name is also being used to generate an email address resembling that of a trusted sender verified by Complainant, in fraudulent email messages sent in furtherance of a spear phishing scheme. Complainant states further that Respondent is not affiliated with Complainant in any way; is not licensed or permitted to use the NETSUITE mark; and is not an authorized licensee, vendor, supplier, distributor, or customer relations agent for Complainant's services.
Complainant contends on the above grounds that the disputed domain name <sent-via-mail-netsuite-protection.management> is confusingly similar to its NETSUITE mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
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 Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").
The disputed domain name <sent-via-mail-netsuite-protection.management> incorporates Complainant's registered NETSUITE trademark, adding the generic or descriptive terms "sent via mail" and "protection" (both of which relate to Complainant's services), with hyphens separating the words, and appending the ".management" top-level domain. These additions do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., NetSuite Inc. v. Mohamad Abdul Sharooq Ahmed, FA 1949550 (Forum July 2, 2021) (finding <nxtsuite.com> confusingly similar to NETSUITE); NetSuite, Inc. v. Privacy.co.com / Savvy Investments, LLC Privacy ID# 972928, FA 1881987 (Forum Mar. 11, 2020) (finding <netsuit.com> confusingly similar to NETSUITE); Instagram, LLC v. Ist Ist, D2020-1140 (WIPO June 21, 2020) (finding <instagram-mail-server.com> confusingly similar to INSTAGRAM); Carrefour v. Key-Systems, LLC / Customer Support, Register NV/SA Technical Support, Register NV/SA Accounting Department, Register NV/SA / Lorenzo Lotarp, D2019-2310 (WIPO Nov. 19, 2019) (finding <carrefourpass.management> confusingly similar to CARREFOUR and CARREFOUR PASS). The Panel considers the disputed domain name to be confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's registered mark without authorization, and it is being used to display what presumably are pay-per-click links and in email addresses connected to an apparent phishing scheme. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., Trijicon, Inc. v. Domain Admin / Whois Privacy Corp., FA 1951143 (Forum July 22, 2021) (finding lack of rights or interests where domain name was used for pay-per-click website and potentially in furtherance of email phishing scheme).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [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 [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent used a privacy registration service to register a domain name incorporating and obviously intended to create confusion with Complainant's well-known mark. The domain name is being used to display pay-per-click links and in email messages connected to an apparent phishing scheme. Such conduct is indicative of bad faith registration and use under the Policy. See, e.g., Trijicon, Inc. v. Domain Admin / Whois Privacy Corp., supra (finding bad faith in similar circumstances). The Panel so finds.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sent-via-mail-netsuite-protection.management> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: August 2, 2021
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page