Scale Media Inc. v. Nelson Leiser
Claim Number: FA2107001955043
Complainant is Scale Media Inc. (“Complainant”), represented by Norm J. Rich of Foley & Lardner LLP, District of Columbia, USA. Respondent is Nelson Leiser (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <scalemedia.us>, 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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 13, 2021; the Forum received payment on July 13, 2021.
On July 14, 2021, NameCheap, Inc. confirmed by e-mail to the Forum that the <scalemedia.us> 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 the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On July 16, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 5, 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@scalemedia.us. Also on July 16, 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 August 10, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. 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 usTLD Dispute Resolution Policy ("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 usTLD Policy, usTLD 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, Scale Media Inc., is a tech-driven consumer goods company that develops and deploys consumer brands from concept to scale. Complainant’s established brands include 1MD physician-formulated supplements and HAIR LA VIE beauty products. Complainant has rights in the SCALE MEDIA mark based on its use in commerce since 2016 and its registration of the mark with the United States Patent and Trademark Office (“USPTO”) on January 19, 2021. Respondent’s <scalemedia.us> domain name, registered on March 24, 2021, is identical to Complainant’s mark since it incorporates Complainant’s entire mark, adding only the generic country-code top-level domain extension (“ccTLD”) “.us.”
Respondent lacks rights and legitimate interests in the <scalemedia.us> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant licensed or authorized Respondent to use the SCALE MEDIA mark. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use. Rather, Respondent passes itself off as Complainant via an email employment scam. Respondent also uses the disputed domain name in connection with a website displaying unrelated pay-per-click hyperlinks to other sites.
Respondent registered and/or uses the <scalemedia.us> domain name in bad faith. Respondent uses the disputed domain name to pass itself off as Complainant via an email-based employment scam. Respondent also uses the disputed domain name in connection with a pay-per-click website. Moreover, Respondent had both constructive and actual knowledge of Complainant’s rights in the SCALE MEDIA mark prior to registering the disputed domain name based on Complainant’s trademark registration and Respondent’s attempts to pass itself off as Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the disputed domain name was registered and is being used by Respondent 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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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 and evidence 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 and supported allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant claims rights in the SCALE MEDIA mark through its registration with the USPTO. Registration of a mark with the USPTO is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).”) As Complainant has submitted screenshots from the USPTO website displaying the particulars of its SCALE MEDIA registration, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <scalemedia.us> domain name is identical to Complainant’s SCALE MEDIA mark because it incorporates Complainant’s mark in its entirety, adding only the generic country-code top-level domain extension “.us.” Under Policy ¶ 4(a)(i), adding a ccTLD is generally insufficient in differentiating a disputed domain name from the mark it incorporates. See Titmouse, Inc. v. mary crum / Crum Enterprise, FA 1941982 (Forum May 25, 2021) (“The addition of a ccTLD to an otherwise recognizable mark does not distinguish the disputed domain name from the TITMOUSE Mark under Policy ¶ 4(a)(i)”). Therefore, the Panel finds that the disputed domain name is identical or confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
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). Should it succeed in this effort, the burden then shifts to Respondent to show that 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”).
Although not addressed in the Complaint, the Panel finds nothing in the available evidence which indicates that Respondent has rights in a mark identical to the disputed domain name, which would serve to satisfy Policy ¶ 4(c)(i). See Pepsico, Inc. v. Becky, FA 117014 (Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
Next, Complainant argues that Respondent does not have rights or legitimate interests in the <scalemedia.us> domain name as Respondent is not commonly known by the disputed domain name, and Complainant has not licensed or otherwise permitted Respondent to use its SCALE MEDIA mark. In considering this issue, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(iii). See Bittrex, Inc. v. Operi Manaha, FA 1815225 (Forum Dec. 10, 2018) (concluding that the respondent was not commonly known by the <appbittrex.com> domain name where the WHOIS information listed Respondent as “Operi Manaha,” and nothing else in the record suggested Respondent was authorized to use the BITTREX mark.) Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use complainant’s mark may support a finding that respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain name lists the registrant as “Nelson Leiser” and there is no evidence to suggest that Respondent is known otherwise or that it is authorized to use the SCALE MEDIA mark. Respondent has not filed a Response or made any other submission in this case and so there is no ground upon which the Panel can find that Respondent is commonly known by the disputed domain name per Policy ¶ 4(c)(iii).
Complainant also argues that Respondent does not use the <scalemedia.us> in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses it to impersonate Complainant via an email scam. Using a disputed domain name to pass oneself off as a complainant via email is not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(ii) or (iv). See Emerson Electric Co. v. Adilcon Rocha, FA 1735949 (Forum July 11, 2017) (finding that respondent’s attempt to pass itself 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). Here, Complainant provides screenshots showing that Respondent uses the email addresses frankjohn@scalemedia.us and careers@scalemedia.us in connection with emails that impersonate Complainant and its employees when targeting potential job applicants. In a rather detailed set of messages, such applicants are informed that they are being offered a job with Complainant and are asked to provide certain personal and banking information. They are also asked to submit bitcoin payments to a designated account for the purchase of a laptop computer and certain software that will supposedly be used in the offered job. Also submitted is an email from one job applicant to Complainant’s legitimate email address asking if Complainant is actually offering the job because “I found it weird that they ask me to pay for software with bitcoin.” As Complainant has made a prima facie case that has not been rebutted by Respondent, upon a preponderance of the evidence before it the Panel finds that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name per Policy ¶¶ 4(c)(ii) or (iv).
Complainant further asserts that Respondent does not use the <scalemedia.us> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent resolves it to a website that displays unrelated hyperlinks. Using a domain name that is confusingly similar to an asserted trademark in connection with a pay-per-click website may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(ii) or (iv). See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA 1613867 (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). Here, Complainant provides screenshots showing the disputed domain name resolves to a website hosting generic hyperlinks that, in at least some instances, redirect Internet users to other companies’ websites, presumably for Respondent’s commercial gain. Therefore, the Panel finds that Respondent’s website resolution of the disputed domain name fails to demonstrate a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(ii) or (iv).
Complaint argues that Respondent registered the <scalemedia.us> domain name with constructive and actual knowledge of Complainant’s rights in the SCALE MEDIA mark based on Complainant’s trademark registration and Respondent’s attempts to pass itself off as Complainant. Constructive knowledge is disfavored under the Policy unless it can be reliably demonstrated that both parties are subject to a national jurisdiction that applies such principle of law. See Leite’s Culinaria, Inc. v. Gary Cieara, D2014-0041 (WIPO Feb. 25, 2014) (where both parties reside in the United States, the Panel found that “under 15 USC §1072, registration of Complainant’s mark constitutes constructive notice of the mark.”). However, based on its nefarious activities there is a strong possibility that Respondent has used false information in its WHOIS record for the disputed domain name. As such, the Panel feels it best to defer on consideration of whether constructive notice applies in the present case – especially as actual knowledge may be more reliably demonstrated by Respondent’s use of the domain name. Where a respondent seeks to pass itself off as a complainant in furtherance of a phishing scheme, this shows that the respondent had actual knowledge of the asserted trademark and provides evidence to support a finding of bad faith registration per Policy ¶ 4(a)(iii). See Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum Jan. 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.”). Here, Respondent uses the disputed domain name to pass itself off as Complainant via an email-based phishing scheme. Based on this evidence the Panel finds that Respondent had actual knowledge of the SCALE MEDIA mark at the time that it registered the disputed domain name and that it did so in bad faith per Policy ¶ 4(a)(iii).
Next, Complainant argues that Respondent registered and uses the <scalemedia.us> domain name in bad faith because Respondent impersonates Complainant via an email job offer scam. Using an email address associated with a disputed domain name to pass oneself off as a complainant can evidence bad faith registration and use per Policy ¶¶ 4(b)(iii) and 4(b)(iv). 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)”). Here, Complainant provides screenshots showing Respondent’s use of the disputed domain name to pass itself off as Complainant and its employees when targeting potential job applicants. Such applicants are requested to provide personal and banking information and submit bitcoin payments in exchange for a supposed laptop computer and software that are required for the offered job. Complainant asserts that this is all a phishing scheme designed to steal funds from the job applicant victims. Respondent has not participated in these proceedings and so it provides no alternate explanation for its actions. By a preponderance of the evidence available in this case, the Panel finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶¶ 4(b)(iii) and 4(b)(iv).
Complainant also asserts that Respondent registered and uses the <scalemedia.us> domain name in bad faith because it is resolves to a website containing unrelated monetized hyperlinks. Using a disputed domain name in connection with unrelated hyperlinks may be evidence of bad faith registration and use per Policy ¶¶ 4(b)(iii) and 4(b)(iv). See Dovetail Ventures, LLC v. Klayton Thorpe, FA 1625786 (Forum Aug. 2, 2015) (holding that the respondent had acted in bad faith under Policy ¶ 4(b)(iv), where it used the disputed domain name to host a variety of hyperlinks, unrelated to the complainant’s business, through which the respondent presumably commercially gained). Here, Complainant provides screenshots of the website that resolves from the disputed domain name and this hosts pay-per-click hyperlinks that direct Internet users to other companies’ websites. From this evidence the Panel finds further support for its conclusion that Respondent registered and uses the disputed domain name in bad faith per Policy ¶¶ 4(b)(iii) and 4(b)(iv).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <scalemedia.us> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: August 11, 2021
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