Azul Systems, Inc. v. uno park / AV Excel Air Services
Claim Number: FA2110001968156
Complainant is Azul Systems, Inc. (“Complainant”), represented by Caitlin R. Byczko of Barnes & Thornburg LLP, Indiana, USA. Respondent is uno park / AV Excel Air Services (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <us-azul.com>, registered with Hosting Concepts B.V. d/b/a Registrar.eu.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 7, 2021; the Forum received payment on October 7, 2021.
On October 8, 2021, Hosting Concepts B.V. d/b/a Registrar.eu confirmed by e-mail to the Forum that the <us-azul.com> domain name is registered with Hosting Concepts B.V. d/b/a Registrar.eu and that Respondent is the current registrant of the name. Hosting Concepts B.V. d/b/a Registrar.eu has verified that Respondent is bound by the Hosting Concepts B.V. d/b/a Registrar.eu 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 October 12, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 1, 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@us-azul.com. Also on October 12, 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 November 5, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 made the following contentions.
Complainant, Azul Systems, Inc., operates the only software company focused exclusively on the Java platform. Complainant has rights in the AZUL mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. 2,946,472, registered May 03, 2005). See Compl. Ex. F. Respondent’s <us-azul.com> domain name is identical or confusingly similar to Complainant’s AZUL mark, merely adding the geographic term “US” and a hyphen before the mark, and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <us-azul.com> domain name as it is not commonly known by the disputed domain name and is neither an authorized user or licensee of the AZUL mark. Additionally, Respondent does not use the disputed domain name for any bona fide offer of goods or services, nor for any legitimate noncommercial or fair use, but rather to host an inactive website. Respondent also uses an email account associated with the disputed domain name to attempt to defraud Complainant’s customers.
Respondent registered and uses the <us-azul.com> domain name in bad faith. Respondent uses the disputed domain name primarily to attempt to defraud Complainant’s customers by passing itself off as an agent of Complainant to phish for sensitive financial information. Such use may demonstrate both bad faith disruption and attraction to commercial gain. Additionally, Complainant contends that Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the AZUL mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company which is the only software company focused exclusively on the Java platform.
2. Complainant has established its trademark rights in the AZUL mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. 2,946,472, registered May 03, 2005).
3. Respondent registered the disputed domain name on September 17, 2021.
4. Respondent has used the disputed domain name to host an inactive website and also uses an email account associated with the domain name to attempt to defraud Complainant’s customers.
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 first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the AZUL mark through its registration with the USPTO. Registration of a mark with a nation’s trademark agency, such as the USPTO, is generally sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Complainant provides evidence of its registration with the USPTO (e.g., Reg. 2,946,472, registered May 3, 2005). See Compl. Ex. F. Therefore, the Panel finds Respondent has rights in the AZUL mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s AZUL mark. Complainant argues that Respondent’s <us-azul.com> domain name is identical or confusingly similar to Complainant’s AZUL mark, merely adding the geographic term “US” to denote the United States, a hyphen, and the “.com” gTLD. Previous Panels have held that such changes do not necessarily negate confusing similarity between a domain name and a mark under Policy ¶ 4(a)(i). See General Motors LLC v. Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org, FA 1656166 (Forum Feb. 12, 2016) (finding respondent’s <gm-uzbekistan.com> domain name confusingly similar to complainant’s GM mark as the addition of the geographic term “uzbekistan” is inconsequential to a Policy ¶ 4(a)(i) analysis). Thus, the Panel finds Respondent’s domain name is confusingly similar to Complainant’s AZUL mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established 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”).
(a) Respondent has chosen to take Complainant’s AZUL trademark and to use it in its domain name, adding the geographic term “US” to denote the United States and a hyphen, which does not negate the confusing similarity between the domain name and the trademark;
(b) Respondent registered the disputed domain name on September 17, 2021;
(c) Respondent has used the disputed domain name to host an inactive website and also uses an email account associated with the domain name to attempt to defraud Complainant’s customers;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent lacks rights and legitimate interests in the <us-azul.com> domain name as it is not commonly known by the disputed domain name and is neither an authorized user or licensee of the AZUL mark. When a Response is lacking, relevant WHOIS information may demonstrate that a Respondent is not commonly known by an infringing domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Here, the WHOIS information of record identifies “uno park / AV Excel Air Services” as the registrant of the disputed domain name. See Compl. Ex. B; see also registrar verification email. The Panel therefore finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent fails to use the <us-azul.com> domain name for any bona fide offer of goods or services, nor for any legitimate noncommercial or fair use, instead allowing the website to remain inactive. Failure to make active use of a domain name does not constitute either a bona fide offer or as a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Dell Inc. v. link growth / Digital Marketing, FA 1785283 (Forum June 7, 2018) (“Respondent’s domain names currently display template websites lacking any substantive content. The Panel finds that Respondent has does not have rights or legitimate interests with respect of the domain name per Policy ¶¶ 4(c)(i) or (iii).”). Complainant provides screenshots of the resolving website as evidence that Respondent fails to make active use of the disputed domain name. See Compl. Ex. I. Thus, the Panel finds Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶¶ 4(c)(i) and (iii);
(g) Complainant contends that Respondent lacks rights in the <us-azul.com> domain name as it uses an email account associated with the disputed domain to operate a phishing scheme. Such use of an infringing domain name does not confer rights in an infringing domain name as it does not qualify as either a bona fide offer or as a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). 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)). Complainant also provides copies of emails received by its customers from an email account associated with Respondent’s website, claiming to be an agent of Complainant within its Accounts Receivable department. See Compl. Ex. J. The Panel then finds that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶¶ 4(c)(i) and (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and uses the <us-azul.com> domain name in bad faith because an email account associated with the disputed domain name is used to attempt to pass Respondent off as Complainant and phish for Internet users’ financial information. Such use of an infringing domain name may demonstrate bad faith disruption and attraction to commercial gain under Policy ¶¶ 4(b)(iii) and (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)”). As previously noted, Complainant provides copies of emails received by Complainant’s customers sent from the “ar@us-azul.com” email account. See Compl. Ex. J. Thus, the Panel finds bad faith registration and use under Policy ¶¶ 4(b)(iii) and (iv).
Secondly, Complainant contends that Respondent registered the <us-azul.com> domain name with actual knowledge of Complainant’s rights in the AZUL mark. Per Policy ¶ 4(a)(iii), registration of an infringing domain name with actual knowledge of another’s trademark rights is sufficient to establish bad faith and can be demonstrated by the notoriety of a mark and the use Respondent makes of the disputed domain name. 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, Complainant operates a well-known software company, and Respondent uses an email account associated with the disputed domain name to attempt to defraud Complainant’s customers. See Compl. Ex. J. As the Panel agrees that actual knowledge was present in this case, it finds bad faith pursuant to Policy ¶ 4(a)(iii).
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the AZUL mark and in view of the conduct that Respondent has engaged in when using the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <us-azul.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: November 8, 2021
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