Planet Innovation Pty Ltd v. Fedrick Lascells
Claim Number: FA2110001968881
Complainant is Planet Innovation Pty Ltd (“Complainant”), Australia. Respondent is Fedrick Lascells (“Respondent”), New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <planetlnnovatlon.com>, registered with Wild West Domains, 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 13, 2021; the Forum received payment on October 13, 2021.
On October 15, 2021, Wild West Domains, LLC confirmed by e-mail to the Forum that the <planetlnnovatlon.com> domain name is registered with Wild West Domains, LLC and that Respondent is the current registrant of the name. Wild West Domains, LLC has verified that Respondent is bound by the Wild West Domains, 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 October 22, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 12, 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@planetlnnovatlon.com. Also on October 22, 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 17, 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 cancelled.
A. Complainant
Complainant made the following contentions.
Complainant, Planet Innovation Pty Ltd, operates a healthcare technology innovation and commercialization company. Complainant submits that it has rights in the PLANET INNOVATION mark through its registration with the Australian government’s Intellectual Property Office (e.g., Reg. 1,978,002, registered Dec. 31, 2018). See Amend. Compl. Annex. Respondent’s <planetlnnovatlon.com> domain name is identical or confusingly similar to Complainant’s PLANET INNOVATION mark, merely removing a space between the words of the mark, replacing each instance of the letter “I” with the letter “L” to maintain a similar look between the domain name and the mark, and adding the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <planetlnnovatlon.com> domain name as 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. Instead, Respondent has used an email account associated with the disputed domain to defraud one of Complainant’s clients.
Respondent registered and uses the <planetlnnovatlon.com> domain name in bad faith. Complainant contends that on Monday, July 19, 2021, Respondent sent an email to one of Complainant’s clients passing itself off as one of Complainant’s staff members and by that means defrauded Complainant’s client of over $300,000.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is an Australian company that operates a healthcare technology innovation and commercialization business.
2. Complainant has established it trademark rights in the PLANET INNOVATION mark through its registration with the Australian government’s Intellectual Property Office (e.g., Reg. 1,978,002, registered Dec. 31, 2018).
3. Respondent registered the <planetlnnovatlon.com> disputed domain name on June 21, 2021.
4. Respondent has illegally used an email account associated with the domain name to defraud one of Complainant’s clients.
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 PLANET INNOVATION mark through its registration with the Australian government’s Intellectual Property Office. Registration of a mark with a government authority is generally sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Glashütter Uhrenbetrieb GmbH v. li zilin / QQ869292929, FA 1575562 (Forum Sept. 23, 2014) (holding, “Trademark registrations with a governmental authority are sufficient to prove rights in a mark pursuant to Policy ¶ 4(a)(i)”). Complainant provides evidence of its registration with the Australian government (e.g., Reg. 1,978,002, registered Dec. 31, 2018). See Amend. Compl. Annex. Therefore, the Panel finds that Complainant has rights in the PLANET INNOVATION 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 PLANET INNOVATION mark. Complainant argues that Respondent’s <planetlnnovatlon.com> domain name is identical or confusingly similar to Complainant’s PLANET INNOVATION mark, only differing by removing a space between the words in the mark, swapping each instance of the letter “I” with a letter “L”, and adding the “.com” gTLD. Prior Panels have held that such changes do not sufficiently distinguish a domain name from a mark under Policy ¶ 4(a)(i) and the domain name is therefore confusingly similar to the trademark. See Intelius, Inc. v. Hyn, FA 703175 (Forum July 5, 2006) (finding the <intellus.com> domain name to be confusingly similar to the complainant’s INTELIUS mark because the domain name differed from the mark by one letter and was visually similar); see also Health Republic Insurance Company v. Gustavo Winchester, FA 1622089 (Forum July 7, 2015) (finding, “Domain name syntax requires TLDs. Domain name syntax prohibits spaces. Therefore, omitted spacing and adding a TLD must be ignored when performing a Policy ¶ 4(a)(i) analysis.”). Thus, the Panel finds the disputed domain name is confusingly similar to Complainant’s PLANET INNOVATION 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”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a)Respondent has chosen to take Complainant’s PLANET INNOVATION mark and to use it in its domain name by removing a space between the words in the mark and swapping each instance of the letter “I” with a letter “L”, which does not negate the confusing similarity between the domain name and the trademark;
(b) Respondent registered the disputed <planetlnnovatlon.com> domain name on June 21, 2021;
(c) Respondent has illegally used an email account associated with the domain name to defraud one of Complainant’s clients;
(d)Respondent has engaged in such activities without the consent or approval of Complainant;
(e)The Panel notes that when a Response is lacking as in this case, relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name and thus lacks rights or legitimate interests in the 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 “Fedrick Lascells” as the registrant of the disputed domain name. See WHOIS information for <planetlnnovatlon.com>; see also registrar verification email. Therefore, the Panel 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 <planetlnnovatlon.com> domain name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use as the domain name does not have an active website and Respondent uses the domain name to pass itself off as Complainant and engage in fraud. Failure to resolve a disputed domain name to an active website does not qualify as either a bona fide offering of goods or services 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).”). Likewise, using a disputed domain name to pass off as a Complainant in emails and phish for financial information also is not considered a bona fide offering of goods or services or as a legitimate noncommercial or fair use and is clearly illegal. 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)). At the present, upon visiting the disputed domain name, it resolves to a generic error page. Furthermore, Complainant has submitted that one of its clients has been defrauded by Respondent for around $300,000 through Respondent’s use of the domain name and has begun working with relevant authorities to recover the money. The Panel accepts Complainant’s statements on this matter and Complainant’s submissions have therefore been made out. Thus, the Panel finds that Respondent lacks any rights or 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 does not have a right or legitimate interest 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 submits that Respondent registered and uses the <planetlnnovatlon.com> domain name in bad faith because it has used an email account associated with the disputed domain name to pass itself off as Complainant so as to defraud one of Complainant’s clients. Clearly, there is the potential for this to happen again. Such use will demonstrate bad faith disruption and attraction for 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, it appears that Respondent has defrauded one of Complainant’s clients for over $300,000 as Respondent utilized an email account associated with the disputed domain name to perpetrate that fraud. Thus, the Panel finds bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Secondly, 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 PLANET INNOVATION mark and in view of the conduct that Respondent has engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
It should also be said at this point that Complainant has requested that the domain name be cancelled. It is understandable that Complainant should want that order to be made rather than have the domain name transferred to itself. No doubt that is so because one of Complainant’s clients has already been defrauded and there must be the potential for this to happen again while the domain name remains valid. In all the circumstances revealed in this matter the Panel finds that it is appropriate to cancel the domain name as requested rather than transfer it to Complainant.
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 <planetlnnovatlon.com> domain name be CANCELLED.
The Honourable Neil Anthony Brown QC
Panelist
Dated: November 18, 2021
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