Katherine Rae Lobe v. Dexters Lab / Derek Hal
Claim Number: FA2202001984427
Complainant is Katherine Rae Lobe (“Complainant”), represented by Kenneth Motolenich-Salas of MotoSalas Law, PLLC, Arizona, USA. Respondent is Dexters Lab / Derek Hal (“Respondent”), Switzerland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <katherineraelobe.com>, registered with NameSilo, 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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 15, 2022; the Forum received payment on February 15, 2022.
On February 15, 2022, NameSilo, LLC confirmed by e-mail to the Forum that the <katherineraelobe.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 February 16, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 8, 2022 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@katherineraelobe.com. Also on February 16, 2022, 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 March 14, 2022, 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 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, Katherine Rae Lobe, is the founder, owner, and operator of Lobe Financial Services LLC and is a certified financial planner and accredited investment fiduciary. She holds brokerage and other licenses with authorities such as the Financial Industry Regulatory Authority (FINRA) and many individual states. Complainant asserts common law rights in the trademark KATHERINE RAE LOBE, dating to 2008, based on the longstanding use, holding of licenses bearing Complainant’s mark, marketing materials making use of the mark, and the testimony of two of Complainant’s clients. The <katherineraelobe.com> domain name, registered on October 22, 2021, is identical or confusingly similar to Complainant’s KATHERINE RAE LOBE mark because it wholly incorporates Complainant’s mark merely adding in the “.com” generic top-level domain (“gTLD”).
Respondent does not have any rights or legitimate interests in the <katherineraelobe.com> domain name because Respondent is not commonly known by the domain name nor has Respondent been authorized or licensed to use Complainant’s mark. Respondent is not using the domain name in connection with a bona fide offering of goods or services nor is it making a legitimate noncommercial or fair use thereof because Respondent seeks to pass itself off as Complainant in furtherance of a phishing scheme.
Respondent registered and uses the <katherineraelobe.com> domain name in bad faith because it is engages in a phishing scheme aimed at obtaining personal and financial information as well as funds from clients who wish to obtain financial services. Respondent purports to offer the same services as those offered by Complainant. Further bad faith is also evident through Respondent’s failure to respond to Complainant’s cease and desist communications. Finally, Respondent has a pattern of registering domain names in bad faith as it has operated a similar phishing scheme misusing the name of another financial professional.
B. Respondent
Respondent failed to submit a Response in this proceeding.
i. Complainant has demonstrated its ownership of common-law rights in the trademarks KATHERINE RAE LOBE and LOBE;
ii. Respondent’s operation of a phishing scheme at the disputed domain name, as supported by substantial evidence, does not provide it with any rights or legitimate interests in the domain name; and
iii. Respondent registered and uses the disputed domain name to impersonate Complainant in furtherance of a phishing scheme aimed at surreptitiously obtaining the sensitive personal information and funds of unsuspecting clients who wish to obtain financial services. This clearly demonstrates that the domain name was registered and 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 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 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”).
Complainant asserts common law rights in the KATHERINE RAE LOBE mark. In the absence of registration of a mark with a trademark authority, a complainant may demonstrate rights under Policy ¶ 4(a)(i) by supplying evidence that includes, but is not limited to, longstanding promotion and use of the mark, third-party recognition of the mark, and association of the mark with complainant amongst the public. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding that “The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”) With respect to personal names, this can sometimes present a challenge to prove that the name is recognized as a trademark rather than just the name of the individual. See, e.g. Sir Peter Scott v. Dr. Howard Fredrics, D2009-0276 (WIPO May 1, 2009) (Complainant is Sir Peter Scott Vice-Chancellor of Kingston University but “[t]here is no evidence that the Complainant has commercially exploited his name in trade, for example as an author or broadcaster to a sufficient extent for it to constitute a ‘brand’.”) However, where a personal name is promoted and has gained the distinctiveness of a trademark, this can satisfy the requirement of Policy ¶ 4(a)(i). See Gilbert Armenta and Armenta Realty Holdings, LLC v. Attn Rob Lyons, Sea Alert Ltd / AMS Trustees Ltd, FA 1621194 (Forum July 15, 2015) (finding, “Complainant has provided the Panel with a copy of its certification of formation (dated Jan. 20, 2006) as a limited liability company (LLC) under the name “Armenta Realty Holdings, LLC” in the state of Delaware. Complainant has also provided a copy of a commercial lease it entered into with a Florida corporation. Further, in its complaint, Complainant contends that it has spent a great deal of time, effort, and money conducting business under the ARMENTA and GILBERT ARMENTA marks.”) See also Joel Pickford v. Frances Dunn, FA 1772362 (Forum Mar. 30, 2018) (citing John G. Balestriere v. Simon Mills/Emancipation Media, FA 1618353 (Forum June 11, 2015) (finding Complainant’s JOHN G. BALESTRIERE mark is Complainant’s personal name, and Complainant showed secondary meaning by demonstrating that the mark has been used as a marketable commodity, or for direct commercial purposes in marketing goods and services by providing evidence of use in the legal services business and attorney advertising dating back to Jan. 1, 2005). Here, Complainant’s KATHERINE RAE LOBE mark is the personal name of Complainant. In support of her claim of common-law trademark rights, Complainant provides evidence of brokerage and insurance agent licenses issued by various government authorities (e.g., FINRA, the state of Michigan, the state of Georgia), a screenshot of Complainant’s www.lobefinancial.com website displaying the name “Katherine Lobe”, as well as signed declarations from two of Complainant’s clients stating “I have come to associate ‘Katherine Lobe’ with not just the name of my financial planner, but rather the source of high-quality, value-driven financial planning services.” Complainant further claims that the mark is used on “letterhead, business cards, [and] financial planning documents provided to clients” although copies of these are not provided. While the record could be more robust in terms of advertising and marketing of the full name KATHERINE RAE LOBE, Respondent has not contested the submitted evidence and the Panel notes that the name “Lobe” is used as a trademark for financial services in Complainant’s evidence (i.e., in business incorporation records of Lobe Financial Services, LLC, a logo on Complainant’s website, and promotional videos appearing on such site). In light of the submitted evidence and the fact that Policy ¶ 4(a)(i) is considered a mere threshold or standing test[i], the Panel finds that Complainant has rights in the KATHERINE RAE LOBE and LOBE marks under Policy ¶ 4(a)(i).
Next, Complainant argues that the <katherineraelobe.com> domain name is identical or confusingly similar to Complainant’s mark because it wholly incorporates the mark merely adding in the “.com” gTLD to form a domain name. A domain name may be identical or confusingly similar to a complainant’s mark, under Policy ¶ 4(a)(i), despite the addition of a gTLD. See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Therefore, the Panel finds that the <katherineraelobe.com> domain name is identical or confusingly similar to Complainant’s KATHERINE RAE LOBE and LOBE marks under 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”).
Complainant argues that Respondent has no rights or legitimate interests in the <katherineraelobe.com> domain name because Respondent is not commonly known by the domain name nor has Respondent been authorized to use Complainant’s KATHERINE RAE LOBE mark. Where a respondent does not provide evidence to the contrary, it may be found to not be commonly known by a domain name, under Policy ¶ 4(c)(ii), where identifying WHOIS information is unrelated to the disputed domain name and where a respondent is not authorized to use a complainant’s mark. See Deutsche Lufthansa AG v. Mohamed elkassaby, FA 1801815 (Forum Sept. 17, 2018) (“The WHOIS lists “Mohamed elkassaby” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).”) The WHOIS information for the <katherineraelobe.com> domain name, as verified by the concerned Registrar, lists the registrant as ”Dexters Lab / Derek Hal”. Complainant asserts that Respondent has not been authorized or licensed by Complainant to use the KATHERINE RAE LOBE mark and Respondent, by its non-participation in this case, does not contest this. Therefore, the Panel finds no evidence that Respondent is commonly known by the <katherineraelobe.com> domain name under Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent is not using the <katherineraelobe.com> domain name in connection with a bona fide offering of goods or services and that it is not making a legitimate noncommercial or fair use thereof because Respondent passes itself off as Complainant illegally purporting to provide services under a false brokerage license. Use of a domain name to pass oneself off as a complainant in an attempt to illegally profit from deception is certainly not evidence of a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Dell Inc. v. Devesh Tyagi, FA 1785301 (Forum June 2, 2018) (“Respondent replicates Complainant’s website and displays Complainant’s products. The Panel finds that this use is not a bona fide offering of goods or services under Policy ¶¶ 4(c)(i) & (iii).”); see also Nintendo of America Inc. v. Dajana Shawn, FA 1798791 (Forum Sept. 4, 2018) (“The use of a Domain Name to promote illegal products or services is neither a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use within the meaning of Policy ¶ 4(c)(iii)).”). Complainant asserts that Respondent is illegally offering services because securities brokerage and related financial services require a license and Respondent’s lists a fake FINRA license number on its website. According to the screenshots of the <katherineraelobe.com> website provided by Complainant, Respondent purports to offer financial services of the same nature that Complainant itself provides. As part of its deception, Respondent’s website uses photographs of a woman who is not Complainant[ii] and displays “information concerning Ms. Lobe’s work experience which were simply lifted from Ms. Lobe’s truthful website”. Respondent has not filed a response or made any other submission in this case and so it does not offer an alternate explanation for its actions. Therefore, as Complainant has made a prima facie showing which has not been rebutted by Respondent, the Panel finds, by a preponderance of the submitted evidence, that Respondent is not using the <katherineraelobe.com> domain name in connection with a bona fide offering of goods or service under Policy ¶¶ 4(c)(i) and (iii).
Complainant argues that Respondent had actual and constructive knowledge of Complainant’s rights in the KATHERINE RAE LOBE mark at the time it registered the <katherineraelobe.com> domain name. Actual knowledge may form a solid foundation upon which an assertion of bad faith registration can be built under Policy ¶¶ 4(a)(iii). Such knowledge is most often evident where a domain name is used in furtherance of a phishing scheme. See Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum Jan. , 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.”) Complainant’s submitted screenshots of Respondent’s website show that Respondent seeks to pass itself off as Complainant. It further submits an email from an individual who contacted Complainant after being deceived by and sending funds to Respondent. Finally, Complainant submits a signed declaration from a colleague, who is also a financial professional, detailing that colleague’s correspondence with Respondent in which Respondent identifies itself as “Katherine Rae lobe [sic]” and encourages the colleague to submit an enrollment form to retain Respondent for the provision of securities trading services. From this evidence it is clear to the Panel that Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the KATHERINE RAE LOBE mark.
Complainant goes on to argue that Respondent registered and uses the <katherineraelobe.com> domain name in bad faith because Respondent passes itself off as Complainant by claiming to provide the same financial services as Complainant in furtherance of a phishing scheme. Use of a domain name to pass oneself off as a complainant in furtherance of a phishing scheme is evidence of bad faith registration and use under Policy ¶¶ 4(b)(iii) and (iv). See Wall v. Silva, FA 105899 (Forum Apr. 29, 2002) (finding that despite respondent’s claim that it used the <josephinewall.com> domain name, which was identical to complainant’s JOSEPHINE WALL mark, to help complainant become popular in the United States, the Panel found that the respondent’s use of the domain name to sell the complainant’s artwork in the United States constituted disruption pursuant to Policy ¶ 4(b)(iii)); see also Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”). Complainant asserts that Respondent seeks to pass itself off as Complainant by using her name, a false license number, and offering brokerage and other financial services of the same kind as those provided by Complainant. It submits the evidence noted in the prior section including copies of Respondent’s website which uses a false FINRA license number and photographs of an unrelated person, emails from one of Respondent’s victims, and the declaration of one of Complainant’s colleagues who contacted and was solicited by Respondent posing as Complainant. Based upon this evidence, the Panel determines there to be substantial grounds upon which to find that Respondent registered and uses the katherineraelobe.com> domain name in bad faith under Policy ¶ 4(b)(iii) and (iv) by passing itself off as Complainant in pursuit of commercial gain.
Complainant further asserts that Respondent registered and uses the <katherineraelobe.com> domain name in bad faith because Respondent has prevented Complainant from using this domain name and has engaged in a pattern of using domain names for similar phishing activity. Previous engagement in fraudulent conduct may be evidence of a domain name registered and used in bad faith under Policy ¶ 4(b)(ii). See Amazon Technologies, Inc. v. Clayton S. Sailor / Theda Folkerts / G H, FA 1978005 (Forum Jan. 24, 2022) (Respondent shows “a pattern of competing activity and illustrative of bad faith” where it has engaged in past efforts to “gather personal information of customers in apparent phishing attempts”.) Complainant states that Respondent has previously registered a domain name using the personal name of another financial professional in bad faith. A screenshot of this impersonation site is submitted into evidence and the Panel notes that Respondent uses the same photo of another woman as that which is used on the <katherineraelobe.com> website. The Panel finds that this evidence, combined with Respondent’s preventing Complainant from reflecting its mark in a corresponding domain name, leads to a holding that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(ii).
Finally, Complainant argues that Respondent registered and uses the <katherineraelobe.com> domain name in bad faith because Respondent failed to respond to Complainant’s cease and desist communications. Failure to respond to demand letters may provide further evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Seiko Epson Corporation v. Ashish Sen, FA 1702054 (Forum Dec. 12, 2016) (finding that failing to respond to a cease-and-desist demand letter constitutes bad faith). Complainant submits copies of two different email communications that were addressed to Respondent and states that it has not received any reply to these communications. From this, the Panel finds further support for its conclusion that Respondent registered and uses the katherineraelobe.com> domain name in bad faith under 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 <katherineraelobe.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: March 17, 2022
[i] See Domain Name Arbitration, 4.01 (Gerald M. Levine, Legal Corner Press, 2nd ed. 2019) (“The standard of proof for ‘this limb of the Policy is relatively low.’ [quoting Asset Marketing Systems, LLC v. Silver Lining, D2005-0560 (WIPO July 22, 2005)]. When a complainant proves there is ‘enough goodwill and reputation in and to a name and sufficient association of the same with the [complainant], no matter how strong or weak those trademark and service mark rights may be’ it is sufficient to satisfy the first limb of the Policy.” quoting Action Sports Videos v. Jeff Reynolds, D2001-1239 (WIPO Dec. 13, 2001).
[ii] Complainant determined that this photo has been copied from the website of an attorney based in the state of Arizona who has no connection to or knowledge of Complainant, Respondent, or the disputed domain name.
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