Rigaku Americas Holding Company, Inc. v. ijaya official
Claim Number: FA2205001997227
Complainant is Rigaku Americas Holding Company, Inc. (“Complainant”), represented by Patrick J. Concannon of Nutter, McClennen & Fish, Massachusetts. Respondent is ijaya official (“Respondent”), NG.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <rgaku.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 20, 2022; the Forum received payment on May 20, 2022.
On May 23, 2022, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <rgaku.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 May 24, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 13, 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@rgaku.com. Also on May 24, 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 June 21, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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
The Complainant is a technology innovator and producer of electronics products. Complainant has rights in the RIGAKU trademark through its registration with multiple trademark agencies such as the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,278,842, registered on Sep. 21, 1999). Respondent’s <rgaku.com> domain name is identical or confusingly similar to Complainant’s trademark as it incorporates the trademark in its entirety and merely omits the letter “i” and adds the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <rgaku.com> domain name. Respondent is not commonly known by the disputed domain name, and Complainant has not authorized or licensed Respondent to use its RIGAKU trademark in the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use, but instead passes off as Complainant for its own commercial gain. Furthermore, Respondent fails to make active use of the disputed domain name.
Respondent registered and uses the <rgaku.com> domain name in bad faith. Respondent passes off as Complainant while engaging in a phishing scheme. Additionally, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the RIGAKU trademark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the following U.S. trademark registrations:
No. 2,278,842 RIGAKU (word), registered September 21, 1999 for goods in Intl Class 9;
No. 2,282,620 RIGAKU (logo), registered October 5, 1999 for goods in Intl Class 9; and
No. 6,145,726 R RIGAKU (fig), registered September 8, 2020 for goods in Intl Class 9.
The Complainant also claims rights in the RIGAKU trademark by registrations in Germany and United Kingdom. However, the evidence submitted by the Complainant show Rigaku Corporation, Tokyo, Japan, as the owner. The Panelist has no reason to conclude that the said Japanese company is not related to the Complainant, but as the referred US registrations are accepted and enough to prove rights in the RIGAKU trademark, the Panelist will not take the German or UK registrations into further consideration.
The disputed domain name <rgaku.com> was registered on May 6, 2022
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 Complainant claims rights in the RIGAKU trademark due to its registration with the USPTO (e.g. Reg. No. 2,278,842, registered on Sep. 21, 1999). Registration with the USPTO is generally sufficient to establish rights in a trademark for the purposes of 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”).”). The Panel therefore holds that Complainant’s registration of the RIGATU trademark with the USPTO is sufficient to establish rights in the trademark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <rgaku.com> domain name is identical or confusingly similar to Complainant’s trademark RIGAKU. Under Policy ¶ 4(a)(i), omitting a letter and adding the “.com” gTLD is insufficient to differentiate from the mark it incorporates. See Morgan Stanley v. Domain Admin / Whois Privacy Corp., FA 1783121 (Forum June 1, 2018) (“Respondent’s <morganstanle.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark as it wholly incorporates the mark, but for the omission of the letter ‘y’ and spacing within the mark, and appends the ‘.com’ gTLD.”). In this case, the disputed domain name incorporates the trademark in its entirety, merely omitting the letter “i” and adds the “.com” gTLD. Therefore, the Panel agrees, and find that Respondent’s domain name is at least confusingly similar to Complainant’s trademark under Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). 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 contends that Respondent is not commonly known by the <rgaku.com> domain name, nor has Complainant authorized or licensed Respondent to use its RIGAKU trademark in the disputed domain name. Under Policy ¶ 4(c)(ii), where there is no response, relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Complainant asserts that it never authorized or licensed Respondent to use its RIGAKU trademarks in the disputed domain name, and that Respondent is not generally known by the domain name. The WHOIS information identifies Respondent as “ijaya official”, and nothing in the record rebuts Complainant’s assertion that it never authorized or licensed Respondent to use its trademark in the disputed domain name. Furthermore, Respondent’s last name is indicated as “official”, which Complainant contends is likely a fake name. The Panel agrees with the Complainant’s conclusion, and find that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent is not using the <rgaku.com> domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use by passing off as Complainant for commercial gain. Under Policy ¶¶ 4(c)(i) and (iii), passing off as a complainant for commercial gain does not constitute a bona fide offering of goods or services, nor any legitimate noncommercial or fair use. See Emerson Electric Co. v. Adilcon Rocha, FA 1735949 (Forum July 11, 2017) (finding that respondent’s attempt to pass 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). Complainant provides screenshots of an email sent one day after Respondent registered the domain name, where Respondent emailed employees at Complainant’s parent company in Japan asking them to wire money to an account controlled by Respondent. Furthermore, Respondent sent the email from a fraudulent email address while passing off as one of Complainant’s employees. Thus, the Panel find that Respondent is not using the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Furthermore, Complainant contends that Respondent is not using the <rgaku.com> domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use by failing to make active use of the disputed domain name. Under Policy ¶¶ 4(c)(i) and (iii), failing to make active use of a domain name does not indicate a bona fide offering of goods or services, nor any legitimate noncommercial or fair use. See CrossFirst Bankshares, Inc. v Yu-Hsien Huang, FA 1785415 (Forum June 6, 2018) (“Complainant demonstrates that Respondent fails to actively use the disputed domain name as it resolves to an inactive website. Therefore, the Panel finds that Respondent fails to actively use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).”). Complainant provides a screenshot of the disputed domain name’s resolving website, which displays no content except for an error message. Therefore, the Panel find that Respondent is not using the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
The Complainant argues that Respondent registered and uses the <rgaku.com> domain name in bad faith by passing off as and impersonating Complainant in emails. Under Policy ¶¶ 4(b)(iii) and (iv), using a disputed domain name to pass off as and impersonate complainant in emails is indeed evidence of bad faith registration and use. See Qatalyst Partners LP v. Devimore, FA 1393436 (Forum July 13, 2011) (finding that using the disputed domain name as an e-mail address to pass itself off as the complainant in a phishing scheme is evidence of bad faith registration and use). As noted above, the Complainant has provided screenshots of an email exchange initiated by Respondent one day after registering the disputed domain name, where Respondent impersonates Complainant’s employee and requests money be transferred to its account. Thus, the Panel find that Respondent registered and uses the disputed domain name in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Additionally, Complainant contends that Respondent registered and uses the <rgaku.com> domain name in bad faith by engaging in phishing. Under Policy ¶ 4(a)(iii), using a disputed domain name to phish for users’ personal or financial information is evidence of bad faith registration and use. See Zoetis Inc. and Zoetis Services LLC v. VistaPrint Technologies Ltd, FA1506001623601 (Forum July 14, 2015) (“Respondent’s attempt to use the <zoietis.com> domain name to phish for personal information in fraudulent emails also constitutes bad faith pursuant to Policy ¶ 4(a)(iii).”). The Panel agrees with the Complainant’s conclusion and find that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Furthermore, Complainant argues that Respondent registered the <rgaku.com> domain name in bad faith by having actual knowledge of Complainant’s rights in the RIGAKU trademark. Under Policy ¶ 4(a)(iii), actual knowledge of complainants’ rights in a trademark may be evidence of bad faith, and may be established through incorporation of a well-known and registered mark into a disputed domain name. See Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum January 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.”). The Panel recalls that Complainant’s registered RIGAKU trademark is incorporated into the disputed domain name. Therefore, the Panel agrees with the Complainant and find that Respondent registered and uses the disputed 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 <rgaku.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: June 27, 2022
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