Deister Machine Company, Inc. v. James Brown
Claim Number: FA2205001997801
Complainant is Deister Machine Company, Inc. (“Complainant”), represented by Tore T. DeBella of Faegre, Drinker Biddle & Reath LLP, US. Respondent is James Brown (“Respondent”), US.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <deistermachlne.com>, 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 May 24, 2022; the Forum received payment on May 25, 2022.
On May 24, 2022, NameCheap, Inc. confirmed by e-mail to the Forum that the <deistermachlne.com> 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 ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 27, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 16, 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@deistermachlne.com. Also on May 27, 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 23, 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, Deister Machine Company, Inc. offers industrial machines for sale and also provides related services. Complainant has rights in the trademark DEISTER through its use in commerce since 1948 and its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,259,163, registered on Nov. 29, 1983). Respondent’s <deistermachlne.com> domain name, registered on April 5, 2022, is identical or confusingly similar to Complainant’s DEISTER mark as it incorporates the mark in its entirety and adds the word “machine” but replaces the letter “i” with an “l”, and adds the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the disputed domain name. There is nothing indicating that Respondent owns or operates a legitimate business using the DEISTER® name. Rather, the domain name is currently being used to facilitate fraudulent activity.
Respondent registered and uses the <deistermachlne.com> domain name in bad faith. Respondent is using the disputed domain name to engage in an email phishing scheme. Additionally, Respondent used a privacy service to hide its identity. Furthermore, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the DEISTER mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
- The <deistermachlne.com> domain name contains the entirety of Complainant’s DEISTER trademark followed by a misspelling of the word “machine” which is relevant to Complainant’s field of business and is thus confusingly similar to the mark;
- Respondent’s use of the disputed domain name in furtherance of a phishing scheme does not provide it with any rights or legitimate interests; and
- Respondent’s phishing activity is based on confusion with Complainant’s mark and seeks illicit commercial gain demonstrating bad faith registration and use.
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”).
Next, Complainant contends that Respondent’s <deistermachlne.com> domain name is identical or confusingly similar to Complainant’s DEISTER mark. Under Policy ¶ 4(a)(i), adding a purposely misspelled word along with the “.com” gTLD is insufficient to differentiate a domain name from an asserted mark. See Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018) (“The [<morganstonley.com> and <morganstainley.com>] Domain Names are confusingly similar to Complainant’s marks, as they fully incorporate the MORGAN STANLEY mark, varying it only by subtle misspellings, omitting a space between the words, and adding the generic top-level domain (“gTLD”) ‘.com.’”) Here, the disputed domain name incorporates the mark in its entirety and adds the word “machine” but replaces the letter “i” with the letter “l” and adds the “.com” gTLD. Of particular note, the term “machine” actually enhances the confusing similarity, as Complainant sells industrial machines and related services. See, e.g., UBS AG v. William Ricaldo, FA 1891124 (Forum May 1, 2020) (“because the phrase ‘private client access’ is closely associated with Complainant’s business, its presence in the Domain Name [<ubsprivateclientsaccess.com>] exacerbates its confusing similarity” to Complainant’s UBS mark). The Panel therefore finds that Respondent’s domain name is confusingly similar to Complainant’s mark 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”).
Although no reference is made in the Complaint to ¶ 4(c), Complainant does assert that Respondent has no rights or legitimate interests in the disputed domain name. Under Policy ¶ 4(c)(ii), relevant WHOIS information may inform consideration of whether a respondent is commonly known by the disputed domain name. See Deutsche Lufthansa AG v. Mohamed elkassaby, FA 1801815 (Forum Sep. 17, 2018) (“The WHOIS lists “Mohamed elkassaby” as the registrant of record). Here, the WHOIS record identifies Respondent as “James Brown” and Complainant asserts that “[t]here is nothing indicating that Respondent owns or operates a legitimate business using the DEISTER® name”. Respondent has not filed a Response or made any other submission in this case and so it does not contest this assertion. On the record before it, the Panel finds no ground upon which to conclude that Respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Additionally, Complainant contends that Respondent is using the <deistermachlne.com> domain name in furtherance of fraudulent activity. Under Policy ¶¶ 4(c)(i) and (iii), using a disputed domain name to engage in phishing through emails and to obtain commercial gain does not constitute a bona fide offering of goods or services, nor any legitimate noncommercial or fair use. See Chevron Intellectual Property LLC v. Thomas Webber / Chev Ronoil Recreational Sport Limited, FA 1661076 (Forum Mar. 15, 2016) (finding that the respondent had failed to provide a bona fide offering of goods or services or any legitimate noncommercial or fair use, stating, “Respondent is using an email address to pass themselves off as an affiliate of Complainant. Complainant presents evidence showing that the email address that Respondent has created is used to solicit information and money on false pretenses. The disputed domain name is being used to cause the recipients of these emails to mistakenly believe Respondent has a connection with Complainant and is one of the Complainant’s affiliates.”) Complainant provides a screenshot of an email sent by Respondent from the email address “ering@deistermachlne.com” in which Respondent falsely claims to be an employee of Complainant. The message is addressed to one of Complainant’s sales representatives and requests the transfer of significant funds into an account that Complainant claims is owned by Respondent. This presents a prima facie case which has not been rebutted by Respondent. Thus, the Panel finds, by a preponderance of the submitted evidence, that Respondent is not using the disputed domain name for any bona fide offering of goods or services under Policy ¶ 4(c)(i), nor is it making a legitimate noncommercial or fair use thereof under Policy ¶ 4(c)(iii).
Complainant contends that Respondent registered the <deistermachlne.com> domain name in bad faith with actual and constructive knowledge of Complainant’s rights in the DEISTER mark. While the theory of constructive knowledge is generally disfavored under Policy ¶ 4(a)(iii), evidence of a respondent’s actual knowledge of the asserted trademark, through its use of the disputed domain name, can form the foundation for a claim of bad faith registration. In particular, use of a domain name for passing off activity has been held to demonstrate a respondent’s actual knowledge of a complainant’s mark. 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.”) As Respondent has sent at least one phishing email claiming to be Complainant’s employee and attempting to fraudulently obtain funds from one of Complainant’s sales representative, the Panel finds that Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the DEISTER mark.
Next, while Complainant makes no specific reference to Policy ¶ 4(b), it does claim that Respondent uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii). Complainant alleges that Respondent uses the disputed domain name to engage in phishing activity in the pursuit of fraudulent commercial gain. This type of fraudulent activity which is, by its nature, based on confusion with a complainant’s trademark for illicit commercial gain, has been held to support a finding of bad faith under the Policy. See SHUAA Capital psc v. Oba Junkie / shuaa capital psc, FA 1581255 (Forum Oct. 29, 2014) (“The Panel finds that Respondent’s use of the domain name’s e-mail suffix for fraudulent purposes illustrates Policy ¶ 4(a)(iii) bad faith.”) Complainant submits screenshots of an email sent by Respondent from the disputed domain name’s affiliated email address to Complainant’s sales representatives. In this message Respondent falsely claims to be an employee of Complainant and requests transfer of significant funds to an account owned by Respondent. As Respondent has not participated in this case to present any other explanation for its activities, the Panel finds that the disputed domain name was registered and used in bad faith under Policy ¶ 4(a)(iii).
Additionally, Complainant argues that Respondent’s bad faith is demonstrated by its use of a WHOIS privacy service. Under Policy ¶ 4(a)(iii), use of a privacy service to hide one’s identity can, after considering all the other circumstances of a case, provide further evidence of bad faith registration and use. See Phoenix Niesley-Lindgren Watt v. Contact Privacy Inc., Customer 0150049249, FA 1800231 (Forum Sep. 6. 2018) (“In a commercial context, using a WHOIS privacy service raises the rebuttable presumption of bad faith registration and use of the disputed domain name. An honest merchant in the marketplace does not generally try to conceal the merchant’s identity. Good faith requires honesty in fact. Respondent did nothing to rebut this presumption of bad faith. Therefore, the Panel will find bad faith registration and use for this reason.”) From the submitted screenshot of the public WHOIS record for the <deistermachlne.com> domain name, the Panel notes that Respondent’s information was initially hidden behind a privacy service. Therefore, the Panel finds that Respondent’s use of a privacy service further supports its finding of 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 <deistermachlne.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: June 25, 2022
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