Allegheny Technologies, Inc. v. Hershal patel / atimetals / Kristin Holmes
Claim Number: FA2207002003445
Complainant is Allegheny Technologies, Inc. (“Complainant”), represented by Desiree Moore of K&L Gates LLP, Illinois, USA. Respondent is Hershal patel / atimetals / Kristin Holmes / ATImetals (“Respondent”), Tennessee, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <atlrmetals.com> and <atinnetals.com>, registered with Google 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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 7, 2022; the Forum received payment on July 7, 2022.
On July 8, 2022, Google LLC confirmed by e-mail to the Forum that the <atlrmetals.com> and <atinnetals.com> domain names are registered with Google LLC and that Respondent is the current registrant of the names. Google LLC has verified that Respondent is bound by the Google 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 July 14, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 3, 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@atlrmetals.com, postmaster@atinnetals.com. Also on July 14, 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 August 10, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
The Panel finds that the domain names are under common control as both domain names were used to send identical fraudulent emails; and both domain names were registered with the same registrar within a two-week period, using the same privacy service. This is sufficient to find that the domain names were registered by the same domain name holder. See The Valspar Corporation v. Zhou Zhiliang / zhouzhiliang / Zhiliang Zhou / Eric Chow / Visspa Ltd., FA100800133934 (Forum Sept. 28, 2010); see also BBY Solutions, Inc. v. White Apple / Dev Kumar, FA1805001787251 (Forum June 20, 2018).
Consequently, the Panel will rule on both contested domain names, and the registrants are collectively referred to as “Respondent”.
A. Complainant
Complainant states that it is a specialty metals company that produces various high performance materials, components, advanced alloys, and solutions for worldwide aerospace, defense, oil & gas, chemical, electrical energy, and medical industries. Complainant’s services include the development and production of specialty materials and components for: military and commercial jet engines and airframes; deep offshore oil wells; solar, nuclear, fuel cell, and geothermal energy generation; medical products such magnetic resonance imaging (“MRI”) devices and replacement/prosthetic implants; and consumer electronics components for computers and smart phones. Complainant operates a website at the domain name <atimetals.com>. Complainant claims rights in the ATI METALS mark through registration with the multiple governmental agencies around the world, including in the United Kingdom in 2007.
Complainant alleges that the disputed domain names are confusingly similar to its ATI METALS mark because they are simply misspelled versions of the mark (the letter “i” is replaced with the letters “lr” in one domain name, and the letter “m” is replaced with the letters “nn” in the other domain name), with the addition of the “.com” generic top-level domain (“gTLD”).
According to Complainant, Respondent lacks rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names, nor has Complainant authorized Respondent to use the ATI METALS mark in any way. Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. The disputed domain names to not resolve to active web sites. Respondent uses the disputed domain names to pass off as Complainant in furtherance of a phishing scheme. Specifically, Respondent interjected into legitimate email communications from a client of Complainant, posing as an employee of Complainant using email addresses based on the disputed domain names. Respondent’s intent was to deceive the clients and elicit payments to itself. The fraudulent invoices attached to the fraudulent emails displayed Complainant’s mark and distinctive logo.
Further, says Complainant, Respondent registered and uses the disputed domain names in bad faith. Respondent uses the disputed domains to pass off as Complainant in furtherance of a fraudulent email phishing scheme, disrupting Complainant’s business for its own commercial gain. Respondent had actual knowledge of Complainant’s rights in the ATI METALS mark prior to registration of the disputed domains.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the mark ATI METALS and uses it to market specialty metals.
Complainant’s rights in its mark date back to 2007.
The disputed domain names were registered in 2022.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The disputed domain names are used in furtherance of a fraudulent email phishing scheme; the fraudulent invoices attached to the fraudulent emails display Complainant’s mark and logo.
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 disputed domain name <atlrmetals.com> consists of a misspelling of Complainant’s ATI METALS mark (the letter “i” is replaced with the letters “lr”, with the addition of the “.com” generic top-level domain (“gTLD”). The disputed domain name is not obviously similar to Complainant’s mark. According to 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”): “In specific limited instances, while not a replacement as such for the typical side-by-side comparison, where a panel would benefit from affirmation as to confusing similarity with the complainant’s mark, the broader case context such as website content trading off the complainant’s reputation … may support a finding of confusing similarity.” In the instant case, the <atlrmetals.com> domain name is used in furtherance of a fraudulent email phishing scheme; the fraudulent invoices attached to the fraudulent emails displays Complainant’s mark and logo. The Panel finds that these circumstances support a finding of confusing similarity. Therefore, the Panel finds that the <atlrmetals.com> domain name is confusingly similar to Complainant’s ATI METALS mark per Policy ¶ 4(a)(i).
The disputed domain name <atinnetals.com> consists of a misspelling of Complainant’s ATI METALS mark (the letter “m” is replaced with the letters “nn”), with the addition of the “.com” generic top-level domain (“gTLD”). Generally, minor spelling differences do not distinguish a disputed domain from a mark sufficiently. See WordPress Foundation v. Bernat Lubos, FA 1613444 (Forum May 21, 2015) (finding that the <worspress.org> domain name is confusingly similar to the WORDPRESS mark under Policy ¶4(a)(i), stating, “A minor misspelling is not normally sufficient to distinguish a disputed domain name from a complainant’s mark.”). Furthermore, addition of a gTLD does not differentiate a disputed domain sufficiently. See Daedong-USA, Inc. v. O’Bryan Implement Sales, FA 210302 (Forum Dec. 29, 2003) (“Respondent's domain name, <kioti.com>, is identical to Complainant's KIOTI mark because adding a top-level domain name is irrelevant for purposes of Policy ¶ 4(a)(i).”). Therefore, the Panel finds that the <atinnetals.com> domain name is confusingly similar to Complainant’s ATI METALS mark per Policy ¶ 4(a)(i).
Complainant has not licensed or otherwise authorized Respondent to use its mark. Respondent is not commonly known by the disputed domain names: under Policy ¶ 4(c)(ii), WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name. See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Where the WHOIS is related to the disputed domain name, the Panel may still find the respondent lacks rights or legitimate interest in the disputed domain name if the respondent lacks authorization to use the complainant’s mark and the respondent fails to provide affirmative evidence in support of its identity. See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding that, although the respondent listed itself as “Jessie McKoy / Ripple Reserve Fund” in the WHOIS contact information, it did not provide any affirmative evidence to support this identity; combined with the fact that the complainant claimed it did not authorize the respondent to use the mark, the respondent is not commonly known by the domain name). Here, the WHOIS information of record shows that the registrants are “Hershal patel / atimetals / Kristin Holmes / ATImetals” but Respondent provides no affirmative evidence in support of this identity and no evidence in the record suggests Respondent is authorized to use the ATI METALS mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names per Policy ¶ 4(c)(ii).
The disputed domain names do not resolve to active web pages. When a disputed domain name resolves to a webpage lacking content, panels have found a lack of rights and legitimate interests based on a lack of bona fide offerings of goods or services and/or legitimate noncommercial or fair uses. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 0296583 (Forum Sept. 2, 2004) (Finding that resolving to an empty page featuring no substantive content or links is evidence that Respondent fails to actively use the disputed domain name, suggesting a lack of rights and legitimate interests in the disputed domain name); see also 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).”). The Panel therefore finds that Respondent is not using the disputed domain names to make a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Respondent uses the disputed domain names to pass off as Complainant in furtherance of a fraudulent email phishing scheme. This is not a bona fide offering of goods or services per Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use of a domain name per Policy ¶ 4(c)(iii). See DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (”Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”); see also Enterprise Holdings, Inc. v. I S / Internet Consulting Services Inc., FA 1785242 (Forum June 5, 2018) (“On its face, the use of a domain name that is confusingly similar to the mark of another in order to facilitate a phishing scheme cannot be described as either a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(iii).”). Thus the Panel finds, on this ground also, that Respondent fails to use the disputed domain names to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or 4(c)(iii)).
For all the above reasons, the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain names.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain names.
Indeed, as already noted, Respondent disrupts Complainant’s business by impersonating Complainant and attempting to divert funds from Complainant to Respondent through fraudulent emails. Using an infringing domain name to pass off as a trademark holder in furtherance of a phishing scheme may demonstrate bad faith disruption of Complainant’s business, as well as attraction to commercial gain under Policy ¶¶ 4(b)(iii) and/or (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)”). Thus the Panel finds that Respondent registered and used the disputed domain names in bad faith per Policy ¶¶ 4(b)(iii) and/or (iv).
Further, Respondent registered the disputed domain names with actual knowledge of Complainant’s mark: the fraudulent invoices attached to the fraudulent emails display Complainant’s mark and distinctive logo. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant’s rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark prior to Respondent’s registration of the disputed domain name and that this constitutes bad faith registration and use 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 <atlrmetals.com> and <atinnetals.com> domain names be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: August 10, 2022
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