Castle Cement Limited v. Valeriy Leonidovic Romanov c/o CASTLECEMENT.NET
Claim Number: FA0912001297716
Complainant is Castle Cement Limited (“Complainant”), represented by David Powell, of Stevens Hewlett & Perkins, England. Respondent is Valeriy Leonidovic Romanov c/o CASTLECEMENT.NET (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <castlecement.net>, registered with Enom, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 6, 2009; the National Arbitration Forum received a hard copy of the Complaint on December 7, 2009.
On December 7, 2009, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <castlecement.net> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On December 17, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 6, 2010 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@castlecement.net by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 19, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <castlecement.net> domain name is identical to Complainant’s CASTLE CEMENT mark.
2. Respondent does not have any rights or legitimate interests in the <castlecement.net> domain name.
3. Respondent registered and used the <castlecement.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Castle Cement
Limited, holds a trademark registration with the United Kingdom Intellectual
Property Office (“UKIPO”) for the CASTLE CEMENT mark (Reg. No. 2,119,243A
issued September 19, 1997) in connection with cement products and services.
Respondent, Valeriy Leonidovic Romanov c/o CASTLECEMENT.NET, registered the <castlecement.net> domain name on August 2, 2009. The disputed domain name resolves to a website that allows Respondent to fraudulently engage in “phishing” to acquire payments and personal information of Internet users who access the disputed domain name seeking Complainant’s products and services.
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."
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
The Panel finds that
Complainant has established rights in the CASTLE CEMENT mark under Policy ¶
4(a)(i) through its trademark registration with the UKIPO. See
The Royal Bank of Scot. Group plc & Nat. Westminster
Bank plc v. Soloviov, FA 787983 (Nat. Arb. Forum Nov. 3, 2006)
(“Complainant’s trademark registrations for the NATWEST mark with the United
Kingdom Patent Office . . . establish Complainant’s rights in the mark pursuant
to Policy ¶4(a)(i).”); see also Renaissance
Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter
whether the complainant has registered its trademark in the country in which
the respondent resides, only that it can establish rights in some
jurisdiction).
Respondent’s <castlecement.net>
domain name is identical to
Complainant’s CASTLE CEMENT mark pursuant to Policy ¶ 4(a)(i). Respondent’s disputed domain name contains
Complainant’s CASTLE CEMENT mark and merely eliminates the space between the
words and adds the generic top-level domain (“gTLD”) “.net.” The Panel finds that the deletion of the
space between the words in Complainant’s mark does not distinguish between the
disputed domain name and the mark. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum
Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE,
“as spaces are impermissible in domain names and a generic top-level domain
such as ‘.com’ or ‘.net’ is required in domain names”); see also Wembley Nat’l
Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding that the
domain name <wembleystadium.net> is identical to the WEMBLEY STADIUM
mark). The Panel also finds that the
addition of a gTLD is irrelevant in distinguishing a disputed domain name and a
mark. See Trip Network Inc. v. Alviera, FA
914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a
gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Diesel v. LMN, FA 804924 (Nat. Arb. Forum Nov. 7, 2006) (finding
<vindiesel.com> to be identical to complainant’s mark because “simply
eliminat[ing] the space between terms and add[ing] the generic top-level domain
(“gTLD”) ‘.com’ … [is] insufficient to differentiate the disputed domain name
from Complainant’s VIN DIESEL mark under Policy ¶ 4(a)(i)”). Therefore, pursuant to Policy ¶ 4(a)(i), the
Panel finds that Respondent’s disputed domain name is identical to Complainant’s GIN
SYSTEM mark.
The
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove it has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). Based on the arguments made in the Complaint, the Panel finds that Complainant has established a prima facie case in support of its contentions. Respondent has failed to submit a Response to these proceedings. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”). Nevertheless, the Panel will examine the record to determine if Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).
The WHOIS information lists the registrant as “Valeriy Leonidovic Romanov c/o CASTLECEMENT.NET.” Complainant alleges that Respondent has never operated any bona fide or legitimate business under the disputed domain name and that Complainant has not granted any license or permission by which Respondent could have registered or used Complainant’s CASTLE CEMENT mark. Without evidence to the contrary, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also City News & Video v. Citynewsandvideo, FA 244789 (Nat. Arb. Forum May 5, 2004) (“Although Respondent’s WHOIS information lists its name as ‘citynewsandvideo,’ there is no evidence before the Panel to indicate that Respondent is, in fact, commonly known by the disputed domain name <citynewsandvideo.com> pursuant to Policy ¶ 4(c)(ii).”).
Complainant alleges that Respondent is using the website accessed by the disputed domain name to use Complainant’s mark to fraudulently acquire payments and personal information of Internet users who access the disputed domain name seeking Complainant’s products and services. The Panel finds “phishing” for personal information does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii). See Allianz of Am. Corp. v. Bond, FA 690796 (Nat. Arb. Forum June 12, 2006) (holding that the respondent’s use of the <allianzcorp.biz> domain name to fraudulently acquire the personal and financial information of Internet users seeking Complainant’s financial services was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)); see also Juno Online Servs., Inc. v. Iza, FA 245960 (Nat. Arb. Forum May 3, 2004) (finding that using a domain name to redirect “Internet users to a website that imitates Complainant’s billing website, and is used to fraudulently acquire personal information from Complainant’s clients,” is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s registration and use of the <castlecement.net> domain name to mislead visitors as to the affiliation of the website, and thereby obtain personal information from Internet users, is a disruption of Complainant’s business and constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that the respondent registered the domain name in question to disrupt the business of the complainant, a competitor of the respondent); see also EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation from the complainant's marks suggests that the respondent, the complainant’s competitor, registered the names primarily for the purpose of disrupting the complainant's business).
Respondent is using the disputed domain name to intentionally attract Internet users to its website to “phish” for users’ personal information by creating a strong likelihood of confusion with Complainant’s CASTLE CEMENT mark. The Panel presumes Respondent then profits by using such information for fraudulent purposes. Thus the Panel finds Respondent’s use of the disputed domain name is also evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Juno Online Servs., Inc. v. Iza, FA 245960 (Nat. Arb. Forum May 3, 2004) (finding that using a domain name that “is confusingly similar to Complainant’s mark, redirects Internet users to a website that imitates Complainant’s billing website, and is used to fraudulently acquire personal information from Complainant’s clients” is evidence of bad faith registration and use); see also Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (finding that the respondent demonstrated bad faith registration and use because it was attempting to acquire the personal and financial information of Internet users through a confusingly similar domain name).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <castlecement.net> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: February 2, 2010
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