StockTrans, Inc. v. Piyawan Fungsawan
Claim Number: FA1004001320663
Complainant is StockTrans, Inc., represented by Christen M. English, of Drinker Biddle & Reath LLP, (“Complainant”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <drstocktrans.com>, registered with Directi Internet Solutions Pvt. Ltd d/b/a Publicdomainregistry.com.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 22, 2010.
On April 23, 2010, Directi Internet Solutions Pvt. Ltd d/b/a Publicdomainregistry.com confirmed by e-mail to the National Arbitration Forum that the <drstocktrans.com> domain name is registered with Directi Internet Solutions Pvt. Ltd d/b/a Publicdomainregistry.com and that Respondent is the current registrant of the name. Directi Internet Solutions Pvt. Ltd d/b/a Publicdomainregistry.com has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd d/b/a Publicdomainregistry.com 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 April 23, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 13, 2010 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@drstocktrans.com by e-mail. Also on April 23, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 21, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. 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 <drstocktrans.com> domain name is confusingly similar to Complainant’s STOCKTRANS mark.
2. Respondent does not have any rights or legitimate interests in the <drstocktrans.com> domain name.
3. Respondent registered and used the <drstocktrans.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Stock Trans, Inc., specializes in securities and investor services including stock transfers, issuance and registration services, rights, subscription, buy back and exchange services along with many other investment related services. Complainant owns a trademark registration with United States Patent and Trademark Office (“USPTO”) for its STOCKTRANS mark (Reg. No. 2,561,152 issued April 16, 2002).
Respondent, Piyawan Fungsawan, registered the <drstocktrans.com> domain name on October 3, 2008. Respondent’s disputed domain name resolves to a website that appears to be that of Complainant’s business.
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.
Complainant owns a trademark registration through the USPTO
for its STOCKTRANS mark. Previous panels
have decided that a trademark registration with the USPTO is sufficient to
satisfy Policy ¶ 4(a)(i). Therefore, the Panel finds that Complainant
has established rights in its STOCKTRANS mark under Policy ¶ 4(a)(i) through
its trademark registration with the USPTO (Reg. No. 2,561,152 issued April 16,
2002). See Expedia, Inc. v. Tan, FA 991075
(Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is
registered with the USPTO, [the] complainant has met the requirements of Policy
¶ 4(a)(i).”); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding
that it is irrelevant whether the complainant has registered its trademark in
the country of the respondent’s residence).
Complainant argues that Respondent’s
<drstocktrans.com> domain name is confusingly similar to
Complainant’s STOCKTRANS mark.
Complainant notes that the disputed domain name includes its STOCKTRANS
mark in its entirety while adding the prefix “dr” and the generic top-level
domain (“gTLD”) “.com.” The Panel finds
that Respondent’s disputed domain name is confusingly similar to Complainant’s
mark under Policy ¶ 4(a)(i). See Am. Online, Inc. v. iDomainNames.com, FA
93766 (Nat. Arb. Forum Mar. 24, 2000) (finding that the respondent’s domain
name <go2AOL.com> was confusingly similar to the complainant’s AOL mark);
see also Am. Online, Inc. v. Tullo, FA
150811 (Nat. Arb. Forum Apr. 15, 2003) (finding that the <3daol.com>
domain name is confusingly similar to the complainant’s AOL mark because “…the
addition of the prefix ‘3d’ does nothing to ‘distinguish’ Respondent’s domain
name from Complainant’s registered trademarks.”); see also Jerry Damson, Inc. v.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent does not have any rights or legitimate interests in the disputed domain name. Complainant is required to make a prima facie case in support of these allegations. Once the Complainant has produced a prima facie case the burden shifts to the Respondent to show that it does possess rights or legitimate interests in the disputed domain name. See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); see also Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)). The Panel finds that the Complainant has produced a prima facie case. Due to the Respondent’s failure to respond to these proceedings, the Panel may assume Respondent does not have any rights or legitimate interests in the disputed domain name. See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name). However, the Panel will evaluate the evidence on record to determine whether Respondent possesses rights or legitimate interests in the <drstocktrans.com> domain name under Policy ¶ 4(c).
Complainant argues that nothing in the WHOIS record for the <drstocktrans.com> domain name
indicates that Respondent is commonly known by the disputed domain name. The WHOIS information identifies “Piyawan
Fungsawan” as the registrant of the disputed domain name, and Respondent offers
no further evidence to indicate that it is commonly known by the disputed
domain name. Therefore, the Panel finds
that Respondent is not commonly known by the <drstocktrans.com>
domain name pursuant to Policy ¶ 4(c)(ii). See
Complainant submits evidence to show that Respondent is
attempting to pass itself off as Complainant.
Notably, Complainant notes that the structure and appearance of the
website resolving from the <drstocktrans.com>
domain name is similar to that of Complainant’s website and allows Internet
users to enter and attempt to access their personal accounts that they have
through Complainant. The Panel finds
that Respondent’s use of the disputed domain name to mimic the website and
content of Complainant’s business in order to receive the personal and account
information from Complainant’s customers does not amount to 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). See Vivendi Universal Games v. Ballard, FA 146621 (Nat. Arb.
Forum Mar. 13, 2002) (stating that where the respondent copied the complainant’s
website in order to steal account information from the complainant’s customers,
that the respondent’s “exploitation of the goodwill and consumer trust
surrounding the BLIZZARD NORTH mark to aid in its illegal activities is prima
facie evidence of a lack of rights and legitimate interests in the disputed
domain name”); see also 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)).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant argues that Respondent’s use of the disputed domain name results in a loss of business and reputation for Complainant. Complainant contends that Respondent’s use of the confusingly similar domain name to divert Internet users to Respondent’s phishing website results in lost revenue and business because Internet users are unsure as to the affiliation of the website. The Panel finds that Respondent’s diversion of Internet users to Respondent’s website that mimics Complainant’s website is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that the respondent’s registration and use of the disputed domain name, which displayed a website virtually identical to the complainant’s website, constituted bad faith pursuant to Policy ¶ 4(b)(iii)).
Complainant further
argues that Respondent is intentionally attempting to attract Internet users to
its website for financial gain because Respondent is using the confusingly
similar disputed domain name to obtain personal and financial information of
Complainant’s customers. The Panel finds
that Respondent’s use of the disputed domain name to intentionally attract
Internet users to its website where it collects personal and financial
information from those users is evidence of bad faith registration and use
under Policy ¶ 4(b)(iv). See HOPE
worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004) (finding
that the respondent registered and used the domain name in bad faith because it
redirected Internet users to a website that imitated the complainant’s website
and was used to fraudulently acquire personal information from the complainant’s
potential associates); see also Capital
One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug.
11, 2004) (finding bad faith registration and use because the respondent used
the domain name to redirect Internet users to a website that imitated the
complainant’s website and to fraudulently acquire personal information from the
complainant’s clients).
Complainant contends that Respondent is using the <drstocktrans.com> domain name to
operate a phishing scam in which Respondent receives Internet users personal
and account information because the Internet users believe themselves to be
within Complainant’s website. The Panel
finds that Respondent’s registration and use of the disputed domain name was
made in bad faith under Policy ¶ 4(a)(iii) where Respondent is attempting to
gather the personal and account information of Complainant’s customers through
the confusingly similar disputed domain name.
See Wells Fargo & Co. v.
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 <drstocktrans.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: June 4, 2010
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