Buck Consultants, LLC v. Ismaila Abdullahi, Buck Consultants
Claim Number: FA1110001412718
Complainant is Buck Consultants, LLC (“Complainant”), represented by Kristin Jordan Harkins, Texas, USA. Respondent is Ismaila Abdullahi, Buck Consultants (“Respondent”), Nigeria.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <buck-consultants.com> and <buckheirhunters.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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 24, 2011; the National Arbitration Forum received payment on October 24, 2011.
On October 25, 2011, Directi Internet Solutions Pvt. Ltd. d/b/a publicdomainregistry.com confirmed by e-mail to the National Arbitration Forum that the <buck-consultants.com> and <buckheirhunters.com> domain names are registered with Directi Internet Solutions Pvt. Ltd. d/b/a publicdomainregistry.com and that Respondent is the current registrant of the names. 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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 26, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 15, 2011 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@buck-consultants.com, postmaster@buckheirhunters.com. Also on October 26, 2011, 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 November 22, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) 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" 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 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <buck-consultants.com> domain name is identical to Complainant’s BUCK CONSULTANTS mark.
Respondent’s <buckheirhunters.com> domain name is confusingly similar to Complainant’s BUCK mark.
2. Respondent does not have any rights or legitimate interests in the <buck-consultants.com> and <buckheirhunters.com> domain names.
3. Respondent registered and used the <buck-consultants.com> and <buckheirhunters.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Buck Consultants, LLC, provides actuarial consulting services under its BUCK CONSULTANTS and BUCK marks. Complainant provides evidence of its trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its BUCK CONSULTANTS (Reg. No. 2,590,226 registered July 9, 2002) and BUCK marks (Reg. No. 2,542,117 registered February 26, 2002).
Respondent, Ismaila Abdullahi, Buck Consultants, registered the <buck-consultants.com> and <buckheirhunters.com> domain names on September 29, 2011 and October 4, 2011 respectively. The <buck-consultants.com> domain name resolves to the third-party website <yahoo.com>, which is unrelated to Complainant. The <buckheirhunters.com> domain name resolves to the third-party website <bing.com>, which is unrelated to Complainant. Respondent uses e-mail addresses associated with both of the disputed domain names to perpetrate a phishing scheme against Complainant’s customers.
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 provides evidence of its trademark registrations with the USPTO for its BUCK CONSULTANTS (Reg. No. 2,590,226 registered July 9, 2002) and BUCK marks (Reg. No. 2,542,117 registered February 26, 2002). Previous panels have found that such trademark registrations are sufficient to establish rights in a mark for the purposes of Policy ¶ 4(a)(i). See Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (finding that the complainant had established rights in the BLOOMBERG mark through registration with the United States Patent and Trademark Office); see also Enter. Rent-A-Car Co. v. David Mizer Enters., Inc., FA 622122 (Nat. Arb. Forum Apr. 14, 2006) (finding that the complainant’s registration of the ENTERPRISE, ENTERPRISE RENT-A-CAR, and ENTERPRISE CAR SALES marks with the USPTO satisfied the requirement of demonstrating rights in the mark under consideration pursuant to Policy ¶ 4(a)(i)). Moreover, past panels have also held it is irrelevant that a respondent does not reside or operate in a country that the complainant holds a trademark registration in. See 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); 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). Therefore, the Panel finds that Complainant owns Policy ¶ 4(a)(i) rights in its BUCK CONSULTANTS and BUCK marks.
Respondent’s <buck-consultants.com> domain name differs from Complainant’s BUCK CONSULTANTS mark by removing the space found in the mark and adding the hyphen and the generic top-level domain (“gTLD”) “.com.” Prior panels have found that such changes to not prevent the domain name from being identical to a complainant’s mark. See Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"); see also 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”). Thus, the Panel finds that Respondent’s <buck-consultants.com> domain name is identical to Complainant’s BUCK CONSULTANTS mark pursuant to Policy ¶ 4(a)(i).
Similarly, Respondent’s <buckheirhunters.com> domain name only slightly differs from Complainant’s BUCK mark. The disputed domain name combines Complainant’s BUCK mark with the generic terms “heir” and “hunters.” The disputed domain name also contains the gTLD “.com.” Previous panels have determined that these additions fail to remove a disputed domain name from the realm of confusing similarity. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also 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). Respondent’s <buckheirhunters.com> domain name is confusingly similar to Complainant’s BUCK mark under Policy ¶ 4(a)(i).
The Panel concludes that Policy ¶ 4(a)(i) is satisfied.
Complainant has alleged that Respondent does not have any rights or legitimate interests in any of the <buck-consultants.com> and <buckheirhunters.com> domain names. Previous panels have held that the burden shifts to the respondent to prove it does have rights or legitimate interests when the complainant makes a prima facie case in support of its allegations under Policy ¶ 4(a)(ii). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”). The Panel finds Complainant made a sufficient prima facie case. Past panels have also held that a respondent’s failure to respond to the Complaint allows the Panel to infer that a respondent does not have rights or legitimate interests in a disputed domain names. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain names under Policy ¶ 4(c).
Respondent has not presented any evidence in this case that would support a finding that Respondent is commonly known by the <buck-consultants.com> and <buckheirhunters.com> domain names. To the contrary, Complainant asserts that Respondent is not licensed or otherwise permitted to use Complainant’s marks in the domain names. However, the WHOIS information, which identifies “Ismaila Abdullahi, Buck Consultants” as the registrant of the disputed domain names, does seem to support that Respondent is in some way commonly known by the domain names. On the other hand, past panels have refused to find that a respondent is commonly known by a disputed domain name based solely on the WHOIS information and have required respondents to present further evidence. 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 AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that although the respondent listed itself as “AIM Profiles” in the WHOIS contact information, there was no other evidence in the record to suggest that the respondent was actually commonly known by that domain name). As Respondent has not presented this further evidence and the Panel fails to find such evidence in the record, the Panel holds that Respondent is not commonly known by the <buck-consultants.com> and <buckheirhunters.com> domain names pursuant to Policy ¶ 4(c)(ii).
Respondent’s <buck-consultants.com> and <buckheirhunters.com> domain names resolve to the websites located at <yahoo.com> and <bing.com>, respectively. Both <yahoo.com> and <bing.com> are Internet search-engine and information services providers that are wholly unrelated to Complainant. Prior panels have found that the resolution of a confusingly similar domain name to an unrelated commercial website is evidence that a respondent lacks rights and legitimate interests in the domain name. See Vanderbilt Univ. v. U Inc., FA 893000 (Nat. Arb. Forum Feb. 19, 2007) (holding that the respondent did not have rights or legitimate interests in a domain name where it was redirecting Internet users to its own website promoting the respondent’s books unrelated to the complainant); see also Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”). Consequently, the Panel concludes that Respondent makes neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <buck-consultants.com> and <buckheirhunters.com> domain names.
Respondent also uses the <buck-consultants.com> and <buckheirhunters.com> domain names to host e-mail addresses. Respondent uses the e-mail addresses to contact Complainant’s customers and has represented to them that they are due to inherit money from Hong Kong. Respondent requests Complainant’s customers to provide Respondent with their personal information. Respondent’s use of the confusingly similar disputed domain names allows Respondent to appear to be associated with Complainant. Past panels have held that a respondent’s phishing scheme is clear evidence that the respondent lacks rights and legitimate interests in the domain name under Policy ¶ 4(a)(ii). See Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (finding that using a domain name in a fraudulent scheme to deceive Internet users into providing their credit card and personal information is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use); 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)). This Panel finds accordingly for the <buck-consultants.com> and <buckheirhunters.com> domain names under Policy ¶ 4(a)(ii).
The Panel concludes that Policy ¶ 4(a)(ii) is satisfied.
As noted previously, the <buck-consultants.com> and <buckheirhunters.com> domain names resolve to third-party websites, <yahoo.com> and <bing.com>, that are unrelated to Complainant. Presumably Respondent receives some commercial gain by linking the disputed domain names to these third-party websites. Moreover, Respondent is attempting to commercially gain by using the disputed domain names to host e-mail addresses that Respondent utilizes as a part of a phishing scheme aimed at Complainant’s customers. Both attempts to commercially gain from the disputed domain names are based on Internet user confusion as to Complainant’s affiliation with the domain names, either by increasing traffic to the resolving websites or establishing the belief that Internet users can trust Respondent because of its association with Complainant. Previous panels have found both instances to be evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“[T]he Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”). Therefore, the Panel holds that Respondent registered and uses the <buck-consultants.com> and <buckheirhunters.com> domain names in bad faith pursuant to Policy ¶ 4(b)(iv).
Prior panels have also concluded that a respondent’s phishing scheme is, by itself, evidence of bad faith registration and use. See Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (“The domain name <billing-juno.com> was registered and used in bad faith by using the name for fraudulent purposes.”); 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). Thus, the Panel further concludes that Respondent registered and uses the <buck-consultants.com> and <buckheirhunters.com> domain names in bad faith under Policy ¶ 4(a)(iii).
The Panel concludes that Policy ¶ 4(a)(iii) is 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 <buck-consultants.com> and <buckheirhunters.com> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: November 29, 2011
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