national arbitration forum

 

DECISION

 

Hewlett-Packard Development Company, L.P. and Hewlett-Packard Company v. Coleman, Ron

Claim Number: FA1202001431042

 

PARTIES

Complainant is Hewlett-Packard Development Company, L.P. and Hewlett-Packard Company (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA.  Respondent is Coleman, Ron (“Respondent”), California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <vertica-america.com>, registered with Network Solutions, LLC.

 

PANEL

The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.

 

Terry F. Peppard as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electron-ically on February 23, 2012; the National Arbitration Forum received payment on February 23, 2012.

 

On February 23, 2012, Network Solutions, LLC confirmed by e-mail to the National Arbitration Forum that the <vertica-america.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name.  Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, 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 February 27, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 19, 2012 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, admin-istrative, and billing contacts, and to postmaster@vertica-america.com.  Also on February 27, 2012, 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 March 29, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.

 

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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

 

Complainant owns the VERTICA trademark, on file with the United States Patent and Trademark Office ("USPTO") through an Assignment of Record (Reg. No. 3,228,720, registered April 10, 2007). 

 

Respondent’s domain name is confusingly similar to Complainant’s VERTICA trademark.

 

Respondent is not commonly known by the disputed domain name.

 

Complainant has not licensed or otherwise authorized Respondent to use the VERTICA mark.

 

Respondent has no rights to or legitimate interests in the domain name.

 

Respondent has used the domain name to conduct a phishing scam by imper-sonating Complainant’s human resources department, while attempting to collect personal financial information from Internet users.

 

Respondent’s registration and use of the domain name is intended to produce commercial gain for Respondent.

 

Respondent currently redirects the disputed domain name to a parked website and landing page.

 

Respondent registered and uses the domain name in bad faith.

 

B. Respondent

 

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

 

(1)  the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and

(2)  Respondent has no rights to or legitimate interests in respect of the domain name; and

(3)  the same domain name was registered and is being used by Respondent in bad faith.

 

DISCUSSION

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:

 

i.      the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

ii.     Respondent has no rights or legitimate interests in respect of the domain name; and

iii.    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(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 s respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP 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.”

 

 

Identical and/or Confusingly Similar

 

Complainant has rights in its assigned VERTICA trademark under Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO.  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 Remithome Corp v. Pupalla, FA 1124302  (Nat. Arb. Forum Feb. 21, 2008) (finding that a complainant held trademark rights to the nationally regis-tered mark by virtue of an assignment).

 

Respondent’s domain name is confusingly similar to Complainant’s mark, only adding a hyphen, the geographic term “America” and the generic top-level domain (“gTLD”) “.com.”  These alterations of the mark, made in creating the disputed domain name, cannot avoid a finding of confusing similarity under Policy ¶ 4(a)(i).  See Net2phone Inc. v. Netcall SAGL, D2000-0666 (WIPO Sept. 26, 2000) (finding that a respondent’s domain name <net2phone-europe.com> was confusingly similar to a complainant’s mark because “the combination of a geographic term with the mark does not prevent a domain name from being found confusingly similar"); see also JVC Americas Corp. v. Macafee, CPR007 (CPR Nov. 10, 2000) (finding that a domain name registered by a respondent, <jvc-america.com>, was substantially similar to a complainant's JVC mark); further see Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002):

 

[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.

 

Therefore, the Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).  

 

Rights or Legitimate Interests

 

Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must first make out a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):

 

Complainant must first make a prima facie showing that Respond-ent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.

 

Complainant has made a sufficient prima facie showing under this head of the Policy.  Therefore, and because Respondent has failed to respond to the alle-gations of the Complaint filed in this proceeding, we are free to conclude that Respondent has no rights to or legitimate interests in the contested domain name.  See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000), and Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000), both holding that, where a respondent fails to respond to a UDRP Com-plaint, a panel may draw the inference that that respondent does not have rights to or legitimate interests in a disputed domain name.  Nonetheless, we will examine the record before us, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.

 

We begin by noting that Complainant alleges, and Respondent does not deny,

that Respondent is not commonly known by the disputed domain name, and that Complainant has not licensed or otherwise authorized Respondent to use the VERTICA mark.  Moreover, the pertinent WHOIS information identifies the registrant of the domain only as “Ron Coleman,” which does not resemble the disputed domain name.  On this record, we conclude that Respondent has not been commonly known by the contested domain name so as to have acquired rights to or legitimate interests in it under Policy ¶ 4(c)(ii).  See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly known by disputed domain names so as to have demon-strated that it had rights to or legitimate interests in it under Policy ¶ 4(c)(ii), where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and where a complainant had not authorized that respondent to register a domain name containing its mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that a respondent was not commonly known by the <lilpunk.com> domain name where there was no evidence in the record showing that that respondent was commonly known by that domain name, and where a complainant asserted that it had not authorized or licensed that respondent’s use of its mark in a domain name).

 

We next observe that Complainant asserts, without objection from Respondent, that Respondent has used the disputed domain name for a phishing scheme in which it impersonated Complainant’s human resources department while attempting to lure Internet users into disclosing sensitive financial information.  This use of the domain is not 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 Morgan Stanley v. Williams, FA 1426319 (Nat. Arb. Forum February 20, 2012) (finding that a respondent’s use of a disputed domain name to “present itself as Complainant’s hiring and recruiting department” and requesting personal information is not 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 also Charles Komar & Sons, Inc. v. Bates, FA 1405374 (Nat Arb. Forum Oct. 12, 2011) (finding that the use of a disputed domain name in connection with a phishing scam, “whereby victims are tricked into divulging personal information in connection with fake job postings that purport to offer employment with Com-plainant’s business,” is not a bona fide offering of goods or services or a legit-imate noncommercial or fair use). 

 

Complainant further contends, again without objection from Respondent, that Respondent’s domain name currently resolves to a parked website featuring various third-party links.  This current use of the domain name likewise 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 Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that a respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)).

 

Registration and Use in Bad Faith

 

Respondent’s phishing scheme presumably has resulted in financial gain for Respondent.  In light of this, Respondent’s attempts at passing itself off as being affiliated with Complainant, as alleged in the complaint,  is evidence of bad faith registration and use of the contested domain name under Policy ¶ 4(b)(iv).  See Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (finding that a respondent demonstrated bad faith registration and use where it attempted to acquire personal financial information of Internet users through use of a domain name which was confusingly similar to the mark of another);  see also HOPE worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004) (finding that a respondent registered and used a domain name in bad faith where it redirected Internet users to a website that imitated a complainant’s website fraudulently to acquire personal information from Internet users wishing to become a complain-ant’s potential associates).

 

In addition, it is evident from the record that Respondent had Complainant’s mark  in mind when it registered the domain name here in question.  Respondent’s use of the domain name to host a phishing scheme is evidence of bad faith registra-tion and use of the domain in bad faith under Policy ¶ 4(a)(iii).  See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where a respondent was "well-aware of the complainant's YAHOO! mark at the time of registration); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that a respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) where that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").

 

For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).

 

DECISION

Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.

 

 

Accordingly, it is Ordered that the <vertica-america.com> domain name be forth-with TRANSFERRED from Respondent to Complainant.

 

 

Terry F. Peppard, Panelist

Dated:  April 13, 2012

 

 

 

 

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