Kelly Properties, LLC v. Bosting / Michael Brown
Claim Number: FA1207001455948
Complainant is Kelly Properties, LLC (“Complainant”), represented by Elizabeth K. Brock of Harness, Dickey & Pierce, P.L.C., Michigan, USA. Respondent is Bosting / Michael Brown (“Respondent”), Norway.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kellyserviceseu.com>, registered with BIZCN.COM, INC.
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.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on July 30, 2012; the National Arbitration Forum received payment on July 30, 2012.
On July 31, 2012, BIZCN.COM, INC. confirmed by e-mail to the National Arbitra-tion Forum that the <kellyserviceseu.com> domain name is registered with BIZCN.COM, INC. and that Respondent is the current registrant of the name. BIZCN.COM, INC. has verified that Respondent is bound by the BIZCN.COM, INC. 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 August 1, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 21, 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, administrative, and bil-ling contacts, and to postmaster@kellyserviceseu.com. Also on August 1, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail address-es 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 August 23, 2012, pursuant to Complainant's request to have the dispute de-cided 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant operates in the personnel and employment services industry under the KELLY SERVICES mark.
Complainant also holds registrations, on file with the United States Patent and Trademark Office (“USPTO”) for the KELLY SERVICES service mark (including Reg. No. 834,892, registered September 5, 1967).
Respondent registered the <kellyserviceseu.com> domain name on July 20, 2012.
Respondent’s <kellyserviceseu.com> domain name is confusingly similar to Complainant’s KELLY SERVICES mark.
Respondent has not been commonly known by the <kellyserviceseu.com> domain name.
Respondent is not connected or affiliated with Complainant, and Complainant has not authorized Respondent to use Complainant’s KELLY SERVICES mark.
Respondent is making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.
Respondent uses the <kellyserviceseu.com> domain name to operate a website that is identical to Complainant’s official <kellservices.co.uk> website.
Respondent also uses the domain name to host e-mail transmissions that Re-spondent sends to Internet users, directing them to Respondent’s website.
Respondent is attempting to pass itself off as Complainant as part of an online phishing scheme for its financial gain by attempting to acquire confidential pay-ment data from Complainant’s customers.
Respondent registered and uses the <kellyserviceseu.com> domain name in bad faith with knowledge of Complainant’s rights in the KELLY SERVICES mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark 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.
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 can-celled 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 representa-tions 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 Verti-cal 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 reason-able 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.”
Complainant has rights in the KELLY SERVICES service mark under Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See, for example,Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that a complainant had established rights in marks for purposes of the Policy where the marks were registered with a national trademark authority).
Turning to the central question under Policy ¶ 4(a)(i), we conclude from our re-view of the record that the <kellyserviceseu.com> domain name is confusingly similar to Complainant’s KELLY SERVICES mark. The disputed domain name contains Complainant’s entire mark, absent only the space between its terms, in addition to the geographical abbreviation “eu,” and the generic top-level domain (“gTLD”) “.com.” These alterations of the mark, made in creating the domain name, are insufficient to distinguish the domain name from the mark under the standards of the Policy.
To begin with, a domain name that contains a complainant’s mark and the geo-graphic abbreviation “eu,” along with the removal of a space and the addition of a gTLD, is confusingly similar to that mark. See, for example, U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007):
Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).
See also Dollar Fin. Grp., Inc. v. Jewald & Assocs. Ltd., FA 96676 (Nat. Arb. Forum Apr. 6, 2001):
The addition of [the geo-graphic abbreviation] US’ or ‘USA’ does not alter the underlying mark held by the complainant.
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent 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 make 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 ex-amine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respond-ent 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 has not been commonly known by the <kellyserviceseu.com> domain name, that Respondent is not affiliated with Complainant, and that Com-plainant did not authorize Respondent to use Complainant’s KELLY SERVICES mark. Moreover, the pertinent WHOIS information lists the registrant of the do-main name only as “Bosting / Michael Brown,” which does not resemble the do-main name. On this record, we conclude that Respondent has not been com-monly known by a disputed domain name so as to have demonstrated that it has any rights to or legitimate interests in the domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that a respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the relevant WHOIS information and other evidence in the record).
We next observe that Complainant asserts, without objection from Respondent, that Respondent is making a bona fide offering of goods or services or a legiti-mate noncommercial or fair use of the disputed domain name, in that Respond-ent uses the <kellyserviceseu.com> domain name to operate a website that is substantially identical to Complainant’s official <kellservices.co.uk> website, that Respondent also uses the disputed domain name to deliver e-mail transmissions to Internet users, directing them to Respondent’s website, and that Respondent is engaged in a phishing scheme operated for financial gain by passing itself off as Complainant in an attempt to acquire confidential payment data from Com-plainant’s customers. Our review of the evidence persuades us that this assert-ed employment of the domain name is supported in the record and that this is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the disputed domain name under ¶ 4(c)(iii). See MO Media LLC v. NeXt Age Tech-nologies LTD, FA 220031 (Nat. Arb. Forum Feb. 18, 2004) (finding that a respondent lacked rights to and legit-imate interests in a disputed domain name where that respondent copied a complainant’s websites in their entirety); see also HOPE worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004) (holding that a domain name that “is confusingly similar to Complainant’s mark, redirects Internet users to a website that imitates Complainant’s website, and is used to acquire personal information from Complainant’s potential associates” does not fall within the parameters of Policy ¶¶ 4(c)(i) or (iii)).
The Panel therefore finds that Complainant has satisfied Policy ¶ 4(a)(ii).
The Policy permits us to consider the totality of the circumstances when con-ducting a Policy ¶ 4(a)(iii) analysis of whether Respondent has registered and is using the contested domain name in bad faith. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000):
[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.
Here the undenied allegations of the Complaint amply demonstrate that Re-spondent registered and uses the <kellyserviceseu.com> domain name for the purpose of passing itself off as Complainant and for phishing for the personal information of Internet users. This is evidence that Respondent registered and uses the domain name in bad faith. See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that a disputed domain name was registered and used in bad faith where a respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”); see also Qatalyst Partners LP v. Devimore, FA 1393436 (Nat. Arb. Forum July 13, 2011) (finding that using a disputed domain name to pass itself off as a complainant in a phishing scheme is evidence of bad faith registration and use).
Further, it is plain from the record that Respondent registered the contested <kellyserviceseu.com> domain name with knowledge of Complainant’s rights in the KELLY SERVICES mark. This too is evidence of bad faith registration and use of the domain name pursuant to Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting a respond-ent's contention that it did not register a disputed domain name in bad faith where the panel found that that respondent had knowledge of a complainant's rights in the UNIVISION 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).
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 <kellyserviceseu.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: September 3, 2012
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