YottaMark, Inc. v. Lukasz Chudy
Claim Number: FA1210001467589
Complainant is YottaMark, Inc. (“Complainant”), represented by David C. Lee of Fitzgerald Abbott & Beardsley LLP, California, USA. Respondent is Lukasz Chudy (“Respondent”), Poland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <yottamark.info>, registered with eNom, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
David P. Miranda, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 16, 2012; the National Arbitration Forum received payment on October 16, 2012.
On October 17, 2012, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <yottamark.info> 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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 18, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 7, 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 billing contacts, and to postmaster@yottamark.info. Also on October 18, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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.
A timely Response was received and determined to be complete on October 22, 2012.
On November 2, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David P. Miranda, Esq., 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.
Complainant requests that the domain name <yottamark.info> be transferred from Respondent to Complainant.
A. Complainant
Complainant, YottaMark, Inc., incorporated in the state of Delaware on May 31, 2005, is a privately held company that specializes in product traceability and authentication solutions. Complainant supplies tracking capabilities for consumers when their goods are placed in different supply chains along their route of delivery and enable consumers to track the entire journey of the goods that they have purchased. Complainant uses its official <yottamark.com> website to allow consumers to track their products.
Complainant owns a trademark registration with the United States Patent and Trademark Office ("USPTO") for the YOTTAMARK mark (Reg. No. 3,144,290 registered Sept. 19, 2006). Complainant also alleges European Union trademark ownership for the YOTTAMARK mark. Complainant contends Respondent’s <yottamark.info> domain name is confusingly similar to the YOTTAMARK mark, only adding the generic top-level domain (“gTLD”) “.info.”
Complainant contends Respondent, Lukasz Chudy per WHOIS information, is not commonly known by the disputed domain name. Respondent has used the disputed domain name to try to pass itself off as Complainant by using Complainant’s marks and logos while providing tracking services for counterfeit products, thereby defrauding consumers. Respondent’s website that resolves from the disputed domain name asked Internet users to “Verify Your Code,” and “your product’s authenticity” by entering the “YottaMark Code” into the appropriate field. Respondent’s website mimics Complainant’s website’s verification process and results in Respondent’s phishing for valid verification codes for Complainant’s service. Respondent appears to be using the offending domain name to “falsely legitimize and authenticate counterfeit goods” through such a process in order to “fool consumers into believing that they purchased genuine goods.” Further, periodically Respondent has resolved the disputed domain name to a “403 error message” page. Complainant further contends that Respondent’s bad faith is shown from its use of the disputed domain name in attempting to phish for Internet consumers’ “verification codes” that Complainant uses to track goods that Complainant verifies are genuine. Respondent uses such codes to incorrectly verify counterfeit goods as being genuine. Respondent’s intermittent use of the disputed domain name to display a “403 error message” page is also evidence of Respondent’s bad faith use. Respondent had actual knowledge of Complainant’s rights in the YOTTAMARK mark.
B. Respondent
Respondent contends that it created its own brand to confirm whether its original products were bought from its official suppliers. Respondent is operating its own legitimate company in Poland. Respondent registered the <yottamark.info> domain name on July 7, 2011.
Complainant has established all three elements under the policy, that the domain name <yottamark.info> registered by Respondent is identical or confusingly similar to the trademark in which Complainant has rights, that Respondent has no rights or legitimate interests in the domain name and the domain name has been registered and is being used in bad faith; as such, the domain name shall be transferred from Respondent to Complainant.
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:
(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 asserts that YottaMark, Inc. incorporated in the state of Delaware on May 31, 2005 is a privately held company that specializes in product traceability and authentication solutions. Complainant contends that it supplies tracking capabilities for consumers when their goods are placed in different supply chains along their route of delivery and enable consumers to track the entire journey of the goods that they have purchased. Complainant contends that it uses its official <yottamark.com> website to allow consumers to track their products. Further, Complainant asserts that it owns a trademark registration with the USPTO for the YOTTAMARK mark (Reg. No. 3,144,290 registered Sept. 19, 2006). Complainant has established its rights in the YOTTAMARK mark under Policy ¶ 4(a)(i) through its trademark registration with the USPTO. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under 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).
Further, Complainant argues that Respondent’s <yottamark.info> domain name is confusingly similar to the YOTTAMARK mark, only adding the gTLD “.info.” The only change to Complainant’s mark is the addition of the gTLD, and thus, the disputed domain name is identical to Complainant’s mark under Policy ¶ 4(a)(i). See PepsiCo, Inc. v. Shah, FA 103934 (Nat. Arb. Forum Mar. 4, 2002) (finding the <pepsico.info> domain name identical to the complainant’s PEPSICO mark).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. 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 UDRP ¶ 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).
Complainant asserts that Respondent, Lukasz Chudy per the WHOIS information, is not commonly known by the disputed 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 the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant argues that Respondent has used the disputed domain name to try to pass itself off as Complainant by using Complainant’s marks and logos while providing tracking services for counterfeit products, thereby defrauding consumers. Complainant contends that Respondent’s website that resolved from the disputed domain name asked Internet users to “Verify Your Code,” and “your product’s authenticity” by entering the “YottaMark Code” into the appropriate field. Complainant argues that Respondent’s website mimics Complainant’s website’s verification process and results in Respondent’s phishing for valid verification codes for Complainant’s service. Complainant asserts that Respondent appears to be using the offending domain name to “falsely legitimize and authenticate counterfeit goods” through such a process in order to “fool consumers into believing that they purchased genuine goods.” Respondent offers no evidence to the contrary. As such, Respondent is not using the disputed domain name for 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 Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name).
Further, Complainant contends that Respondent has in the past, and is currently, resolved the disputed domain name to an inactive “403 error message” page, which is further evidence that Respondent does not have any rights or legitimate interests in the disputed domain name. The Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003).
Complainant asserts that Respondent’s bad faith is shown from its use of the disputed domain name in attempting to phish for Internet consumers “verification codes” that Complainant uses to track goods that Complainant verifies are genuine. Complainant argues that Respondent uses such codes to incorrectly verify counterfeit goods as being genuine. A Respondent attempting to phish for confidential “verification codes” that are proprietary and confidential, has registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii). 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.”).
Further, Complainant argues that Respondent’s intermittent use of the disputed domain name to display an inactive “403 error message” page is also evidence of Respondent’s bad faith use. A Respondent that has intermittently failed to use the disputed domain name, has registered and has used the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith).
Complainant also asserts that Respondent had actual knowledge of Complainant’s rights in the YOTTAMARK mark. Complainant notes that the disputed domain name is identical to its mark and official domain name and that Respondent has used Complainant’s mark throughout the resolving website. Complainant also points out that Respondent has been the respondent in a prior UDRP proceeding involving the YOTTAMARK mark which Complainant argues is evidence that Respondent knew of Complainant’s rights in the mark. Therefore, Respondent’s conduct with actual knowledge of Complainant and its rights in the YOTTAMARK mark constitutes bad faith under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <yottamark.info> domain name be TRANSFERRED from Respondent to Complainant.
David P. Miranda, Esq., Panelist
Dated: November 14, 2012
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