V.F. Corporation v. Kyle Greig
Claim Number: FA1309001517896
Complainant is V.F. Corporation (“Complainant”), represented by Marcy L. Sperry of Womble Carlyle Sandridge & Rice, LLP, Georgia, USA. Respondent is Kyle Greig (“Respondent”), Maryland, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <vfcorp.org>, registered with eNom, Inc. (R39-LROR).
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 September 4, 2013; the National Arbitration Forum received payment on September 4, 2013.
On September 5, 2013, eNom, Inc. (R39-LROR) confirmed by e-mail to the National Arbitration Forum that the <vfcorp.org> domain name is registered with eNom, Inc. (R39-LROR) and that Respondent is the current registrant of the name. eNom, Inc. (R39-LROR) has verified that Respondent is bound by the eNom, Inc. (R39-LROR) 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 September 9, 2013, the Forum served the Complaint and all Annexes, in-cluding a Written Notice of the Complaint, setting a deadline of September 30, 2013 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, adminis-trative, and billing contacts, and to postmaster@vfcorp.org. Also on September 9, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respond-ent via post and fax, to all entities and persons listed on Respondent’s registra-tion 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 October 2, 2013, 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 Not-ices, 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 has for many years used the VF mark in commerce throughout the United States in connection with the marketing of retail services, apparel and related goods.
Complainant holds a registration for the VF trademark, on file with the United States Patent and Trademark Office (“USPTO”) (Registry No. 2,893,250, regis-tered October 12, 2004).
Respondent registered the <vfcorp.org> domain name on June 22, 2013.
The domain name is confusingly similar to Complainant’s VF trademark.
Respondent has not been commonly known by the disputed domain name.
Respondent has no affiliation with Complainant, and Complainant has not licensed or otherwise consented to Respondent’s use of the domain name.
Respondent uses the domain name to resolve to an inaccessible website.
Respondent uses the listed contact email, support@vfcorp.org, in connection with a fraudulent employment scheme in which Respondent poses as Complain-ant and purports to offer positions for Complainant.
Respondent has no rights to or legitimate interests in the contested <vfcorp.org> domain name.
Respondent knew of Complainant and its rights in the VF trademark when Re-spondent registered the domain name.
Respondent registered and is using the <vfcorp.org> domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 a respondent’s failure to respond allows all reason-able 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.”
Complainant has rights in the VF trademark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See, for example, Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006):
Complainant has established rights in the … mark through registration of the mark with the USPTO.
We conclude from a review of the record that the <vfcorp.org> domain name is confusingly similar to Complainant’s VF trademark. The domain name contains the entire mark, with only the addition of the abbreviated term “corp,” (for “corp-oration”), which describes Complainant’s business form, and the generic Top Level Domain (“gTLD”) “.org.” These alterations of the mark, made in forming the domain name, do not save the domain name from the realm of confusing similarity under the standards of the Policy. See Top RX, Inc. v. Robert Catts d/b/a BayouSouth, FA 1008565 (Nat. Arb. Forum July 30, 2007)(finding that the addition of the gTLD “.org” to the mark of another in creating a domain name was a functional change required to transform the mark into a domain name.)
See also Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights. The addition of the generic term, “perfumes” is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.”).
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 re-spondent 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 out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to deter-mine 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 asserts, and Respondent does not deny,
that Respondent has not been commonly known by the <vfcorp.org> domain name, that Respondent has no affiliation with Complainant, and that Complainant has not licensed or otherwise authorized Respondent to use its VF mark in any way. Moreover, the WHOIS information for the domain name identifies the reg-istrant only as “Kyle Grieg,” which does not resemble the 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 within the meaning of Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding, under Policy ¶ 4(c)(ii), that a UDRP respondent was not commonly known by disputed domain names where the relevant WHOIS information listed the regis-trant as “Andrew Kaner c/o Elec-tromatic a/k/a Electromatic Equip't” and there was no other evidence in the record to show that that respondent was commonly known by the domain names.
We next observe that Complainant asserts, without objection from Respondent, that Respondent is not making a bona fide offering of goods or services or a leg-itimate noncommercial or fair use of the <vfcorp.org> domain name, in that Re-spondent uses the domain name to resolve to an inaccessible website and that Respondent uses the related contact email, support@vfcorp.org, in connection with a fraudulent employment scheme in which Respondent poses as Complain-ant and purports to offer positions for Complainant. This employment of the domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that a respondent’s non-active use of disputed domain names demonstrated that that respondent was not using them 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)).
As to Respondent’s use of the domain name in a scheme to defraud Internet users with regard to purported employment opportunities with Complainant, such a scheme, sometimes called “phishing,” cannot qualify as either a bona fide offering of goods or services or a legitimate noncommercial or fair use. See EFG Bank v. Domain Consults, D2011-1907 (WIPO December 23, 2011):
The use of the disputed domain name is a clear example of phishing, and as such the Respondent cannot be described as having any legitimate interest in the disputed domain name.
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
The same behavior, called “phishing,” which makes clear that Respondent has no rights to or legitimate interests in the <vfcorp.org> domain name also shows that Respondent both registered and uses the domain name in bad faith. See, for example, Qatalyst Partners LP v. Devimore, FA 1393436 (Nat. Arb. Forum July 13, 2011) (finding that a Respondent’s use of a disputed domain name as an e-mail address to pass itself off as a UDRP complainant in a phishing scheme is evidence of bad faith registration and use).
Moreover, the evidence is persuasive that Respondent knew of Complainant and its rights in the VF mark when Respondent registered the <vfcorp.org> domain name. This is independent proof of Respondent’s bad faith in the registration of the domain name. See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of” a UDRP complainant's YAHOO! mark at the time of registration).
Accordingly, 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 <vfcorp.org> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: October 11, 2013
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