SHUAA Capital psc v. Oba Junkie / shuaa capital psc
Claim Number: FA1409001581255
Complainant is SHUAA Capital psc (“Complainant”), represented by David Bateman of K&L Gates LLP, Washington, USA. Respondent is Oba Junkie / shuaa capital psc (“Respondent”), Colorado, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <shuaapsc.com>, registered with Name.com, Inc.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 23, 2014; the National Arbitration Forum received payment on September 23, 2014.
On September 24, 2014, Name.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <shuaapsc.com> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.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 September 25, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 15, 2014 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@shuaapsc.com. Also on September 25, 2014, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 23, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 name be transferred from Respondent to Complainant.
A. Complainant
1. Respondent’s <shuaapsc.com> domain name is confusingly similar to Complainant’s SHUAA mark.
2. Respondent does not have any rights or legitimate interests in the <shuaapsc.com> domain name.
3. Respondent registered and uses the <shuaapsc.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is a Dubai-based public stock company offering financial services with expertise in the areas of asset management, investment banking, capital markets, and lending. Complainant has used the SHUAA mark since 2001, and holds registrations of the mark with the United Arab Emirates Ministry of Economy and Commerce (“UAEMEC”) including Reg. No. 33,378, registered Sept. 23, 2002.
Respondent registered the <shuaapsc.com> domain name on July 14, 2014, and is using it to send e-mails to third parties purportedly from senior executives within Complainant’s business.
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.
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.”).
The Panel finds that Complainant has demonstrated rights in the SHUAA mark for purposes of Policy ¶ 4(a)(i) through its valid trademark registrations with the UAEMEC. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority).
Respondent’s <shuaapsc.com> domain name simply adds the generic top-level domain (“gTLD”) “.com” and “psc” to Complainant’s mark. The addition of “psc,” a common abbreviation for “public stock company” and part of Complainant’s legal business name, only exacerbates the confusion between the disputed domain name and Complainant’s mark. In Morgan Stanley v. Discover Financial Services LLC, the panel found, “[r]espondent’s <morganstanleycorp.com> domain name is confusingly similar to Complainant’s mark, as the domain name fully incorporates Complainant’s MORGAN STANLEY mark in its entirety and adds the generic term ‘corp,’ a widely recognized abbreviation for ‘corporation.’ Such a change is not enough to overcome a finding of confusing similarity pursuant to Policy ¶ 4(a)(i)”; 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). Accordingly, the Panel finds that the <shuaapsc.com> domain name is confusingly similar to Complainant’s SHUAA mark under Policy ¶ 4(a)(i), as the additions of a gTLD and the term “psc” fail to distinguish the domain name from the incorporated mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 must first make a prima facie showing that Respondent 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 asserts that there is no evidence that Respondent is known by the disputed domain name. The WHOIS information identifies a “Oba Junkie” of “shuaa capital psc” as registrant, but Complainant argues that there is no other nexus linking Respondent with the SHUAA mark. Prior panels have required some additional affirmative showing beyond the self-described WHOIS association before finding a respondent is “commonly known” by the disputed domain name. For example, in City News & Video v. Citynewsandvideo, FA 244789 (Nat. Arb. Forum May 5, 2004), the panel wrote, “Although Respondent’s WHOIS information lists its name as ‘citynewsandvideo,’ there is no evidence before the Panel to indicate that Respondent is, in fact, commonly known by the disputed domain name <citynewsandvideo.com> pursuant to Policy ¶ 4(c)(ii).” The Panel finds that there is no evidence to corroborate the WHOIS record associating Respondent with the <shuaapsc.com> domain name, and thus Respondent is not commonly known by the domain name pursuant to Policy ¶ 4(c)(ii).
Complainant argues Respondent is not using the <shuaapsc.com> domain name for a bona fide offering, and is not making a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). Complainant argues that Respondent uses the disputed domain name as part of a scheme to impersonate Complainant by sending e-mails sent to third parties purportedly and falsely from senior executives within Complainant’s business. The Panel notes the e-mail string derived from the <shuaapsc.com> domain name. In Cubist Pharmaceuticals, Inc. v. Gregory Stea, FA 1550388 (Nat. Arb. Forum May 5, 2014), the panel found that the respondent lacked rights and legitimate interests in the disputed domain name where the respondent used the domain name to send e-mails to various IT hardware suppliers in an attempt to impersonate the complainant and defraud the suppliers; see also 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). Accordingly, the Panel finds that Respondent’s is not making a bona fide offering of goods or services, or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent uses the <shuaapsc.com> domain name to mislead Internet users to believe that Respondent is acting as Complainant or with Complainant’s authorization. The Panel agrees that Respondent is benefitting from the goodwill associated with Complainant by using the <shuaapsc.com> domain name, and finds evidence of Policy ¶ 4(b)(iv) bad faith. See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”).
The fraudulent activity conducted through the disputed domain name is further evidence of Respondent’s bad faith. Prior panels have found evidence of bad faith under Policy ¶ 4(a)(iii) where the respondent relies on the disputed domain name in furtherance of fraud or illegal activity. For example, the panel in National Oilwell Varco, L.P. v. Craig Wood / NOV, FA 1575951 (Nat. Arb. Forum September 22, 2014), wrote, “We are persuaded by the evidence that Respondent’s use of the <nov-inc.com> domain name to commit a commercial fraud while purporting to act in the name of Complainant, all as alleged in the Complaint, demonstrates bad faith in the registration and use of the domain name”; see also Cubist Pharmaceuticals, FA 1550388. The Panel finds that Respondent’s use of the domain name’s e-mail suffix for fraudulent purposes illustrates Policy ¶ 4(a)(iii) bad faith.
Further, Respondent’s knowledge of Complainant’s mark is apparent by Respondent’s attempt to project itself as Complainant. Prior panels have held actual notice of a complainant’s rights in the mark at the time of registration evinces bad faith. In Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. Forum Feb. 6, 2014), the panel wrote, “although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.” Thus, the Panel finds that Respondent had actual knowledge of Complainant’s rights in the SHUAA mark, further evidence of bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <shuaapsc.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: October 29, 2014
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