Bechtel Group, Inc. v. ucy kay
Claim Number: FA1511001647177
Complainant is Bechtel Group, Inc. (“Complainant”), represented by Mark A. Steiner of Duane Morris, LLP, California, USA. Respondent is ucy kay (“Respondent”), Nigeria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bechteleng.us>, registered with eNom, Inc.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 16, 2015; the Forum received payment on November 16, 2015.
On November 16, 2015, eNom, Inc. confirmed by e-mail to the Forum that the <bechteleng.us> 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 the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On November 17, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 7, 2015 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@bechteleng.us. Also on November 17, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On December 11, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD 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
Policy ¶ 4(a)(i)
Complainant has rights in the BECHTEL mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,047,369, registered on August 31, 1976). Respondent’s <bechteleng.us> domain name is confusingly similar to the BECHTEL mark because it contains the entire mark, along with the descriptive abbreviation “eng” and the country-code top-level domain (“ccTLD”) “.us.”
Policy ¶ 4(a)(ii)
Respondent is not commonly known by the <bechteleng.us> domain name, as Complainant has not authorized it to use the BECHTEL mark. Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the domain is used in order to host an e-mail account which is used to impersonate Complainant in order to obtain personal information.
Policy ¶ 4(a)(iii)
Respondent has demonstrated a pattern of bad faith registration and use of domain names through prior decisions found against it. Respondent uses the <bechteleng.us> domain name in bad faith by using it to host an e-mail address in order to obtain personal information by impersonating Complainant. Respondent registered the <bechteleng.us> domain name in bad faith because it did so with constructive knowledge of Complainant’s rights in the BECHTEL mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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(f), 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.”).
Complainant claims rights in the BECHTEL mark and other associated marks through various registrations with the USPTO (e.g., Reg. No. 1,047,369, registered August 31, 1976). Registration of a mark with the USPTO (or other governmental authority) is sufficient to establish rights in a mark under Policy ¶ 4(a)(i). See Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007) (“Complainant’s trademark registrations with the USPTO adequately demonstrate its rights in the [EXPEDIA] mark pursuant to Policy ¶4(a)(i).”).
Complainant claims Respondent’s disputed <bechteleng.us> domain is confusingly similar to the BECHTEL mark because it includes the mark in its entirety and only differs through the addition of the letters “eng” and the ccTLD “.us.” The addition of the ccTLD “.us” (or any TLD for that matter) must be disregarded under a Policy ¶ 4(a)(i) analysis. See Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Domain name syntax requires every domain name to have a TLD. Adding a string of letters to a mark in a disputed domain does not adequately distinguish the domain from the mark under Policy ¶ 4(a)(i) (especially if they are descriptive of Complainant’s business). See Am. Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 24, 2000) (finding that the respondent’s domain name <go2AOL.com> was confusingly similar to the complainant’s AOL mark). In this case, the “eng” is descriptive of the fact Complainant provides engineering services. Respondent’s disputed <bechteleng.us> domain is confusingly similar to Complainant’s BECHTEL mark.
The Panel finds Policy ¶ 4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Then the burden shifts to Respondent to show it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding 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 claims Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not been authorized to use the disputed domain name by Complainant, nor has Respondent been endorsed or sponsored by Complainant. The WHOIS information associated with disputed domain name presently indicates Respondent is known as “Ucy Kay,” which does not resemble the disputed domain name in any obvious way. A respondent is not commonly known by a disputed domain name when there is no authorization from a complainant, the WHOIS information does not support such a finding, and there is a lack of other information to the contrary. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). Respondent has not been commonly known by the disputed domain name.
Complainant claims Respondent has not been using the domain at issue in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent uses the domain to send fraudulent emails where Respondent purports to be “Larry Melton” who is claimed to be the executive director of Human Resources for Bechtel. The emails contain job offers in which Respondent requests the recipient provide passport information. A respondent’s attempt to “phish” for personal information using an email associated with a disputed domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Blackstone TM LLC v. Mita Irelant Ltd., FA 1314998 (Nat. Arb. Forum, April 30, 2010) (Finding that “Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)”). Respondent’s use of the disputed domain does not fall within Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
The Panel finds Policy ¶ 4(a)(ii) satisfied.
Complainant claims Respondent registered and uses the disputed domain name in bad faith. Respondent has engaged in a pattern of bad faith domain registrations which has led to adverse UDRP decisions. Regrettably for Complainant, Policy ¶ 4(b)(ii) provides “[Respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [Respondent has] engaged in a pattern of such conduct.” [emphasis added] Complainant’s claim must fail because Complainant reflects its trademark in the Bechtel.com domain name.
Complainant claims Respondent registered the domain in bad faith because Respondent fraudulently sends emails to phish for personal information. Respondent uses the domain to send out fraudulent job offers requiring the recipient to submit personal information including passport information. Impersonating Complainant adequately demonstrates bad faith registration and use of the domain name. See SHUAA Capital psc v. SHUAA CAPITAL, FA 1581256 (Nat. Arb. Forum Oct. 29, 2014) (“Respondent’s registration of a domain name obviously intended to create confusion with Complainant, together with its use of that domain name in connection with a fraudulent scheme involving email messages sent to third parties in an attempt to exploit such confusion, is indicative of bad faith”). Respondent has acted in bad faith under Policy ¶ 4(a)(iii).
Complainant claims Respondent had actual knowledge of Complainant's rights in the BECHTEL mark. Respondent included Complainant’s entire mark in the domain name. Respondent used the domain to hoodwink users into believing it was really Complainant. Respondent used the name of someone in Complainant’s human resources department (although Respondent got the title slightly wrong). Respondent knew quite a bit about Complainant and its operations. All of this indicates Respondent had actual knowledge of Complainant's mark and rights. Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
The Panel finds Policy ¶ 4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <bechteleng.us> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Tuesday, December 22, 2015
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