AECOM Technology Corporation v. Janet Curling
Claim Number: FA1601001658099
Complainant is AECOM Technology Corporation (“Complainant”), represented by JoAnna Esty of AECOM Technology Corporation, California, USA. Respondent is Janet Curling (“Respondent”), Nigeria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aeccom.biz>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 26, 2016; the Forum received payment on January 26, 2016.
On January 27, 2016, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <aeccom.biz> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 January 27, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 16, 2016 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@aeccom.biz. Also on January 27, 2016, 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 February 17, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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 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 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.
Complainant
Complainant owns a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the AECOM mark (Reg. no. 4,388,377, registered Aug. 30, 2013). The mark is used in connection with the provision of demographic consultation and studies, management and business consulting services, building construction supervision services, and architectural and engineering services. The <aeccom.biz> domain name is confusingly similar to the AECOM trademark because the domain name contains the entire mark and makes only minor alterations, such as adding an extra letter “c,” as well as the top-level domain (TLD) “.biz.”
Respondent has no rights or legitimate interests. Respondent is not commonly known by the domain name, nor is Respondent a licensee of Complainant. Further, Respondent is using the domain name to run a phishing scheme, which consists neither of a bona fide offering or a legitimate noncommercial or fair use.
Respondent has displayed bad faith registration and use. Respondent is attempting to commercially profit from a likelihood of confusion.
Respondent
Respondent did not submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <aeccom.biz> domain name.
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(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 owns a trademark registration with the USPTO for the AECOM mark (Reg. no. 4,388,377, registered Aug. 30, 2013). The mark is used in connection with the provision of demographic consultation and studies, management and business consulting services, building construction supervision services, and architectural and engineering services. The Panel finds that registration with the USPTO is sufficient to establish Complainant’s rights in the trademark. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
Complainant argues that the <aeccom.biz> domain name is confusingly similar to the AECOM trademark. Complainant notes that the domain name contains the entire mark and makes only minor alterations, specifically adding an additional letter “c,” as well as the TLD “.biz.” Past panels have found that the addition of a single letter to a domain name containing the entire mark provides no distinguishing relief for the respondent. See Amazon.com, Inc. v. Ikhizamah, D2002-1168 (WIPO Mar. 17, 2003) (holding that the <zamazon.com> domain name was confusingly similar to the complainant’s AMAZON.COM mark). Past panels have also found that top-level domains consisting of words that could conceivably be construed as generic or descriptive terms may in fact enhance the confusing similarity between the domain name and the mark. See DD IP Holder LLC v Manpreet Badhwar, FA 1562029 (Nat. Arb. Forum July 14, 2014) (“because there is a reference to food and restaurants inherent in the new gTLD ‘.menu’, the combination of the ‘dunkin’ element with the ‘.menu’ gTLD extension adds further to the confusing character of the domain in issue in the present case.”). Other panels have stuck to the traditional notion that a top-level domain—even in cases where said domain consists of a word that could conceivably be construed as generic or descriptive—cannot distinguish a domain name from the mark at issue. See Citigroup Inc. v. Nicholas Bonner, FA 1604916 (Nat. Arb. Forum Mar. 18, 2015) (finding that the “.technology” gTLD was irrelevant to Policy ¶ 4(a)(i) analysis when assessing the confusing similarity between the <citigroup.technology> domain name and the CITIGROUP trademark). Therefore, the Panel finds that the <aeccom.biz> domain name is confusingly similar to the AECOM trademark under Policy ¶ 4(a)(i).
Complainant has proved this element.
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 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 Respondent is not commonly known by the <aeccom.biz> domain name, nor is Respondent in possession of licensing rights that would allow it to use the AECOM mark in domain names. “Janet Curling” is listed as the registrant of record for the disputed domain name. The record is devoid of any evidence to indicate that Respondent is either commonly known by the disputed domain name or in possession of licensing rights. The Panel finds that, where such a void exists, Respondent cannot have rights or legitimate interests 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’s use of the <aeccom.biz> domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. To support this claim, Complainant argues that Respondent is using the domain name to run a phishing scheme. Complainant claims that the domain name is being used to mislead Internet users into believing that they are filling out applications for housing rentals. In the process, people filling out these phony applications are asked to provide items of personal information, such as addresses and phone numbers. The Panel finds this is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Nat. Arb. Forum Apr. 30, 2010) (“The Panel finds 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).”).
Complainant has proved this element.
Complainant argues that Respondent has engaged in bad faith registration and use. Complainant claims that Respondent has engaged in bad faith under Policy ¶ 4(b)(iv) by attempting to commercially profit from a likelihood of confusion. Complainant argues that a likelihood of confusion exists because the webpage resolving from the <aeccom.biz> domain name contains Complainant’s business name in addition to a corporate address that is highly similar to Complainant’s corporate address. Furthermore, Complainant states that Respondent is presumably profiting from this behavior. Past panels have founds bad faith under Policy ¶ 4(b)(iv) where it has been established that a likelihood of confusion exists, and that the respondent is attempting to profit commercially. See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). Therefore, the Panel finds bad faith under Policy ¶ 4(b)(iv).
Complainant also argues that Respondent is engaged in a phishing scheme, which is further evidence of bad faith. Absent any evidence to the contrary, the Panel finds that Respondent is running a phishing scheme, and finds Respondent has acted in bad faith. See Juno Online Servs., Inc. v. Iza, FA 245960 (Nat. Arb. Forum May 3, 2004) (concluding that using a domain name that “is confusingly similar to Complainant’s mark, redirects Internet users to a website that imitates Complainant’s billing website, and is used to fraudulently acquire personal information from Complainant’s clients” is evidence of bad faith registration and use).
Complainant has proved this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <aeccom.biz> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.), Panelist
Dated: February 29, 2016
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