MillerCoors LLC v. VistaPrint Technologies Ltd / Anna Pappert
Claim Number: FA1603001665562
Complainant is MillerCoors LLC (“Complainant”), represented by Amanda L. DeFord of McGuireWoods LLP, Virginia, USA. Respondent is VistaPrint Technologies Ltd / Anna Pappert (“Respondent”), Bermuda.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are, <milllercoors.com>, <millarcoors.com>, <tenlthandblake.com>, <miillercoors.com>, registered with Tucows Domains Inc.; and <millercooors.com>, registered with GoDaddy.com, LLC
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 March 14, 2016; the Forum received payment on March 14, 2016.
On March 14, 2016, Tucows Domains Inc. confirmed by e-mail to the Forum that the <milllercoors.com>, <millarcoors.com>, <tenlthandblake.com>, <miillercoors.com> domain names are registered with Tucows Domains Inc. and that Respondent is the current registrant of the names. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 March 15, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <millercooors.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the Policy.
On March 16, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 5, 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@millercooors.com, postmaster@milllercoors.com, postmaster@millarcoors.com, postmaster@tenlthandblake.com, and postmaster@miillercoors.com. Also on March 16, 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 April 8, 2016, 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 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 names be transferred from Respondent to Complainant.
A. Complainant
A. The Domain Name is Nearly Identical and Confusingly Similar to Several Marks in which Complainant has Rights
1. Complainant MillerCoors is a famous brewer with a reputation for excellence throughout the United States. Since at least as early as 2008, MillerCoors has continuously used its MILLERCOORS & Design Mark and its MILLERCOORS Mark in connection with, among other things, beer and alcoholic beverages produced from a brewed malt base with natural flavors (collectively, the “MILLERCOORS Marks”). Additionally, MillerCoors has used its TENTH AND BLAKE BEER COMPANY and the TENTH AND BLAKE BEER COMPANY & Design Marks in connection with beer since at least as early as 2011, and its TENTH AND BLAKE BREWPRINT Mark in connection with advertising and business management consultancy since at least as early as 2012 (all three collectively, the “TENTH AND BLAKE Marks”).
2. Upon information and belief, the MILLERCOORS Marks and the TENTH AND BLAKE Marks have no meaning other than to serve as an identifier of MillerCoors and its goods.
3. MillerCoors is the owner of United States Trademark Registrations for the following MILLERCOORS and the TENTH AND BLAKE Marks:
MILLERCOORS
- U.S. REG. 3,775,352
- GOODS/SERVICES: Sports bags; Duffel bags; Tote bags in Class 18; Drinking vessels; Thermal insulated containers for food or beverage in Class 21; Hats; Jackets; Shirts in Class 25; Golf bags; Golf balls; Playing cards in Class 28; Beer in Class 32; Alcoholic beverage produced from a brewed malt base with natural flavors in Class 33.
MILLERCOORS (DESIGN MARK)
- U.S. REG. 3,800,185
- GOODS/SERVICES: Beer in Class 32
TENTH AND BLAKE BEER
- U.S. REG. 3,999,676
- GOODS/SERVICES: Beer in Class 32
TENTH AND BLAKE BEER COMPANY (DESIGN MARK)
- U.S. REG. 3,999,696
- GOODS/SERVICES: Beer in Class 32
TENTH AND BLAKE
- U.S. REG. 4,615,052
- GOODS/SERVICES: Advertising and business
4. Each of the MILLERCOORS Marks and the TENTH AND BLAKE Marks are valid and subsisting on the Principal Register in the United States Patent and Trademark Office at all times since their respective registration dates. These registrations are therefore prima facie evidence of the validity of the MILLERCOORS Marks and the TENTH AND BLAKE Marks, of MillerCoors’s registration and ownership of the MILLERCOORS Marks and the TENTH AND BLAKE Marks, and of MillerCoors’s exclusive right to use the MILLERCOORS Marks and the TENTH AND BLAKE Marks in the United States. True and correct copies of the registrations with the United States Patent and Trademark Office for each of these marks are provided as Exhibit F to this Amended Complaint.
5. MillerCoors also owns several domain names that incorporate the MILLERCOORS Marks and/or TENTH AND BLAKE Marks, including but not limited to, <millercoors.com>, <millercoors.biz>, <millercoors.info>, <millercoors.net>,<millercoors.org>, <millercoors.us>, <millercoors.us.com>, <tenthandblake.com>, and <tenthandblakebrewingcompany.com>.
6. As a result of MillerCoors’s extensive sales, advertising, and promotion of its services under the MILLERCOORS Marks and the TENTH AND BLAKE Marks, and through favorable industry acceptance and recognition, the relevant consuming public and trade have come to recognize and identify MillerCoors as the source of the top quality beer and related goods offered in connection with the MILLERCOORS Marks and the TENTH AND BLAKE Marks.
7. Accordingly, the marks comprising the MILLERCOORS Marks and the TENTH AND BLAKE Marks are assets of incalculable value as identifiers of MillerCoors and, among other things, its high quality products, services and goodwill.
8. The disputed domain names Respondent registered and is using are nearly identical to the MILLERCOORS Marks and/or the TENTH AND BLAKE Marks. The risk of confusion and harm to MillerCoors stemming from Respondent’s use of domain names that are nearly identical to the MILLERCOORS Marks and/or the TENTH AND BLAKE Marks is exacerbated here because Respondent has used at least four of the five domains in a phishing scam through which the Respondent emailed MillerCoors’s employees, asking for wire transfers and using a fake email address that incorporates the real names of MillerCoors employees and an “@” portion bearing the confusingly similar domain names.
B. Respondent and Respondent’s Business
1. Although Respondent has elected to use two privacy services to hide its information, Respondent’s “business” is clear: it registers domain names using subtle misspellings of a company’s well-known and valuable marks and uses those domain names to engage in an illegal phishing scam designed to defraud the company. Specifically, as noted above, Respondent has registered the following domains that incorporate subtle misspellings, of MillerCoors’s valuable and well-known marks: <millercooors.com>, <milllercoors.com>, <millarcoors.com>, <miillercoors.com>, and <tenlthandblake.com> (collectively, the “Domains”) (underlining provided to highlight the misspellings).
2. Respondent is therefore registering and using the Domains in a manner that infringes upon MillerCoors’s well-established intellectual property rights, but that is also criminal under the laws of the United States.
3. Respondent is not sponsored by, or otherwise associated with, MillerCoors.
4. Respondent clearly did not, and does not have, a legitimate interest or reason to register and use any domain name incorporating elements of the MILLERCOORS and/or TENTH AND BLAKE Marks. Instead of hosting webpages offering legitimate services, each of the Domains host a parked page with no content. In fact, as noted above, the only way that Respondent has and is using, at least, four of the Domains is in a targeted phishing scam that attempts to defraud MillerCoors.
5. Put simply, Respondent is engaging in a textbook case of trademark infringement, cybersquatting, and criminal conduct in an attempt to disrupt MillerCoors’s business and to defraud the company.
[a.] Respondent’s Domain Names Are Confusingly Similar to MillerCoors’s MILLERCOORS and/or TENTH AND BLAKE Marks. [ICANN Policy ¶4(a)(i); ICANN Rule 3(b)(ix)(1).]
1. The Domains are virtually identical to the MILLERCOORS Marks and/or TENTH AND BLAKE Marks.
2. To start, the Domains are comprised of subtle misspellings of the dominant portions of the MILLERCOORS Marks and/or the dominant portion of the TENTH AND BLAKE Marks. See, e.g., In re Nat’l Data Corp., 753 F.2d 1056, 1058 (Fed. Cir. 1985) (“That a particular feature is descriptive or generic with respect to the involved goods or services is one commonly accepted rationale for giving less weight to a portion of a mark.”); see also In re Chatam Int’l, Inc., 380 F.3d 1340, 1343 (Fed. Cir. 2004) (finding the dominant feature GASPAR in JOSE GASPAR GOLD confusingly similar to GASPAR’S ALE); Bose Corp. v. QSC Audio Prods., Inc., 293 F.3d 1367, 1377–78 (Fed. Cir. 2002) (finding the dominant feature WAVE in POWERWAVE confusingly similar to WAVE and ACOUSTIC WAVE); Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570–71 (Fed. Cir. 1983) (finding the dominant feature GIANT in GIANT HAMBURGERS confusingly similar to GIANT FOOD, SUPER GIANT, and GIANT). This “typosquatting” alone makes the Domains confusingly similar to MillerCoors’s marks. See, e.g., Nordstrom, Inc. v. Above.com Domain Privacy, FA1654490 (Nat. Arb. Forum Feb. 1, 2016) (finding<huatelook.com> confusingly similar to HAUTE LOOK); Bechtel Grp., Inc. v. Dudley, FA1636223 (Nat. Arb. Forum Oct. 12, 2015) (finding <becbtel.com> confusing similar to BECHTEL); Citadel LLC v. Lespinasse, FA1593973 (Nat. Arb. Forum Jan. 8, 2015) (finding that the addition of extra letters to the complainant’s trademark did not alleviate a likelihood of confusion); American Airlines, Inc. v. Zuccarini, FA0095695 (Nat. Arb. Forum Nov. 6, 2000) (stating that misspellings of trademarks “do not create a distinct mark” and concluding that<amaricanairlines.com> is confusingly similar to AMERICAN AIRLINES in satisfaction of Policy ¶4(a)(i)).
3. Moreover, although the Domains incorporate the .com element not present in the MILLERCOORS Marks and the TENTH AND BLAKE Marks, that element does not mitigate the risk of confusion. It is well-settled that adding the gTLD .com is not sufficient to distinguish a domain name from a mark. See 24 Hour Fitness USA, Inc. v. Domain Admin/Private Registrations Aktien Gesellschaft, FA1599649 (Nat. Arb. Forum Feb. 16, 2015) (stating that the addition of a general top-level domain, such as .com, does not prevent a finding that the domain is confusingly similar to a mark); Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (same).
4. Finally, although the TENTH AND BLAKE Marks incorporate elements not present in the <tenlthandblake.com> domain – i.e., BREWPRINT and BEER COMPANY – the lack of those elements in the <tenlthandblake.com> domain does little to mitigate the risk of confusion. First, aside from the misspelling, the <tenlthandblake.com> domain is completely subsumed within the TENTH AND BLAKE Marks, and it is well-settled that the mere presence of a generic or descriptive word – such as BREWPRINT or BEER COMPANY – in the registered mark does not negate the confusing similarity of the Domains, which are completely subsumed within the TENTH AND BLAKE Marks. Cf. Citigroup Inc. v. Horoshiy, Inc. a/k/a Horoshiy,FA0290633 (Nat. Arb. Forum Aug. 11, 2004) (finding <citibankonlinebanking.com> and <citibankbusinessonline.com> confusingly similar to CITIBANK); see also 24 Hour Fitness USA, Inc. v. Domain Admin/Private Registrations Aktien Gesellschaft, FA1599649 (Nat. Arb. Forum Feb. 16, 2015) (finding <results24hrfitness.com> confusingly similar to 24 HOUR FITNESS under Policy ¶4(a)(i)); Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contained the identical dominant GUINNESS element, despite the presence of other descriptive or generic terms). And second, MillerCoors owns the domain <tenthandblake.com>. As a result, Respondent’s use of an email address tied to the <tenlthandblake.com> domain as part of its targeted phishing scam directed at MillerCoors’s employees is certainly likely to lead to confusion.
5. The Domains are therefore virtually identical, and confusingly similar, to the MILLERCOORS Marks and the TENTH AND BLAKE Marks.
[b.] Respondent Has No Rights or Legitimate Interests in the Domains. [ICANN Policy
¶4(a)(ii); ICANN Rule 3(b)(ix)(2).]
1. Respondent has no rights or legitimate interests in the Domains.
2. MillerCoors has consistently used the MILLERCOORS Marks since at least as early as 2008, and the TENTH AND BLAKE Marks since at least as early as 2011 and 2012. To protect its substantial investment and the goodwill associated with the MILLERCOORS Marks and the TENTH AND BLAKE Marks, MillerCoors obtained, and continues to own, federal registrations for each of the MILLERCOORS Marks and the TENTH AND BLAKE Marks. Ex. F. The most senior registration issued almost six years ago, while the most “junior” registration issued approximately a year and a half ago. Id. Today, all of the MILLERCOORS Marks and the TENTH AND BLAKE Marks are well-known by relevant consumers, and each of the marks is distinctive. See, e.g., Equibrand Corp. v. Reinsman Equestrian Prods., Inc., No. 3:07-cv-0526-P, 2007 WL 1461393, at *4 (N.D. Tex. May 17, 2007) (“[I]f a plaintiff can show that a mark is validly registered, it is presumed distinctive and therefore protectable.”).
3. Respondent has no rights in any of the MILLERCOORS Marks and the TENTH AND BLAKE Marks. MillerCoors has never granted Respondent any license or other rights to use those marks in commerce for any purpose.
4. Upon information and belief, Respondent is not commonly known by any name related to MILLERCOORS or TENTH AND BLAKE. WHOIS information for the Domains will likely confirm this fact. See 24 Hour Fitness USA, Inc. v. Domain Admin/Private Registrations Aktien Gesellschaft, FA1599649 (Nat. Arb. Forum Feb. 16, 2015) (finding that WHOIS registry information is a factor in determining that a registrant is not commonly known by a domain name); Am. Express Co. v. (This Domain is for Sale) Joshuathan Invs., Inc., FA0154647 (Nat. Arb. Forum June 3, 2003) (same).
5. Moreover, Respondent is not engaging, and has not engaged, in a bona fide offering of goods or services under, or a fair use of, the Domains. As noted above, the Domains resolve to parked pages. This is not a bona fide offering of goods or services. See, e.g., Oracle Int’l Corp. v. Mbaeri Anselam/Marcos PLC, FA1653946 (Nat. Arb. Forum Jan. 28, 2016) (finding no rights or legitimate interest under Policy ¶4(c)(i), or noncommercial or fair use to support rights or interests under Policy ¶4(c)(ii), where the domain resolved to an inactive page).
6. Even more importantly and as noted above, Respondent is using at least four of five of the Domains to engage in a targeted phishing scam in an attempt to defraud MillerCoors. There is no question that this criminal conduct is not a bona fide offering of goods or services. See, e.g., Bechtel Grp., Inc. v. Dudley, FA1636223 (Nat. Arb. Forum Oct. 12, 2015) (noting that it is well-settled that “the use of a confusingly similar domain name in a fraudulent e-mail scheme” and/or “to pass [one]self off as the complainant,” amounts “to a lack of rights or legitimate interests” under Policy ¶4(c)(i)-(ii)).
7. Finally, Respondent’s registration and use of the Domains violates the Domain Name Registration Agreement of the Registrars, copies of which are attached as Exhibits M and N.
[c.] Respondent Has Registered and Used the Domains in Bad Faith. [ICANN Policy
¶4(a)(iii); ICANN Rule 3(b)(ix)(3).]
1. MillerCoors has used the MILLERCOORS Marks and the TENTH AND BLAKE Marks as trademarks in the United States for several years, and MillerCoors owns valid, subsisting federal registrations for each of those marks.
2. The MILLERCOORS Marks and the TENTH AND BLAKE Marks have no meaning other than as an identifier of MillerCoors and its goods and services. Accordingly, there can be little doubt that Respondent registered the Domains with MillerCoors, and its marks, squarely in mind. See Black Hills Ammunition, Inc. v. Wall, FA1541570 (Nat. Arb. Forum Mar. 17, 2014) (finding actual knowledge because there was no legitimate reason for Respondent “to register a domain name containing ‘Black Hills Amo’ other than to trade on Complainant’s trademark rights and that ‘Black Hills Am’ means nothing other than Complainant’s trademark”). To remove any doubt, Respondent’s knowledge of MillerCoors’s rights is demonstrated by the fact that it is using the Domains to engage in a targeted phishing scam that is designed to defraud MillerCoors. Even setting aside the criminal conduct at issue, Respondent’s registration of the Domains with knowledge of MillerCoors’s superior rights supports a finding of bad faith here. See Oracle Int’l Corp. v. Mbaeri Anselam/Marcos PLC, FA1653946 (Nat. Arb. Forum Jan. 28, 2016) (finding bad faith based on the registrant’s knowledge of the complainant’s rights at the time of registration); Citadel LLC v. Lespinasse, FA1593973 (Nat. Arb. Forum Jan. 8, 2015) (confirming that registration with knowledge of trademark rights demonstrates bad faith).
3. But perhaps most importantly, Respondent’s sole use of the Domains in its targeted effort to defraud MillerCoors establishes without a doubt that Respondent registered and is using the Domains in bad faith. See, e.g., Bechtel Grp., Inc. v. Dudley, FA1636223 (Nat. Arb. Forum Oct. 12, 2015) (finding bad faith in a situation virtually identical to this case); Victoria's Secret Stores Brand Management, Inc. v. Private Whois victoriassecret-usa.com, FA 1415313 (Nat. Arb. Forum Dec. 20, 2011) (finding bad faith under Policy ¶4(b)(iv) where a domain was used to send “fraudulent emails, posing as a Human Resources Manager for Victoria’s Secret and advertising purported job offers with Victoria’s Secret by directing recipients to the hiring site”); see also Oracle Int’l Corp. v. Mbaeri Anselam/Marcos PLC, FA1653946 (Nat. Arb. Forum Jan. 28, 2016).
4. Under the facts of this case, Respondent’s failure to make active use of the Domains further supports a finding of bad faith. See Oracle Int’l Corp. v. Mbaeri Anselam/Marcos PLC, FA1653946 (Nat. Arb. Forum Jan. 28, 2016); see also Ex. K.
5. Taken as a whole, there can be little doubt that Respondent has acted in complete bad faith throughout the registration and use of the Domains. Respondent’s actions fully justify transfer of the Domains to MillerCoors.
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 Complainant must prove the following three elements to obtain an order cancelling or transferring a domain name:
(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.”).
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant claims the entities which control the domain names at issue are effectively controlled by the same person and/or entity, and is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant claims Respondent is using two different privacy services to hide its information.
Further, Complainant claims each of the domains incorporates valuable trademarks with minor alterations, four of the five at-issue domains were used in the same manner to phish for Internet user information by holding itself out as Complainant’s employees via email handles, each domain resolves to a parked page, and the WHOIS information for each of the domains shows a temporal proximity over a six-month period with respect to registration dates. The modus operandi is strikingly similar.
Given the lack of a response from Respondent, this Panel finds Complainant has met its initial burden of persuasion. This Panel finds the listed entities are jointly controlled.
Complainant brews beer and alcoholic beverages using a malt base with natural flavors. Complainant markets and sells its products in connection with its TENTH AND BLAKE BEER COMPANY and MILLERCOORS marks, which Complainant registered with the United States Patent and Trademark Office (“USPTO”). For example, TENTH AND BLAKE BEER COMPANY bears the Registration no. 3,999,676 (registered July 19, 2011); and MILLERCOORS bears the Registration no. 3,775,352 (registered April 13, 2010). Registration with a governmental authority such as the USPTO is prima facie evidence of rights under Policy ¶ 4(a)(i). See BGK Trademark Holdings, LLC& Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶4(a)(i).). Complainant is not required to prove superior rights to Respondent at this stage. Complainant need only prove it has some rights somewhere (even if Respondent is located in another country). Complainant has rights in the TENTH AND BLAKER BEER COMPANY and MILLERCOORS marks under Policy ¶ 4(a)(i).
Complainant claims Respondent’s <millercooors.com>, <milllercoors.com>, <millarcoors.com>, <tenlthandblake.com>, and <miillercoors.com> domain names are confusingly similar to the MILLERCOORS and TENTH AND BLAKE BEER COMPANY marks.
The following disputed domains are similar to the MILLERCOORS mark:
<millercooors.com>: mark incorporated fully, added “o,” added gTLD “.com.”
<milllercoors.com>: mark incorporated fully, added “l,” added gTLD “.com.”
<millarcoors.com>: mark misspelled as the “E” in the mark is replaced with an “a,” added gTLD “.com.”
<miillercoors.com>: mark incorporated fully, added “i," added gTLD “.com.”
Adding letters to a fully incorporated mark in a domain name does not adequately differentiate the disputed domain name from its related mark. See Bank of America Corporation v. Above.com Domain Privacy, FA 1629452 (Forum Aug. 18, 2015) (finding that the <blankofamerica.com> domain name contains the entire BANK OF AMERICA mark and merely adds the gTLD ‘.com’ and the letter ‘l’ to create a common misspelling of the word ‘bank.’). Since domain name syntax requires a TLD (whether a gTLD or a ccTLD), the TLD must be disregarded while conducting a Policy ¶4(a)(i) analysis. Slightly misspelled marks have also been generally considered ineffective in distinguishing it from a disputed domain. See Omaha Steaks International, Inc. v. DN Manager / Whois-Privacy.Net Ltd, FA 1610122 (Forum July 9, 2015) (finding, “The domain name differs from the mark only in that the domain name substitutes the letter ‘a’ in the word ‘steak’ with the letter ‘c’ and adds the generic Top Level Domain (‘gTLD’) ‘.com.’ These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy.”). The <millercooors.com>, <milllercoors.com>, <millarcoors.com> and <miillercoors.com> domain names confusingly similar to the MILLERCOORS mark pursuant to Policy ¶4(a)(i).
The <tenlthandblake.com> is confusingly similar to the TENTH AND BLAKE BEER COMPANY mark. The disputed domain eliminates the words “BEER” and “COMPANY” from the mark, adds the letter “l” to the word “TENTH,” and adds the “.com” gTLD. Using the analysis above, this domain name is confusingly similar to Complainant’s mark under a Policy ¶ 4(a)(i) analysis. See Bank of America Corporation (supra). Further, eliminating words from a mark may still leave the salient or prominent feature of the mark to be incorporated in a disputed domain, thereby creating confusing similarity. See, e.g., VNY Model Management, Inc. v. Lisa Katz / Domain Protection LLC, FA 1625115 (Forum Aug. 17, 2015) (finding that Respondent’s <vnymodels.com> domain name is confusingly similar to the VNY MODEL MANAGEMENT mark under Policy ¶4(a)(i).); WestJet Air Ctr., Inc. v. W. Jets LLC, FA 96882 (Forum Apr. 20, 2001) (finding that the <westjets.com> domain name is confusingly similar to the complainant’s mark, where the complainant holds the WEST JET AIR CENTER mark). The <tenlthandblake.com> domain name is confusingly similar to the TENTH AND BLAKE BEER COMPANY mark under Policy ¶ 4(a)(i).
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 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 claims Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the <millercooors.com>, <milllercoors.com>, <millarcoors.com>, <tenlthandblake.com>, and <miillercoors.com> domain names. Complainant never granted a license or permission to utilize any of its marks in commerce. In this case, Respondent registered the disputed domain names using a privacy service. The initially publicly available information does not indicate Respondent as commonly known by the disputed domains. Once this Proceeding began, the beneficial owner was disclosed by the Registrars. There is no similarity between the WHOIS information and Complainant’s marks. Respondent has submitted no evidence to the record to rebut Complainant’s contentions under this, or any, prong of this element. It seems clear Respondent is not commonly known by any of the disputed domain names under Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
Complainant claims Respondent has utilized each domain in a phishing scheme aimed at defrauding Complainant, in which Respondent uses the disputed domains as email suffixes by Complainant’s employees to initiate wire transfers via email (using human engineering). Such actions do not establish any bona fide offering of goods or services or any legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Juno Online Servs., Inc. v. Nelson, FA 241972 (Forum Mar. 29, 2004) (finding that using a domain name in a fraudulent scheme to deceive Internet users into providing their credit card and personal information is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use). Respondent’s use of the disputed domains fails to constitute any bona fide offering or legitimate use.
The domains resolve to parked or inactively held webpages, which Complainant argues is a failure to demonstrate rights or legitimate interests. This Panel agrees with Complainant. See Cengage Learning Inc. v. Myers, FA 1116919 (Forum, Jan. 15, 2008)(“the view of the panel is that, in the absence of evidence to the contrary in any particular case, of which there is none in the present case, a party in the position of the respondent is also responsible for the sponsored links currently appearing on the website.”); see also Hewlett-Packard Co. v. Shemesh, FA 434145 (Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶4(c)(iii).”). Respondent’s use of the disputed domains does not support a finding of any rights or legitimate interests.
Finally, Respondent registered the disputed domain names using a privacy service. This means Respondent has done nothing to publicly associate itself with the domain names, which means Respondent has acquired no rights simply by registering the domain names.
The Panel finds Policy ¶ 4(a)(ii) satisfied.
Complainant claims Respondent has registered and used the <millercooors.com>, <milllercoors.com>, <millarcoors.com>, <tenlthandblake.com>, and <miillercoors.com> domain names in bad faith. The disputed domains are used in connection with a fraudulent scheme to phish for information of Complainant and ultimately defraud its business for commercial gain as proscribed by Policy ¶ 4(b)(iv). The domains send out email requests for wire transfers to Complainant’s employees. Intending to utilize a confusingly similar domain for profit generally constitutes Policy ¶ 4(b)(iv) bad faith. See, e.g., DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”). Here, Respondent seems to be engaging in a scheme through email to dupe Complainant’s employees into wire transferring funds. Such use has been found to be in bad faith. See SHUAA Capital psc v. Oba Junkie / shuaa capital psc, FA14009001581255 (Forum October 29, 2014) (“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.”). Respondent’s use of the disputed domain names constitutes both Policy ¶ 4(b)(iv) bad faith as well as non-exclusive bad faith under Policy ¶ 4(a)(iii).
The disputed domains resolve to parked or inactively held webpages, further demonstrating bad faith under Policy ¶ 4(a)(iii). Panels have found both parking and inactive holding as evidence of bad faith. See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶4(a)(iii).”); see also Express Scripts, Inc. v. Windgather Invs. Ltd., D2007-0267 (WIPO Apr. 26, 2007) (finding that it makes no difference that a respondent contends that the advertisements in this case were “generated by the parking company,” the respondent still registered and used the disputed domain name in bad faith). Respondent’s parking (associating domains with a generic page with one hyperlink which presumably redirects to VistaPrint’s home site) of certain sites and inactive holding of others constitutes bad faith registration and use.
Complainant claims Respondent had to have known about Complainant’s marks because they are so famous. This Panel would tend to agree. The fraudulent use indicates Respondent clearly knew about Complainant’s marks and was trying to impersonate Complainant’s employees. Respondent would have no reason to act this way if Respondent didn’t know about Complainant’s marks. Respondent had actual knowledge of Complainant's rights in the marks prior to registering the disputed domain names. This Panel finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Respondent registered the disputed domain names using a privacy service. In the commercial context, this raises the rebuttable presumption of bad faith registration and use. Respondent has presented no evidence to the contrary and has taken no steps to rebut this presumption. For this reason alone, this Panel finds bad faith.
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 <millercooors.com>, <milllercoors.com>, <millarcoors.com>, <tenlthandblake.com>, and <miillercoors.com> domain names be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Wednesday, April 20, 2016
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page