Titan America LLC v. KRISTA DEGENNARO
Claim Number: FA1611001704661
Complainant is Titan America LLC (“Complainant”), represented by Robert C. Van Arnam of Williams Mullen, Virginia, USA. Respondent is KRISTA DEGENNARO (“Respondent”), New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <titansamerica.com>, registered with eNom, Inc.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 28, 2016; the Forum received payment on November 28, 2016.
On November 28, 2016, eNom, Inc. confirmed by e-mail to the Forum that the <titansamerica.com> 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 ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 29, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 19, 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@titansamerica.com. Also on November 29, 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 December 22, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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.
A. Complainant
Complainant made the following contentions.
Complainant has rights in the TITAN AMERICA mark based on its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,914,407, registered Dec. 28, 2004). See Compl., at Attached Ex. 2. Respondent’s <titansamerica.com> domain name is confusingly similar to Complainant’s TITAN AMERICA mark because it incorporates the entire mark while merely omitting the space and adding a single “s” and a generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not licensed or otherwise authorized Respondent to use its TITAN AMERICA mark, and Respondent is not commonly known by “Titan America, LLC” or the <titansamerica.com> domain name. Respondent is not making any active use of the domain name. See Compl., at Attached Ex. 4. Respondent has only used the domain name as part of an email phishing scheme, and such use is not a bona fide offering of goods and services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Compl., at Attached Ex. 5.
Respondent registered and has been using <titansamerica.com> in bad faith. Respondent sends emails posed as an employee of Complainant, and attempts to trick Internet users to wire money to a bank account in the Phillipines. See Compl., at Attached Ex. 5. Phishing is clear evidence of bad faith under Policy ¶ 4(a)(iii), and because Respondent is commercially gaining from confusion between the domain name and Complainant’s mark, Respondent’s conduct is in bad faith under Policy ¶ 4(b)(iv).
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the heavy building materials industry.
2. Complainant has trademark rights in the TITAN AMERICA mark based on its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,914,407, registered Dec. 28, 2004).
3. Respondent registered the disputed domain name on October 4, 2016.
4. Respondent uses the domain name as part of an email phishing scheme.
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 (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 first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant contends that it has rights in the TITAN AMERICA mark based on its registration with the USPTO (e.g., Reg. No. 2,914,407, registered Dec. 28, 2004). See Compl., at Attached Ex. 2. Prior panels have found that such a registration confers rights in a mark pursuant to Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . Due to Complainant ‘s attached USPTO registration on the principal register at Exhibit 1, the Panel finds that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). The Panel therefore concludes that Complainant has demonstrated rights in the TITAN AMERICA mark.
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s TITAN AMERICA mark. Complainant contends that Respondent’s <titansamerica.com> domain name is confusingly similar to its TITAN AMERICA mark. Complainant alleges that Respondent has merely added an “s” while omitting the space in the TITAN AMERICA mark, and that the addition of the gTLD to the entire mark makes the disputed domain name confusingly similar. Panels have agreed that adding a single “s” in a domain name is not enough to differentiate the domain name from a complainant’s mark under Policy ¶ 4(a)(i) analysis. See Paperless Inc. v. ICS Inc, FA 1629515 (Forum Aug. 17, 2015) (establishing a confusing similarity between the <paperlessspost.com> domain name and the PAPERLESS POST trademark). Therefore, the Panel holds that the <titansamerica.com> domain name is confusingly similar to Complainant’s TITAN AMERICA mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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 (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 (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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s TITAN
AMERICA trademark and to use it in its domain name, adding
only the letter “s” to create the domain name;
(b) Respondent registered the disputed domain name on October
4, 2016;
(c) Respondent uses the domain name as part of an email
phishing scheme;
(e) Complainant contends that Respondent has no rights or
legitimate interests in the <titansamerica.com> domain name.
Complainant asserts that it has not licensed or otherwise
authorized Respondent to use its TITAN AMERICA mark in any
fashion, and that Respondent is not commonly known by the
disputed domain name. The Panel notes that the WHOIS
information for the domain name in question lists “KRISTA
DEGENNARO” as the registrant. See Compl., at Attached Ex. 1.
Previous panels have inferred that a respondent is not commonly
known by a domain name from the WHOIS information and lack of
contradicting evidence in the record. See State Farm Mutual
Automobile Insurance Company v. Dale Anderson,
FA1504001613011 (Forum May 21, 2015) (concluding that
because the WHOIS record lists “Dale Anderson” as the registrant
of the disputed domain name, the respondent was not commonly
known by the <statefarmforum.com> domain name pursuant to
Policy ¶ 4(c)(ii)). Thus, the Panel finds that Respondent is not
commonly known by <titansamerica.com>;
(f) Complainant submits that Respondent is not using the disputed
domain name to make a bona fide offering of goods and services under Policy ¶ 4(c)(i), or using it to make a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). Complainant argues that Respondent is not making any active use of the domain name, and that Respondent is using it as part of an email phishing scheme. The Panel notes Complainant’s submission of the current resolving page at <titansamerica.com>. See Compl., at Attached Ex. 4. Complainant has also submitted evidence of alleged phishing activity where Respondent is allegedly posing as an employee from “Titan America, LLC” to get money wired to an account in the Philippines. See Compl., at Attached Ex. 5 (using email suffix “<kimberly@titansamerica.com>”). Panels have held that a respondent does not have rights or legitimate interests in a domain name when they fail to make an active use of it, and that phishing is not a bona fide offering of goods and services or a legitimate noncommercial or fair use. See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Forum Feb. 28, 2007) (finding that the respondent’s non-use of the <abc7chicago.mobi> domain name since its registration provided evidence that the respondent lacked rights or legitimate interests in the disputed domain name); see also Chevron Intellectual Property LLC v. Thomas Webber / Chev Ronoil Recreational Sport Limited, FA 1661076 (Forum Mar. 15, 2016) (finding that the respondent had failed to provide a bona fide offering of goods or services or any legitimate noncommercial or fair use, stating, “Respondent is using an email address to pass themselves off as an affiliate of Complainant. Complainant presents evidence showing that the email address that Respondent has created is used to solicit information and money on false pretences. The disputed domain name is being used to cause the recipients of these emails to believe mistakenly that Respondent has a connection with Complainant and is one of the Complainant’s affiliates.”). Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name under Policy ¶¶ 4(c)(i) and (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and is using the <titansamerica.com> domain name in bad faith. Complainant argues that Respondent is using the similarity of the disputed domain name with Complainant’s mark to trick job-seeking Internet users into wiring money to Respondent’s bank account. The Panel notes emails sent from Respondent from <kimberly@titansamerica.com>. See Compl., at Attached Ex. 5. Panels have deemed respondents in bad faith for attempting to pass themselves off as a complainant through using a disputed domain name as an email suffix in fraudulent schemes to phish for information or solicit money transfers. See Oceaneering International, Inc. v. Agents Office, FA1112001421242 (Forum Jan. 25, 2012) (“The Panel therefore determines that Respondent registered and uses the <oceaneeringgroup.com> domain name in order to attract job seekers and create a likelihood of confusion as to Complainant’s sponsorship of the disputed domain name for Respondent’s own commercial benefit, which is evidence of bad faith registration and use under Policy ¶ 4(b)(iv).”); see also Emdeon Business Services, LLC v. HR Emdeon Careers, FA1507001629459 (Forum Aug. 14, 2015) (finding that the respondent had engaged in an email phishing scheme indicating bad faith under Policy ¶ 4(a)(iii), where respondent was coordinating the disputed domain name to send emails to Internet users and advising them that they had been selected for a job interview with the complainant and was persuading the users to disclose personal information in the process). As such, the Panel finds that Respondent registered and used <titansamerica.com> in bad faith pursuant to the language of Policy ¶ 4(b)(iv) or otherwise under a nonexclusive interpretation of Policy ¶ 4(a)(iii).
Secondly, Complainant also argues that Respondent has previously engaged a privacy service, and in doing so withheld identifying information. The consensus view amongst panels is that use of a privacy service, without more, cannot reach the threshold of bad faith registration and use. See WWF-World Wide Fund for Nature aka WWF International v. Moniker Online Services LLC and Gregory Ricks, D2006-0975 (WIPO November 1, 2006) (finding use of proxy registration service does not of itself indicate bad faith; there are many legitimate reasons for proxy registration services); see also Divex Limited v. ZJ, Sam Chang and Tim NG, D2007-0861 (WIPO September 21, 2007) (finding privacy services may be justified by the need to avoid spam and identity theft). However, the totality of the circumstances which surround a respondent’s engagement of a privacy service may give rise to a finding of bad faith registration and use. See, e.g., HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, D2007-0062 (WIPO June 4, 2007) (finding a change of privacy service after notice of complaint indicative of bad faith); see also Sermo, Inc. v. CatalystMD, LLC, D2008-0647 (WIPO July 2, 2008) (stating that use of privacy shield can be “treated as evidence of bad faith . . . when serial registrants use privacy shields to mask each registrant’s actual date of registration”). Therefore, as the Panel agrees that Respondent has utilized a privacy shield in a manner which materially adversely affects or obscures the facts of this proceeding, it finds that Respondent has registered and used the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed <titansamerica.com> domain name using the TITAN AMERICA mark and in view of the conduct that Respondent engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <titansamerica.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: December 27, 2016
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