Colas Inc. v. Protection of Private Person
Claim Number: FA1709001749072
Complainant is Colas Inc. (“Complainant”), represented by John M. Mueller of Baker & Hostetler LLP, Ohio, USA. Respondent is Protection of Private Person (“Respondent”), Russian Federation.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <colascontractors.com>, registered with Registrar of Domain Names REG.RU LLC.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 14, 2017; the Forum received payment on September 14, 2017.
On September 18, 2017, Registrar of Domain Names REG.RU LLC confirmed by e-mail to the Forum that the <colascontractors.com> domain name is registered with Registrar of Domain Names REG.RU LLC and that Respondent is the current registrant of the name. Registrar of Domain Names REG.RU LLC has verified that Respondent is bound by the Registrar of Domain Names REG.RU LLC 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 21, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 11, 2017 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@colascontractors.com. Also on September 21, 2017, 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 October 13, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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 provides construction and contracting products and services. Complainant uses the COLAS mark in conjunction with its business practices. Complainant registered the COLAS mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,760,863, registered Mar. 30, 1993). Respondent’s <colascontractors.com> is confusingly similar to Complainant’s COLAS mark because it incorporates the mark in its entirety, adding the descriptive term “contractors” and the “.com” generic top level domain (“gTLD”).
Respondent does not have rights or legitimate interests in <colascontractors.com>. Respondent is not commonly known by the disputed domain name. Complainant has not authorized or licensed Respondent to use the COLAS mark in any regard, nor is Respondent affiliated with Complainant. Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <colascontractors.com> resolves to a website attempting to pass itself off as Complainant to sell competing goods and services, while phishing for users’ personal information related to false employment offers.
Respondent registered and is using <colascontractors.com> in bad faith. The disputed domain name disrupts Complainant’s business by offering competing goods and services under Complainant’s COLAS mark. Moreover, Respondent attempts to phish for users personal information under the guise of false employment offers. Respondent registered <colascontractors.com> with actual knowledge of Complainant and its rights to the COLAS mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant Colas Inc. of Morristown, NJ, USA, owns the domestic registration for the mark COLAS. Complainant has continuously used the mark since at least as early as 1992, in connection with its provision of construction and contracting goods and services.
Respondent is Protection of Private Person of Moscow, Russia. Respondent’s registrar’s address is listed as the same. The Panel notes that Respondent registered <colascontractors.com> on or about June 16, 2017.
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.”).
Panel Note: Supported Language Request
The Panel notes that Complainant requests that the language of this administrative proceeding proceed in the English language pursuant to UDRP Rule 11(a). Complainant makes this request in light of the Russian language Registration Agreement. Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides that the proceeding should be in English.
Complainant provides construction and contracting products and services. Complainant uses the COLAS mark in conjunction with its business practices. Complainant registered the COLAS mark with the USPTO (e.g., Reg. No. 1,760,863, registered Mar. 30, 1993). Prior panels have found that registration with the USPTO is sufficient to show rights in a mark. See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). The Panel here finds that Complainant’s USPTO registration is sufficient to show rights in the COLAS mark.
Complainant asserts that Respondent’s <colascontractors.com> is confusingly similar to Complainant’s COLAS mark because it incorporates the mark in its entirety, adding the descriptive term “contractors” and the “.com” gTLD. The addition of descriptive terms, particularly terms that pertain to complainant’s business, do not adequately distinguish a disputed domain name from complainant’s mark under Policy ¶ 4(a)(i). See Abbott Laboratories v. Miles White, FA 1646590 (Forum Dec. 10, 2015). Moreover, “[t]he addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.” See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Forum May 27, 2003). The Panel here finds that Respondent’s <colascontractors.com> is confusingly similar to Complainant’s COLA mark pursuant to Policy ¶ 4(a)(i).
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
Complainant has proven this element.
The Panel recognizes 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), 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). Complainant has met this burden.
Complainant argues that Respondent does not have rights or legitimate interests in <colascontractors.com>. Complainant indicates that Respondent is not commonly known by the disputed domain name. WHOIS information associated with this case identifies Respondent as “Protection of Private Person.” The respondent is not commonly known by the disputed domain name where there is no evidence in the record, including the WHOIS information, suggesting that the respondent is commonly known by that name. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006). Because Respondent has failed to contest Complainant’s assertions, and the WHOIS contact does not reflect the domain name, the Panel here finds that Respondent is not commonly known by the disputed domain name.
Complainant avers it has not authorized or licensed Respondent to use the COLAS mark in any regard, nor is Respondent affiliated with Complainant. Complainant asserts that Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Complaint provides evidence that Respondent’s <colascontractors.com> resolves to a website attempting to pass itself off as Complainant to sell competing goods and services, while phishing for users’ personal information related to false employment offers. A respondent is not using the domain name for a bona fide offering of goods or services, nor a legitimate noncommercial or fair use when it uses the domain name to divert users to a website offering services that compete with those offered by the complainant under its marks. See Coryn Group, Inc. v. Media Insight, FA 198959 (Forum Dec. 5, 2003). Likewise, “[p]assing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.” See DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017). The Panel here finds that Respondent does not have rights or legitimate interests in <colascontractors.com> pursuant to Policy ¶ 4(c)(i) and (iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
As Respondent has not provided a response to this action, Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
Complainant has proven this element.
Complainant maintains that Respondent registered and is using <colascontractors.com> in bad faith. Complainant argues that the disputed domain name disrupts Complainant’s business by offering competing goods and services under Complainant’s COLAS mark. Past panels have found that a disputed domain name is registered and used in bad faith where the respondent hosts a website that “duplicate[s c]omplainant’s mark and logo, giving every appearance of being associated or affiliated with [c]omplainant’s business.” See Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003).
Complainant asserts that Respondent uses <colascontractors.com> to phish for users personal information under the guise of false employment offers. A respondent’s apparent use of a disputed domain name in furtherance of a phishing scheme further establishes bad faith registration and use under Policy ¶ 4(a)(iii). See Google Inc. v. Domain Admin / Whois Privacy Corp., FA1506001622862 (Forum Aug. 10, 2015). The Panel here finds that Respondent registered and is using <colascontractors.com> in bad faith pursuant to the Policy.
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
Complainant has proven this element.
DECISION
As Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <colascontractors.com> be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: October 27, 2017
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