StormX, Inc. v. adskld kladsk / dsads
Claim Number: FA1711001757325
Complainant is StormX, Inc. (“Complainant”), represented by Craig A. Beaker of Perkins Coie, Colorado, USA. Respondent is adskld kladsk / dsads
(“Respondent”), Alaska, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <stormxtoken.com>, registered with Shinjiru Technology Sdn Bhd.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 6, 2017; the Forum received payment on November 6, 2017.
On November 10, 2017, Shinjiru Technology Sdn Bhd confirmed by e-mail to the Forum that the <stormxtoken.com> domain name is registered with Shinjiru Technology Sdn Bhd and that Respondent is the current registrant of the name. Shinjiru Technology Sdn Bhd has verified that Respondent is bound by the Shinjiru Technology Sdn Bhd 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 15, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 5, 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@stormxtoken.com. Also on November 15, 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 December 6, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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
i) Complainant is a Seattle, Washington-based application publisher that drives users to engage with advertisers rewarding users with free Bitcoin and Ethereum. Although Complainant does not own trademark registrations for the STORM TOKEN mark, Complainant’s prior common law rights in its STORM TOKEN mark are sufficient to establish its superior rights. Complainant’s applications have over 1,000,000 downloads on the Android app with users across 187 countries. See Compl. Ex. G. In addition, Complainant and its products offered under the STORM TOKEN mark have received significant media recognition. See Compl. Ex. F. For example, Complainant’s initial coin offering was ranked in the top nine most anticipated ICOs by Entrepreneur Media, Inc. Id. Respondent’s <stormxtoken.com> domain name is nearly identical to Complainant’s mark as it merely adds the letter “x” between the terms “storm” and “token,” and appends the generic top-level domain (“gTLD”) “.com.”
ii) Respondent has no rights or legitimate interests in the <stormxtoken.com> domain name. Respondent is not commonly known by the disputed domain name, as the WHOIS information lists “adskld kladsk / dsads” as registrant. See Amend. Compl. Ex. A. Complainant also has not authorized, licensed, or otherwise permitted Respondent to use the mark. Further, Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the domain name in connection with a phishing and fraud scheme whereby Respondent’s website associated with the domain name mirrors Complainant’s website in an effort to confuse Internet users into believing that the users are visiting Complainant’s website. Compare Compl. Ex. D (Complainant’s domain) with Compl. Ex. I (Respondent’s domain).
iii) Respondent registered and uses the <stormxtoken.com> domain name in bad faith. Respondent benefits from initial interest confusion which it uses to engage in a phishing/fraud scheme whereby Respondent impersonates Complainant and its website in order to collect personal information and payment from Internet users looking for Complainant and its goods and services. Compare Compl. Ex. D (Complainant’s domain) with Compl. Ex. I (Respondent’s domain).
B. Respondent
Respondent failed to submit a response in this proceeding. The Panel notes that Respondent registered the <stormxtoken.com> domain name on October 16, 2017. See Compl. Ex. A.
Complainant established that it had common law rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name 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.
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.”).
Complainant claims it hold common law rights in the STORM TOKEN mark and does not currently hold a trademark registration. Policy ¶ 4(a)(i) does not require a complainant to own a trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding that “The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”). To establish common law rights in a mark, a complainant generally must prove that the mark has generated a secondary meaning. See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the
mark’s having acquired secondary meaning.”). Complainant claims that its applications have over 1,000,000 downloads on the Android app with users across 187 countries. See Compl. Ex. G. In addition, Complainant alleges that its products offered under the STORM TOKEN mark have received significant media recognition. See Compl. Ex. F. For example, Complainant provides an article showing that its initial coin offering was ranked in the top nine most anticipated ICOs by Entrepreneur Media, Inc. Id. Accordingly, the Panel finds that Complainant does hold common law rights in the name for the purposes of Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <stormxtoken.com> domain name is confusingly similar to Complainant’s mark as it merely adds the letter “x” between the terms “storm” and “token,” and appends the gTLD “.com.” Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶4(a)(i). See Google, Inc. v. DktBot.org, FA 286993 (Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel therefore finds that the <stormxtoken.com> domain name is confusingly similar to the STORM TOKEN mark under Policy ¶4(a)(i).
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.”).
Complainant contends that Respondent has no rights or legitimate interests in the <stormxtoken.com> domain name. Where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies “adskld kladsk / dsads” as the registrant. See Amend. Compl. Ex. A. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the STORM TOKEN mark. Panels may use these assertions as evidence of lacking rights or legitimate interests. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Complainant alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the disputed domain name prior to its registration, and Complainant has not given Respondent permission to use the disputed domain name. Accordingly, the Panel may agree that Respondent is not commonly known by the <stormxtoken.com> domain name under Policy ¶ 4(c)(ii).
Complainant next argues that Respondent uses the domain name in connection with a phishing and fraud scheme whereby Respondent’s website associated with the domain name mirrors Complainant’s website in an effort to confuse Internet users into believing that the users are visiting Complainant’s website. Passing off in furtherance of a fraudulent phishing scheme can evince a failure to make a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also Google Inc. v. Pritam Singh / Pandaje Technical Services Pvt Ltd., FA 1660771 (Forum March 17, 2016) (agreeing that respondent has not shown any bona fide offering of goods or services or any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii) as the respondent used the complainant’s mark and logo on a resolving website containing offers for technical support and password recovery services, and soliciting Internet users’ personal information). Complainant provides screenshots of both its website located at <stormtoken.com> and Respondent’s located at the disputed domain name, and the websites do appear to be nearly, if not entirely, identical. Compare Compl. Ex. D (Complainant’s domain) with Compl. Ex. I (Respondent’s domain). As such, the Panel finds that Respondent attempts to pass off as Complainant, potentially to phish for information, failing to make a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
Additionally, Complainant argues that Respondent registered and uses the <stormxtoken.com> domain name in bad faith by creating initial interest confusion and mimicking Complainant’s website located at its own domain name, <stormtoken.com>. Using a confusingly similar domain name to host an identical webpage, presumably for commercial gain, can evince bad faith under Policy ¶ 4(b)(iv). See Red Bull GmbH v. Gutch, D2000-0766 (WIPO Sept. 21, 2000) (finding that the respondent’s expected use of the domain name <redbull.org> would lead people to believe that the domain name was connected with the complainant, and thus is the equivalent to bad faith use); see also Target Brands, Inc. v. JK Internet Servs., FA 349108 (Forum Dec. 14, 2004) (finding bad faith because the respondent not only registered Complainant’s famous TARGET mark, but “reproduced . . . Complainant’s TARGET mark . . . [and] added Complainant’s distinctive red bull’s eye [at the domain name] . . . to a point of being indistinguishable from the original.”). As noted previously, Complainant provides copies of both resolving domains, which appear nearly identical. Compare Compl. Ex. D (Complainant’s domain) with Compl. Ex. I (Respondent’s domain). Accordingly, the Panel agrees that Respondent attempts to pass off as Complainant, presumably for financial gain, in bad faith under Policy ¶ 4(b)(iv).
Further, Complainant argues that Respondent registered and uses the <stormxtoken.com> domain name to engage in a phishing scheme intended to defraud users. Phishing schemes can evince bad faith registration and use. See Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA1506001625750 (Forum July 17, 2015) (“Respondent uses the <klabzuba-oilgas.com> domain to engage in phishing, which means Respondent registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii).”). Complainant claims that Respondent uses the identical webpage on the resolving domain to trick users into divulging information by believing Respondent’s website is somehow affiliated with Complainant’s business. Compare Compl. Ex. D (Complainant’s domain) with Compl. Ex. I (Respondent’s domain). Therefore, the Panel agrees that Respondent uses the domain name to further a phishing scheme in bad faith pursuant to Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <stormxtoken.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: December 12, 2017
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