StormX, Inc. v. Artem Panin
Claim Number: FA1711001757329
Complainant is StormX, Inc. (“Complainant”), represented by Craig A. Beaker of Perkins Coie LLP, Washington DC, USA. Respondent is Artem Panin (“Respondent”), Ukraine.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <stormtoken.site>, registered with NameCheap, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 6, 2017; the Forum received payment on November 6, 2017.
On November 6, 2017, NameCheap, Inc. confirmed by e-mail to the Forum that the <stormtoken.site> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 7, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 27, 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@stormtoken.site. Also on November 7, 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 November 29, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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
1. Complainant is a Seattle, Washington-based application publisher that drives users to engage with advertisers rewarding users with free Bitcoin and Ethereum. Complainant has common law rights in the STORM TOKEN mark as it has developed a secondary meaning. Complainant’s applications have over 1,000,000 downloads on the Android app with users across 187 countries. Complainant and its products offered under the STORM TOKEN mark have received significant media recognition.
2. Respondent’s <stormtoken.site>[1] domain name is identical to Complainant’s mark as it contains the mark in its entirety and appends the generic top-level domain (”gTLD”) “.site.”
3. Respondent has no rights or legitimate interests in the <stormtoken.site> domain name. Respondent is not commonly known by the domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark.
4. Respondent also does not use the 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 mirrors Complainant’s website in an effort to confuse Internet users into believing that the users are visiting Complainant’s website.
5. Respondent registered and uses the <stormtoken.site> domain name in bad faith. Respondent benefits from the initial interest confusion created by Respondent’s use of a domain that wholly incorporates Complainant’s STORM TOKEN mark, causing consumers encountering the domain to believe that Respondent is affiliated with Complainant. Respondent creates this confusion 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.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds common law rights for the STORM TOKEN mark. Respondent’s domain name is confusingly similar to Complainant’s STORM TOKEN mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <stormtoken.site> domain name and that Respondent registered and uses the 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 has minimally established that it holds common law rights in the STORM TOKEN 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 has provided evidence that its applications have over 1,000,000 downloads on the Android app with users across 187 countries. In addition, Complainant has shown that its products offered under the STORM TOKEN mark have received significant media recognition. On this evidence, and other evidence in the record, the Panel finds that Complainant’s mark has achieved secondary meaning, and thus Complainant holds common law rights in the STORM TOKEN mark for the purposes of Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <stormtoken.site> domain name is identical or confusingly similar to Complainant’s mark as it contains the mark in its entirety and appends the gTLD “.site.” “Addition of a gTLD is irrelevant where a mark has been fully incorporated into a domain name and the gTLD is the sole difference.” Tupelo Honey Hospitality Corporation v. King, Reggie, FA 1732247 (Forum July 19, 2017) The Panel therefore finds that the <stormtoken.site> domain name is identical to the STORM TOKEN mark under Policy ¶4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <stormtoken.site> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant contends that Respondent has no rights or legitimate interests in the <stormtoken.site> 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 “Artem Panin” as the registrant. Complainant asserts, without contradiction, that no evidence exists to show that Respondent has ever been legitimately known by the STORM TOKEN mark. Such evidence can support a finding that a respondent lacks rights or legitimate interests in the use of a domain name. 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 <stormtoken.site> domain name prior to its registration, and Complainant has not given Respondent permission to use the domain name. These allegations are not disputed. Accordingly, the Panel agrees that Respondent is not commonly known by the <stormtoken.site> domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent does not use the domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent attempts to pass off as Complainant on the resolving website to further a phishing scheme to obtain information from users. Passing off to phish for users’ information constitutes a failure to make a bona fide offering of goods or services or 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 has provided screenshots of its own resolving webpage, located at <stormtoken.com>, and the resolving page for the <stormtoken.site> domain, and both contain the exact same layout, color scheme, and information. Thus, Complainant has shown that Respondent uses an identical webpage to fraudulently obtain information from users seeking Complainant’s services. Accordingly, the Panel finds that Respondent’s website mirrors that of Complainant’s to further a phishing scheme, thus failing to use the <stormtoken.site> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶ 4(c)(i) & (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant has proven that Respondent registered and uses the <stormtoken.site> domain in bad faith. Respondent presumably benefits from confusion created by Respondent’s use of a domain, which wholly incorporates Complainant’s STORM TOKEN mark. Thus, consumers being directed to the resolving website will most likely believe that Respondent is affiliated with Complainant. Using an identical or confusingly similar domain name under these circumstances shows bad faith registration and use under Policy ¶ 4(b)(iv). See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002) ("While an intent to confuse consumers is not required for a finding of trademark infringement, intent to deceive is strong evidence of a likelihood of confusion."). Accordingly, the Panel concludes that Respondent registered the <stormtoken.site> domain name in bad faith.
Complainant argues that Respondent registered and uses the <stormtoken.site> domain name in bad faith as Respondent uses the domain name to engage in a phishing scheme intended to defraud users. The Panel agrees and finds 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 has shown that Respondent impersonates Complainant and its website on Respondent’s resolving website in order to collect personal information and payment from Internet users looking for Complainant and its goods and services. Therefore, the Panel agrees that Respondent has acted in bad faith pursuant to Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied 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 <stormtoken.site> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: December 4, 2017
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