StormX, Inc. v. mark
Claim Number: FA1711001757346
Complainant is StormX, Inc. (“Complainant”), represented by Craig A. Beaker of Perkins Coie LLP, District of Columbia. Respondent is mark (“Respondent”) of Moscow, Russian Federation.
REGISTRAR AND DISPUTED DOMAIN NAME(s)
The domain name(s) at issue is/are <stormtokens.net>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 6, 2017; the Forum received payment on November 6, 2017.
On Nov 08, 2017, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <stormtokens.net> domain name(s) is/are registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the names. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 8, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 28, 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@stormtokens.net. Also on November 8, 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 30, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 states that it is a Seattle, Washington-based application publisher that drives users to engage with advertisers rewarding users with free Bitcoin and Ethereum. Complainant has been active since 2013. Its mobile applications offered since July 2017 under the STORM TOKEN mark has over 1,000,000 downloads on the Android app, with users across 187 countries. Although Complainant does not own trademark registrations for its STORM TOKEN mark, Complainant’s prior common law rights in the mark are sufficient to establish its superior rights. In addition, Complainant and its products offered under the STORM TOKEN mark have received significant media recognition. For example, Complainant’s initial coin offering was ranked in the top nine most anticipated ICOs by Entrepreneur Media, Inc.
Complainant alleges that the disputed domain name is identical or confusingly similar to Complainant’s mark as it is nearly identical to Complainant’s STORM TOKEN mark and merely adds the letter “s” after “token” and appends the generic top-level domain (“gTLD”) “.net.” Complainant cites UDRP precedents to support its position.
According to Complainant, Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, as the WHOIS information lists “mark” as the registrant. Complainant also has not authorized, licensed, or otherwise permitted Respondent to use the STORM TOKEN mark. Respondent also 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 disputed 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 to divulge personal and financial information. Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent registered and uses the disputed 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, tricking consumers into believing that Respondent is affiliated with Complainant, thereby creating confusion. Respondent creates this confusion to engage in a phishing/fraud scheme whereby Respondent impersonates Complainant and its domain in order to collect personal information and financial information from Internet users looking for Complainant and its goods and services. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the mark STORM TOKENS and users provide advertising services.
Complainant’s rights in its marks date back to 2013.
The disputed domain name was registered in October 2017.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The disputed domain name is used to engage in a phishing/fraud 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.”).
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.”). To support its claim, Complainant provides evidence to the effect that it applications have over 1,000,000 downloads on the Android app with users across 187 countries. In addition, Complainant provides evidence that its products offered under the STORM TOKEN mark have received significant media recognition.: specifically, Complainant provides evidence that its initial coin offering was ranked in the top nine most anticipated ICOs by Entrepreneur Media, Inc. Accordingly, the Panel finds that Complainant does hold common law rights in the name for the purposes of Policy ¶ 4(a)(i).
The disputed domain name is confusingly similar to Complainant’s mark as it incorporates Complainant’s entire STORM TOKEN mark and merely adds the letter “s” after “token” and appends the gTLD “.net.” 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 (ForumAug. 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 disputed domain name is confusingly similar to the STORM TOKEN mark under Policy ¶4(a)(i).
Complainant has not licensed or otherwise authorized Respondent to use its mark. 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 “mark” as the registrant. 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). Accordingly, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Respondent does not use the disputed domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent’s domain parallels Complainant’s in order to engage in a phishing scheme to obtain information from users. Phishing schemes can evince a failure to provide a bona fide offering of goods or services or legitimate noncommercial or fair use. See 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). Therefore, the Panel finds that Respondent hosts a nearly identical domain to fraudulently receive users’ personal or financial information, failing to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶ 4(c)(i) & (iii), and the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, as already noted, Respondent uses the disputed domain name to engage in a phishing/fraud scheme whereby Respondent impersonates Complainant and its domain in order to collect personal information and financial information from Internet users looking for Complainant and its goods and services. Phishing schemes can evince bad faith registration and use under Policy ¶ 4(a)(iii). 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).”). Therefore, the Panel finds that Respondent registered and uses the domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
Further, Respondent benefits from the initial interest confusion created by Respondent’s use of a domain that wholly incorporates Complainant’s STORM TOKEN mark, tricking consumers into believing that Respondent is affiliated with Complainant, thereby creating confusion. Using a disputed domain name to trade upon the goodwill of a complainant for commercial gain can evince bad faith under Policy ¶ 4(b)(iv). See Nw. Airlines, Inc. v. Koch, FA 95688 (Forum Oct. 27, 2000) (“[T]he selection of a domain name [<northwest-airlines.com>] which entirely incorporates the name of the world’s fourth largest airline could not have been done in good faith”). Accordingly, the Panel finds that Respondent attempts to commercially benefit off Complainant’s mark in bad faith under Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <stormtokens.net> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: November 30, 2017
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