Fastenal IP Company v. Tony Murphy
Claim Number: FA1711001758527
Complainant is Fastenal IP Company (“Complainant”), represented by John Milek, Minnesota, USA. Respondent is Tony Murphy (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fastenalstores.com>, registered with GoDaddy.com, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 14, 2017; the Forum received payment on November 14, 2017.
On November 15, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <fastenalstores.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 November 20, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 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@fastenalstores.com. Also on November 20, 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 14, 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 uses the FASTENAL mark in connection with the distribution and wholesale of fasteners, electrical tools and wiring, gloves, protective eyewear, and other related products and services. Complainant registered the FASTENAL mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,497,408, registered Jul. 26, 1988). Respondent’s <fastenalstores.com>[1] domain name is identical to and confusingly similar to Complainant’s mark as it simply adds the phrase “stores” to Complainant’s mark.
2. Respondent has no rights or legitimate interests in the <fastenalstores.com> domain name. Respondent is not commonly known by the domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark.
3. 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 to impersonate Complainant in an attempt to illicit improper and fraudulent communications and transactions.
4. Respondent registered and uses the <fastenalstores.com> domain name in bad faith. Respondent uses Complainant’s FASTENAL mark in the domain name to confuse users seeking Complainant and to profit by redirecting users to the domain name. Respondent also attempts to mislead Internet users and impersonate Complainant to conduct fraudulent employment communications with unsuspecting individuals over email.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the FASTENAL mark. Respondent’s domain name is confusingly similar to Complainant’s FASTENAL mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <fastenalstores.com> 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 registered the FASTENAL mark with the USPTO (e.g. Reg. No. 1,497,408, registered Jul. 26, 1988). Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (“Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that Complainant has established rights in the FASTENAL mark.
Complainant next argues that Respondent’s <fastenalstores.com> domain name is identical or confusingly similar to Complainant’s mark as it simply adds the phrase “stores to Complainant’s mark. Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains a complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level gTLD). The domain name also appends the generic top-level domain (“gTLD”) “.com” which also does not provide distinction from the mark. See 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 <fastenalstores.com> domain name is confusingly similar to the FASTENAL 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 <fastenalstores.com> 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 <fastenalstores.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 “Tony Murphy” as the registrant. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the FASTENAL mark. Such uncontradicted assertions are evidence that Respondent lacks rights or legitimate interests in the <fastenalstores.com> 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 also alleges, without contradiction, that Respondent has never been legitimately affiliated with Complainant, has never been known by the <fastenalstores.com> domain name prior to its registration, and Complainant has not given Respondent permission to use the domain name. Accordingly, the Panel agrees that Respondent is not commonly known by the <fastenalstores.com> domain name under Policy ¶ 4(c)(ii).
Complainant has provided evidence that Respondent attempts to impersonate Complainant to phish for financial information from consumers via email. Complainant also has provided an email thread between alleged victims of Respondent’s phishing scheme and Complainant, showing that Respondent used the domain name to solicit fraudulent employment opportunities relating to Complainant’s business. This evidence demonstrates the lack of any bona fide offering of goods or services or legitimate noncommercial or fair use by Respondent of the domain name. See Cubist Pharmaceuticals, Inc. v. Gregory Stea, FA1403001550388 (Forum May 5, 2014) (“Respondent is using the domain name in emails to various IT hardware suppliers in an attempt to impersonate Complainant and defraud its customers. The domain name also resolved to a website similar to Complainant's website.”); see also Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). The Panel therefore finds that Respondent has failed to provide 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).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and uses the <fastenalstores.com> domain name in bad faith by confusing users seeking Complainant and to profit by redirecting users to the domain name. Using a domain name to trade upon the goodwill of a complainant for commercial gain shows bad faith under Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain). Accordingly, the Panel agrees that Respondent is attempting to confuse users seeking Complainant’s business for commercial gain; thus, the Panel finds that Respondent registered and uses the domain name in bad faith under Policy ¶ 4(b)(iv).
Further, Complainant has provided evidence that Respondent uses the <fastenalstores.com> domain name to fraudulently send emails to Complainant’s customers in efforts to receive financial information from unsuspecting users. This is also evidence of bad faith under Policy ¶ 4(a)(iii). See Zoetis Inc. and Zoetis Services LLC v. VistaPrint Technologies Ltd, FA1506001623601 (Forum July 14, 2015) (“Respondent’s attempt to use the <zoietis.com> domain name to phish for personal information in fraudulent emails also constitutes bad faith pursuant to Policy ¶ 4(a)(iii).”). Complainant also has provided evidence that Respondent has used the domain name to solicit fraudulent employment opportunities relating to Complainant’s business. Therefore, the Panel holds that Respondent’s conduct amounts to bad faith under 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 <fastenalstores.com> domain name be CANCELLED .
Bruce E. Meyerson, Panelist
Dated: December 20, 2017
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