UNFCU Financial Services, LLC d/b/a Industrial Coverage v. Clark Lienemann
Claim Number: FA1802001770729
Complainant is UNFCU Financial Services, LLC d/b/a Industrial Coverage (“Complainant”), represented by Michael Rott of 24-01 44th Road, New York, USA. Respondent is Clark Lienemann (“Respondent”), Indiana, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <industrailcoverage.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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 7, 2018; the Forum received payment on February 7, 2018.
On February 7, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <industrailcoverage.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 February 12, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 5, 2018 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@industrailcoverage.com. Also on February 12, 2018, 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 March 7, 2018, 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, UNFCU Financial Services, LLC d/b/a Industrial Coverage, uses its INDUSTRIAL COVERAGE mark to provide and market its products and services. Complainant has rights in the mark based upon registration with the New York State Department of Financial Services (Registered Mar. 6, 2013). Respondent’s <industrailcoverage.com> is identical to Complainant’s mark, as it contains Complainant’s mark in its entirety, merely misspelling of the word “industrial.”
ii) Respondent does not have rights or legitimate interests in the <industrailcoverage.com> domain name. Respondent is not commonly known by the disputed domain name. Respondent is not using the disputed domain name to make a bona fide offering of goods or services or for a legitimate non-commercial or fair use. Rather, Respondent has not made an active use of the disputed domain name.
iii) Respondent has registered and used the <industrailcoverage.com> domain name in bad faith. Respondent uses the disputed domain name to pass itself off as Complainant to conduct an email phishing scheme.
B. Respondent
Respondent failed to submit a Response in this proceeding. The Panel notes that the <industrailcoverage.com> domain name was created on January 10, 2018.
Complainant established that it had 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 rights in the INDUSTRIAL COVERAGE mark based upon its registration with the New York State Department of Financial Services. (Registered Mar. 6, 2013.) See Compl. Ex. A. Registration with a State authority is sufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i). See The W.J. Baker Company v. c/o BAKERTUBULAR.COM, FA 1481278 (Forum Feb. 26, 2013) (finding that Complainant’s registration of the BAKER TUBULAR METAL PRODUCTS mark through its registration with the Kentucky Secretary of State was sufficient to establish rights in the mark). Therefore, the Panel finds that Complainant has rights in the INDUSTRIAL COVERAGE mark per Policy ¶ 4(a)(i).
Complainant asserts that the <industrailcoverage.com> domain name is identical or confusingly similar to the INDUSTRIAL COVERAGE mark, as the name contains the mark in its entirety, with one minor spelling error. Panels have consistently found that transposition of letters in a trademark does not distinguish the domain name from the mark. See Capital One Financial Corp. v. Huang Li Technology Corp c/o Dynadot, FA 1620197 (Forum June 16, 2015) (finding confusing similarity where the respondent misspelled the word “bank” by transposing the letters “a” and “n,” attached the gTLD “.com,” and eliminated spacing with respect to the CAPITAL ONE BANK mark to create the <capitalonebnak.com> domain name.) The Panel notes that the domain name also omits the spacing in the mark and adds the generic top-level domain (“gTLD”) “.com.” The omission of spaces and addition of a gTLD is irrelevant in determining whether the disputed domain name is confusingly similar to an incorporated mark. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). The Panel agrees with Complainant and finds that Respondent’s <industrailcoverage.com> domain name is confusingly similar to Complainant’s INDUSTRIAL COVERAGE mark per 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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent has no rights or legitimate interests in the <industrailcoverage.com> domain name, as Respondent is not commonly known by the disputed domain name. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.). The WHOIS information of record identifies Respondent as “Clark Lienemann.” The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent is not commonly known by the disputed domain name.
Complainant further argues Respondent’s lack of rights or legitimate interests in the disputed domain name is evinced by its failure to use the <industrailcoverage.com> domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent’s domain name does not resolve to an active website. When a respondent is not using the disputed domain name in connection with an active website, such a respondent may not be able to avail itself of Policy ¶¶ 4(c)(i) and (iii). See Kohler Co. v xi long chen, FA 1737910 (Forum Aug. 4, 2017) (”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 <kohler-corporation.com> resolves to an inactive webpage displaying the message “website coming soon!”). Complainant notes Respondent’s domain name resolves to an inactive website. See Compl. Ex. E (displaying, “Future home of something quite cool”). Therefore, the Panel agrees that <industrailcoverage.com> is inactively held and as such is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
Complainant argues that Respondent has registered and uses the <industrailcoverage.com> domain name in bad faith because Respondent attempts to pass itself off as Complainant. Use of a confusingly similar domain name to pass off as complainant to conduct a phishing scheme is evidence of bad faith under Policy ¶ 4(b)(iv). See Qatalyst Partners LP v. Devimore, FA 1393436 (Forum July 13, 2011) (finding that using the disputed domain name as an e-mail address to pass itself off as the complainant in a phishing scheme is evidence of bad faith registration and use). Here, Complainant asserts that Respondent used the disputed domain name as part of an email phishing scheme, holding itself out to be Complainant and Complainant’s president. See Compl. Ex. D. Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <industrailcoverage.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: March 12, 2018
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