The William Carter Company v. Arthur W Shores Jr
Claim Number: FA1807001798370
Complainant is The William Carter Company (“Complainant”), represented by Richard J. Groos of King & Spalding LLP, Texas, USA. Respondent is Arthur W Shores Jr (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cartersinc-careers.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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 24, 2018; the Forum received payment on July 24, 2018.
On July 25, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <cartersinc-careers.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 July 30, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 20, 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@cartersinc-careers.com. Also on July 30, 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 August 22, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson 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 is the largest branded marketer of baby and children’s clothing in the U.S., marketing apparel under two of the most recognized and enduring brands in the nation, CARTER’S and OSHKOSH B’GOSH. Complainant commenced use of the marks at least as early as 1865. Complainant has rights in the CARTER’S mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 65,969, registered Nov. 5, 1907). Respondent’s <cartersinc-careers.com> domain name is identical or confusingly similar to Complainant’s mark as it merely adds the generic terms “inc” and “careers” along with the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <cartersinc-careers.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the 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 domain name as part of an email phishing scheme to pass itself off as Complainant to send fraudulent job-offer emails to unsuspecting users.
Respondent registered and uses the <cartersinc-careers.com> domain name in bad faith. Respondent uses the domain name as part of a fraudulent job posting and email scheme through which Respondent attempts to obtain personal information and possibly money from cashing phony checks from individuals seeking a job with Complainant. Further, Respondent clearly had actual or constructive knowledge of Complainant’s rights in the CARTER’S mark given the longstanding, worldwide fame of the mark, coupled with the numerous trademark registrations.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is The William Carter Company, of Atlanta, GA, USA. Complainant is the owner of the domestic registration for the mark CARTER’S, and several variations thereof constituting the family of CARTER’S marks. Complainant has continuously used the mark since at least as early as 1907, in connection with its provision of baby, and young children’s, apparel products and accessories. Complainant has also been operating in cyberspace since its registration of its principal domain name in 1996 at <carters.com>.
Respondent is Arthur W Shores Jr., of Chicago, IL, USA. Respondent’s registrar’s address is listed as Scottsdale, AZ, USA. The Panel notes that Respondent registered the <cartersinc-careers.com> domain name on or about July 16, 2018.
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 CARTER’S mark through its registration of the mark with the USPTO (e.g. Reg. No. 65,969, registered Nov. 5, 1907). 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) (“There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . 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).”). The Panel here finds that Complainant has established rights in the CARTER’S mark for the purposes of Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <cartersinc-careers.com> domain name is identical or confusingly similar to Complainant’s mark as it merely adds the generic terms “inc” and “careers” along with the “.com” gTLD. The Panel further notes that the domain name adds a hyphen and eliminates an apostrophe. Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶4(a)(i). See Abbott Laboratories v. Miles White, FA 1646590 (Forum Dec. 10, 2015) (holding that the addition of descriptive terms, particularly terms that pertain to complainant’s business, do not adequately distinguish a disputed domain name from complainant’s mark under Policy ¶ 4(a)(i).); see also Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs. Likewise, the absence of spaces must be disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax prohibits them.”); see also Blizzard Entertainment, Inc. v. XINXIU ZENG / haimin liang, FA 1736365 (Forum July 19, 2017) (finding that the addition of punctuation—specifically, a hyphen—did not sufficiently distinguish the disputed domain name from complainant’s registered mark). The Panel here finds that the <cartersinc-careers.com> domain name is confusingly similar to the CARTER’S mark under Policy ¶4(a)(i).
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
Complainant has proven this element.
The Panel recognizes that 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 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). Complainant here has set forth the requisite prima facie case.
Complainant contends that Respondent has no rights or legitimate interests in the <cartersinc-careers.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 “Arthur W Shores Jr” as the registrant. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the CARTER’S mark. Prior panels have used 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 domain name prior to its registration, and Complainant has not given Respondent permission to use the mark in any manner. The Panel here finds that Respondent is not commonly known by the <cartersinc-careers.com> domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent fails to use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use as it attempts to impersonate Complainant to phish for information from consumers via email. Passing off as a complainant to phish for information can evince a failure to make a bona fide offering of goods or services or legitimate noncommercial or fair use. See Microsoft Corporation v. Terrence Green / Whois Agent / Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr. 4, 2016) (finding the respondent’s use of the disputed domain names to send fraudulent emails purportedly from agents of complainant to be neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)). Complainant provides copies of allegedly fraudulent emails, where Respondent appears to use the domain name and congratulates individuals on joining Complainant’s company, while seeking financial information to purportedly purchase equipment. The Panel here finds that Respondent fraudulently attempts to acquire financial information from unsuspecting users under Policy ¶¶ 4(c)(i) and (iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
Complainant has proven this element.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which bad faith may be found. See, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000). The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. See also, e.g., Match.com, LP v. BillZag and NWLAWS.ORG, D2004-0230 (WIPO June 2, 2004). While Complainant has not made any arguments specifically directed to Policy ¶ 4(b) elements, the Panel may still consider Respondent’s actions under a nonexclusive inquiry of Policy ¶ 4(a)(iii).
Complainant argues that Respondent uses the disputed domain name to fraudulently send emails to Complainant’s customers in hopes of receiving financial information. Phishing schemes through fraudulent email communications can evince 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).”). As noted above, Complainant provides copies of some of the allegedly fraudulent emails, where Respondent appears to use the domain name and congratulates individuals on joining Complainant’s company, while seeking financial information to purportedly purchase equipment. The Panel here finds that Respondent’s apparent phishing scheme amounts to bad faith use and registration under the Policy.
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
Complainant has proven this element.
DECISION
As Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <cartersinc-careers.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: Sept. 5, 2018
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