Watermark Securities, Inc. v. Naipol Naipol
Claim Number: FA1808001799774
Complainant is Watermark Securities, Inc. (“Complainant”), represented by Scott Kareff of Schulte Roth & Zabel LLP, New York, USA. Respondent is Naipol Naipol (“Respondent”), Thailand.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <watermarksecuritiesinc.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 2, 2018; the Forum received payment on August 2, 2018.
On August 3, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <watermarksecuritiesinc.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 August 7, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 27, 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@watermarksecuritiesinc.com. Also on August 7, 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 29, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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. Respondent’s <watermarksecuritiesinc.com> domain name is confusingly similar to Complainant’s WATERMARK mark.
2. Respondent does not have any rights or legitimate interests in the <watermarksecuritiesinc.com> domain name.
3. Respondent registered and uses the <watermarksecuritiesinc.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Watermark Securities, Inc., holds common law rights in the WATERMARK SECURITIES, INC. mark dating back to at least 2007.
Respondent registered the <watermarksecuritiesinc.com> domain name on May 2, 2018, and uses it to pass off as Complainant in furtherance of a phishing 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.”).
Since the <watermarksecuritiesinc.com> domain name was registered before Complainant filed a trademark application with the U.S. Patent and Trademark Office for the WATERMARK SECURITIES, INC. mark, its rights are based in common law for purposes of Policy ¶ 4(a)(i). Complainant claims common law rights in the mark dating back to the first use of the mark in commerce on October 21, 2007. Common law rights are typically found through a showing that a secondary meaning in the mark has been created in the minds of the public. See AOL LLC v. DiMarco, FA 1275978 (Forum Sept. 9, 2009) (“‘Secondary meaning’ is acquired when ‘in the minds of the public, the primary significance of a product feature . . . is to identify the source of the product rather than the product itself.’”). Complainant states that it has continuously used the WATERMARK SECURITIES, INC. mark since its incorporation in Delaware on June 4, 1991. Traditionally, a secondary meaning is also established by evidence of complainant’s sales figures, expenditures, and any other evidence indicating popularity in the mark as related to complainant. See Gourmet Depot v. DI S.A., FA 1378760 (Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”). Complainant provides historical trade volume for the period of January 1, 2014 through June 30, 2018, and demonstrates that it is registered with the United States Securities and Exchange Commission, and is a member of the Financial Industry Regulatory Authority. The Panel finds that Complainant’s contentions are sufficient for purposes of Policy ¶ 4(a)(i), and finds that Complainant has established common law rights in the WATERMARK SECURITIES, INC. mark.
Respondent’s <watermarksecuritiesinc.com> domain name is identical to Complainant’s mark because it wholly incorporates the WATERMARK SECURITIES, INC. mark and only incorporates a gTLD. Respondent also removes the spacing and punctuation from Complainant’s mark. Similar changes to a complainant’s mark in a domain name have been found insufficient to withstand a test for confusing similarity pursuant to Policy ¶ 4(a)(i). See Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017) (“When a respondent’s domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD), “.com”, then the Panel may find that the disputed domain name is identical to Complainant’s mark.”); see also Research Now Group, Inc. v. Pan Jing, FA 1735345 (Forum July 14, 2017) (“The … elimination of spacing [is] considered irrelevant when distinguishing between a mark and a domain name.”); see also Dawson v. Doctor, FA 521036 (Forum Sept. 1, 2005) (finding that the <drgem.com> domain name was identical to Complainant’s DR. GEM mark because “…the domain name fully incorporates the mark and merely removes the period after the abbreviation “DR.”). Accordingly, the Panel finds that Respondent’s <watermarksecuritiesinc.com> domain name is confusingly similar to Complainant’s WATERMARK SECURITIES, INC. mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 lacks rights and legitimate interests in the <watermarksecuritiesinc.com> domain name because Respondent is not commonly known by the disputed domain name and is not authorized by Complainant to use the WATERMARK SECURITIES, INC. mark. The WHOIS information of record identifies Respondent as “Naipol Naipol.” Therefore, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name); see also Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”).
Complainant further alleges that Respondent fails to use <watermarksecuritiesinc.com> domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Complainant shows that Respondent uses the disputed domain name to demand a ”refundable” security bond of $60,000 from Complainant’s customers. The Panel finds that this use is not a bona fide offering of goods and services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Emerson Electric Co. v. Adilcon Rocha, FA 1735949 (Forum July 11, 2017) (finding that respondent’s attempt to pass off as complainant through emails does not constitute a bona fide offering of goods or services and, as such, respondent lacked rights or legitimate interests in the disputed domain name).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant demonstrates that Respondent registered and uses the <watermarksecuritiesinc.com> domain in bad faith in an attempt to pass off as Complainant, in furtherance of a phishing scheme for its own commercial gain. Use of a domain name to pass off as a complainant in furtherance of a phishing scheme is evidence of bad faith use and registration per 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 per Policy ¶ 4(b)(iv)). Accordingly, the Panel finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant claims that, due to Respondent’s use of the mark and the disputed domain name to pass off as Complainant and to conduct a phishing scheme directed at Complainant’s customers, Respondent had actual knowledge of Complainant’s rights in the WATERMARK SECURITIES, INC. mark prior to registration of the disputed domain name. The Panel agrees and finds that Respondent had actual knowledge of Complainant’s rights in the mark prior to registration, which constitutes further bad faith under Policy ¶ 4(a)(iii). See Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum Jan. 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.”).
The Panel finds that 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 <watermarksecuritiesinc.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: August 30, 2018
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