T-Mobile USA, Inc. dba MetroPCS v. Diana Romero / Maurice Mujais / Don Thompson / Jan L Baptista
Claim Number: FA1808001801511
Complainant is T-Mobile USA, Inc. dba MetroPCS (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Diana Romero / Maurice Mujais / Don Thompson / Jan L Baptista (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <metropcsautoswrap.com>, <autoswrapmetropcs.com>, <metrosauto.com>, and <metroautoswrap.com>, registered with Register.com, Inc.
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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 15, 2018; the Forum received payment on August 15, 2018.
On August 15, 2018, Register.com, Inc. confirmed by e-mail to the Forum that the <metropcsautoswrap.com>, <autoswrapmetropcs.com>, <metrosauto.com>, and <metroautoswrap.com> domain names are registered with Register.com, Inc. and that Respondent is the current registrant of the names. Register.com, Inc. has verified that Respondent is bound by the Register.com, Inc. 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 20, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 10, 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@metropcsautoswrap.com, postmaster@autoswrapmetropcs.com, postmaster@metrosauto.com, and postmaster@metroautoswrap.com. Also on August 20, 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.
A timely Response was received and determined to be complete on August 23, 2018.
On August 24, 2018, 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
Each of the disputed domain names were registered within two (2) days of each other, registered with the same registrar, and are all hosted at Weebly, Inc. Additionally, two of the disputed domain names are almost identical, merely reversing the order of the terms “Autos Wrap” and “MetroPCS.” Finally, the registrant used the same privacy service for all three domain names. This is sufficient to find that the domain names were registered by the same domain name holder. See The Valspar Corporation v. Zhou Zhiliang / zhouzhiliang / Zhiliang Zhou / Eric Chow / Visspa Ltd., FA100800133934 (Forum Sept. 28, 2010); see also BBY Solutions, Inc. v. White Apple / Dev Kumar, FA1805001787251 (Forum June 20, 2018).
Consequently, the Panel will rule on all three contested domain names, and the three registrants are collectively referred to as “Respondent”.
Preliminary Issue: Identity Theft
One of the Respondents, Jan Baptista, contends that it has been the victim of identity theft, see below. As of August 24, 2018, the Forum had not received any further response from the named Respondents and proceeded with the Panel appointment. The Panel has taken the following rules and precedent into account in making a determination on not redacting Respondent’s identity.
According to Policy ¶ 4(j), “[a]ll decisions under this Policy will be published in full over the Internet, except when an Administrative Panel determines in an exceptional case to redact portions of its decision.” In Wells Fargo & Co. v. John Doe as Holder of Domain Name <wellzfargo.com>, FA 362108 (Forum Dec. 30, 2004) and Wells Fargo & Co. v. John Doe as Holder of Domain Name <wellsfargossl>, FA 453727 (Forum May 19, 2005), the panels omitted the respondents’ personal information from the decisions, pursuant to Policy ¶ 4(j), in an attempt to protect the respondents who claimed to be victims of identity theft from becoming aligned with acts the actual registrants appeared to have sought to impute to the respondents.).
However, according to Forum Supplemental Rule 15(b), “All requests pursuant to Policy paragraph 4(j) and Rule 16(b) to have a portion of the decision redacted, must be made in the Complaint, the Response, or an Additional Submission that is submitted before the Panel’s decision is published.” (emphasis added). Rule 1 defines “respondent” as “the holder of a domain-name registration against which a complaint is initiated;” and Forum Supplemental Rule 1(d) further defines “the holder of a domain-name registration” as “the single person or entity listed in the WHOIS registration information at the time of commencement.” The Panel notes precedent which holds the registrar-confirmed registrant of a disputed domain (per the WHOIS at commencement of the proceeding) the proper respondent, notwithstanding the possibility that said respondent’s identity was stolen. See, e.g., Banco Bradesco S/A v. Gisele Moura Leite, D2014-0414 (WIPO Apr. 30, 2014).
In the instant case, there has been no request in the Complaint to redact any portion of the decision, nor has there been a Response or an Additional Submission. Consequently, the Panel finds that it is not warranted to redact Respondent’s name and location from the Panel’s decision.
A. Complainant
Complainant states that it is a national provider of mobile communications services with a network reaching more than three hundred (300) million people throughout the United States. Complainant currently serves approximately 71.5 million wireless subscribers through approximately 52,000 total points of distribution, including approximately 13,000 T-Mobile and MetroPCS branded locations and 39,000 third-party and national retailer locations. Complainant’s distribution density in major metropolitan areas provides significant brand exposure and gives customers the convenience of having retail and service locations close to where they live and work. Complainant has rights in the METROPCS mark through its trademark registration in the United States in 2004. Complainant’s MetroPCS business is often referenced using the short form METRO. For example, Complainant has used the tagline EVERYBODY’S MOVING TO METRO since 2012, and has used METRO and METRO-formative sub-brands in connection with its business since 2002, e.g. @METRO (since 2003), MY METRO (since 2007), METRO USA (since 2010), METRO TOTAL PROTECTION (since 2011), METRO CONNECT (since 2002), METROWEB (since 2006), METRONAVIGATOR (since 2009), METROSTUDIO (since 2010), METROMUSIC (since 2012), and others. Through extensive, longstanding use and association of METRO with MetroPCS services, Complaint has established common law rights in the METRO trademark.
Complainant alleges that the disputed domain names are confusingly similar to Complainant’s METROPCS and METRO marks as Respondent merely adds generic and/or descriptive terms (“autos” or “auto wraps”) and a “.com” generic top-level domain (“gTLD”). Respondent cites UDRP precedents to support its position.
According to Complainant, Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not authorized to use Complainant’s METROPCS or METRO marks and is not commonly known by the disputed domain names. Additionally, Respondent is not using the disputed domain names in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the domain names <metropcsautoswrap.com>, <metroautoswrap.com> and <autoswrapmetropcs.com> do not resolve to an active site and while there is no documentary evidence of use of <metropcsautoswrap.com> or <metroautoswrap.com> by Respondent, Respondent has used <autoswrapmetropcs.com> in emails impersonating “Matthew Thompson, Hiring Manager, MetroPCS” in connection with a supposed ad campaign involving auto wraps with the MetroPCS on personal vehicles where the owner of the automobile will supposedly be paid for that use. Based on this fraud, Complainant legitimately fears that Respondent has used or will use <metropcsautoswrap.com> and <metroautoswrap.com> in a similar fashion. The disputed domain name <metrosauto.com> is being used in connection with a site that uses the MetroPCS mark, logos, copyright notice and other images to make it appear to be an official MetroPCS site; the site contains an application form that requests users’ personal information. Respondent cites UDRP precedents to support its position.
Further, says Complainant, Respondent registered and uses the disputed domain names in bad faith. Respondent attempts to disrupt Complainant’s business and attract, for commercial gain, users to the disputed domain names by passing off as Complainant. Respondent also attempts to defraud users through an e-mail phishing scheme associated with the <metropcsautoswrap.com> and <metrosauto.com> domain names. Finally, Respondent had actual knowledge of Complainant’s rights in the METROPCS and METRO mark prior to registering the disputed domain name. Respondent cites UDRP precedents to support its position.
B. Respondent
Respondent states, verbatim:
I received a letter from your company regarding the subject [FA1808001801511] cited above. It further states that it is because of a trade name of ICANNN. It also states that this from T Mobile. I know that your company has sent the letter to the incorrect person. I have no business and I have NEVER EVER DONE BUSINESS WITH T ,MOBILE OR ICANN. I would like a resend letter sent to me as soon as possible. I have never owned a business of any sort. Nor have I established a domain of any sort,
Again it is imperative that you get the correct person. I have mailed this letter to you on today as well. As a caution, I am sending the letter to the FTC, BBB, AGO. I am also seeking counsel because this is s form of mistaken identity and your company did not do any due diligent to ensure you have the correct party.
Complainant owns the marks METRO and METROPCS and uses them to market mobile telephony services.
Complainant’s rights in its marks date back to at least 2004.
The disputed domain names were registered in July 2018.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
One of the disputed domain names has been used to send e-mails impersonating an employee of Complainant for a fraudulent scheme. Another disputed domain name resolves to a website that displays Complainant’s mark, logos, copyright notice and includes an application form in which users are requested to provide personal data. Two of the disputed domain names are not being used.
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.
Complainant claims rights in the METROPCS mark based upon registration in the United States. This is sufficient to establish rights in that mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark).
Complainant also has common law rights in the METRO mark extending back to 2002: it uses the shorthand, METRO mark to reference Complainant’s METROPCS mark in connection with its products and service. Complainant provides screenshots of its advertisements, websites, and other related formats which use the METRO mark. Common law rights may be established through a sufficient showing that the mark has garnered secondary meaning. See loanDepot.com, LLC v. sm goo, FA 1786848 (Forum June 12, 2018) (“Complainant’s demonstration of continuous use in commerce and accompanying promotion and media recognition are adequate to sustain its claim of common law rights in the MELLO and MELLO SOLAR marks.”). Accordingly, the Panel finds that Complainant has sufficiently established common law rights in the METRO mark per Policy ¶ 4(a)(i).
The disputed domain names are confusingly similar to the METROPCS and METRO marks because they incorporate one of the marks and merely add the descriptive terms “auto” or “autoswrap,” and a “.com” gTLD to the mark. Adding descriptive terms and/or a gTLD to a complainant’s mark is not be sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See T-Mobile, Inc. d/b/a MetroPCS v Domain Admin/Whois Privacy Corp. FA 1713329 (Forum Mar. 9, 2017)(finding the addition of the descriptive word “account” in <metropcsaccount.com> did not distinguish the domain from the METROPCS trademark); see also Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).). The Panel therefore finds that the <metropcsautoswrap.com>, <autoswrapmetropcs.com>, <metrosauto.com>, and <metroautoswrap.com> domain names are confusingly similar to the METROPCS and METRO marks per Policy ¶ 4(a)(i).
Respondent is not authorized to use Complainant’s METROPCS or METRO marks. Respondent is not commonly known by the disputed domain name: relevant WHOIS information may be used to determine whether a respondent is commonly known by 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). Further, lack of authorization to use a complainant’s mark may evince a finding that a respondent has no rights or legitimate interests in the disputed domain name. See 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)”). Here, the WHOIS information for the disputed domain names lists Respondent as “Jan L Baptista,” “Don Thompson,” “Maurice Mujais,” and “Diana Romero.” Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names per Policy ¶ 4(c)(ii).
Respondent uses the <autoswrapmetropcs.com> and <metrosauto.com> domain names to pass off as Complainant in furtherance of phishing. Specifically, Respondent uses the <autoswrapmetropcs.com> to send e-mails impersonating “Matthew Thompson, Hiring Manager, MetroPCS” in connection with a supposed ad campaign involving auto wraps where the owner of the automobile will be paid for that use. The customer who was the target of this scam contacted Complainant as the funds were charged to her bank, resulting in the closure of her account. And the resolving website for the <metrosauto.com> domain name passes off as Complainant and contains a form that requests users’ personal information. Use of a disputed domain names to pass off in furtherance of phishing is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“Passing off as a complainant through e-mails is evidence that a respondent lacks rights and legitimate interests under Policy ¶¶ 4(c)(i) & (iii).”). Therefore, the Panel finds that Respondent is not using the <autoswrapmetropcs.com> and <metrosauto.com> domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Respondent is using the <metrosauto.com> domain name to resolve to a website featuring Complainant’s logos, copyright notices, and other images so as to purport to be Complainant’s website. Using a disputed domain name to pass off and mimic a complainant is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business). As such, the Panel finds that Respondent fails to use the <metrosauto.com> domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
The disputed domain names <metropcsautoswrap.com> and <metroautoswrap.com> domain names are not being used. Inactive holding of a domain name does not demonstrate rights or legitimate interests in the name per Policy ¶¶ 4(c)(i) or (iii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name). The Panel therefore finds that Respondent does not have rights or legitimate interests in the <metropcsautoswrap.com> and <metroautoswrap.com>domain name per Policy ¶¶ 4(c)(i) or (iii).
For all the above reasons, the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain names.
Respondent has not presented any plausible explanation for its use of Complainant’s marks. 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 names.
Indeed, as already noted, Respondent uses the <autoswrapmetropcs.com> domain name to pass off as Complainant in furtherance of phishing. The <metrosauto.com> domain name is also used to phish for users’ personal data. Such use of a domain can be used to support a finding of bad faith registration and use per Policy ¶ 4(b)(iii) and/or (iv). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the <abbuie.com> domain name to impersonate Complainant’s CEO. Such use is undeniably disruptive to Complainant’s business and demonstrates bad faith pursuant to Policy ¶ 4(b)(iii), and/or Policy ¶ 4(b)(iv)”). The Panel therefore finds Respondent to have registered and used the <autoswrapmetropcs.com> and <metrosauto.com> domain names in bad faith per Policy ¶ 4(b)(iv).
Furthermore Respondent’s use of the <metrosauto.com> domain name to pass off as Complainant demonstrates that Respondent registered and used the domain name in bad faith. Use of a domain name to create a false impression of affiliation with a complainant, presumably for commercial gain, is behavior indicative of bad faith registration and use per Policy ¶ 4(b)(iv). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”). The Panel therefore finds that Respondent registered and used the <metrosauto.com> domain name in bad faith per Policy ¶ 4(b) (iv).
The disputed domain names <metropcsautoswrap.com> and <metroautoswrap.com> domain names are not being used. According to paragraph 3.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Jurisprudential Overview 3.0): “From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.”
In the present case, Complainant’s trademark is well known. It is difficult to envisage any use of the disputed domain names that would not violate the Policy, see Morgan Stanley v. TONY / shentony, FA 1637186 (Forum Oct. 10, 2015) (“Respondent registered the disputed domain name [MORGANSTANLEY.ONLINE] in bad faith because . . . it is difficult to envisage any use of the disputed domain name that would not violate the Policy”); see also Singapore Airlines Ltd. v. European Travel Network, D2000-0641 (WIPO Aug. 29, 2000) (where selection of disputed domain name is so obviously connected to complainant’s well-known trademark, use by someone with no connection with complainant suggests opportunistic bad faith); see also Starwood Hotels & Resorts Worldwide, Inc., Sheraton Int’l IP, LLC, Westin Hotel Mgmt., L.P. v. Jingjing Tang, D2014-1040 (WIPO Aug. 19, 2014) (“The Panel finds that the [WESTIN] Marks are not such that could legitimately be adopted by traders other than for the purpose of creating an impression of an association with Complainant. Thus, the Panel concludes that the disputed domain names were registered in bad faith”).
A privacy service was used to register the disputed domain names, that is, Respondent concealed its identity. In the Response, Respondent alleges identity theft, that is, the use of false contact details. Given these circumstances, the Panel finds that, in this particular case, a finding of bad faith use can be inferred even though the disputed domain names are not being actively used. See Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000).
Finally, Respondent had actual knowledge of Complainant's rights in the METROPCS mark because the resolving website for the <metrosauto.com> domain name displays Complainant’s mark, logo, and copyright notice. The Panel recalls that any arguments of bad faith based on constructive notice are irrelevant because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). However, actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the METROPCS mark and thus registered the <metrosauto.com> domain name in bad faith.
For all the above reasons, the Panel finds that Respondent registered and is using the disputed domain names in bad faith in the sense of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <metropcsautoswrap.com>, <autoswrapmetropcs.com>, <metrosauto.com>, and <metroautoswrap.com> domain names be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: August 24, 2018
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