GRF Services Limited v. Super Privacy Service LTD c/o Dynadot
Claim Number: FA1811001817534
Complainant is GRF Services Limited (“Complainant”), represented by Tore T. DeBella of Drinker Biddle & Reath LLP, District of Columbia, USA. Respondent is Super Privacy Service LTD c/o Dynadot (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <grfservices.com>, registered with Dynadot 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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 21, 2018; the Forum received payment on November 21, 2018.
On November 22, 2018, Dynadot Llc confirmed by e-mail to the Forum that the <grfservices.com> domain name is registered with Dynadot Llc and that Respondent is the current registrant of the name. Dynadot Llc has verified that Respondent is bound by the Dynadot 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 27, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 17, 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@grfservices.com. Also on November 27, 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 December 19, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, 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
Complainant, GRF Services Limited, provides business management services to insurance and reinsurance companies. Complainant has common law rights in the GRF SERVICES mark based on its use of the mark in commerce since 2007. Respondent’s <grfservices.com> domain name, registered on May 26, 2017, is confusingly similar to Complainant’s mark because Respondent wholly incorporates the GRF SERVICES mark in the domain name and adds a “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <grfservices.com> domain name because Respondent is not commonly known by the disputed domain name and is not authorized or permitted to use Complainant’s mark in any fashion. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or a legitimate noncommercial or fair use. Rather, Respondent inactively holds the disputed domain and uses the domain name in connection with phishing and/or the distribution of malware.
Respondent registered and uses the <grfservices.com> domain name in bad faith because Respondent uses the domain to distribute malware. Additionally, Respondent hides its identity using a privacy service and has ignored Complainant’s attempts at contact.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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 the domain name; and
(3) the domain name has been registered or is being used 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 common law rights in the GRF SERVICES mark based on its use of the mark in commerce since 2007. Common law rights are sufficient under Policy ¶ 4(a)(i), and can be established through evidence that a mark has acquired secondary meaning. See Marquette Golf Club v. Al Perkins, 1738263 (Forum July 27, 2017) (finding that Complainant had established its common law rights in the MARQUETTE GOLF CLUB mark with evidence of secondary meaning, including “longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising.”). Here, Complainant provides evidence of its business registration and business activities including various business reports, customer invoices, and third-party business profiles. Therefore, the Panel concludes that Complainant has demonstrated that it owns common law rights in the GRF SERVICES mark under Policy ¶ 4(a)(i).
Next, Complainant contends that Respondent’s <grfservices.com> domain name is confusingly similar to Complainant’s mark because Respondent wholly incorporates the GRF SERVICES mark in the domain name and adds a gTLD. The mere addition of a gTLD is insufficient to distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). See 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.”). Here, Respondent wholly incorporates the GRF SERVICES mark in the domain and adds a “.com” gTLD which does not distinguish the domain name from the mark or otherwise reduce the confusing similarity therewith. In light of this, the Panel concludes that the <grfservices.com> domain name is identical or confusingly similar to Complainant’s GRF SERVICES mark under 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). Should it succeed in this effort, the burden then shifts to Respondent to show that 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 <grfservices.com> domain name because Respondent is not authorized or permitted to use Complainant’s GRF SERVICES mark and it is not commonly known by the disputed domain name. Where a response is lacking, relevant WHOIS information may be used to identify the respondent per Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Additionally, lack of authorization from a complainant to use its marks may be further evidence that a respondent is not commonly known by a disputed domain name. See Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”). The Panel note that the WHOIS record for the <grfservices.com> domain name identifies Respondent as “Super Privacy Service LTD c/o Dynadot,” and no information in the record shows that Respondent is known otherwise, that it is authorized to use Complainant’s mark, or that it is commonly known by the disputed domain. Accordingly, the Panel concludes that Respondent lacks rights and legitimate interests in the <grfservices.com> domain name under Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent lacks rights and legitimate interests in the <grfservices.com> domain name because Respondent inactively holds the domain. Inactive holding of a disputed domain name may evince a lack of rights and legitimate interests under Policy ¶ 4(a)(ii). See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Forum Apr. 9, 2007) (“Respondent’s failure to associate content with its disputed domain name evinces a lack of rights and legitimate interests pursuant to Policy ¶ 4(a)(ii).”). Here, Complainant claims that the disputed domain name does not resolve to an active website, but does not provide evidence for this contention such as a screenshot of the page. However, the Panel has independently sought to browse to the <grfservices.com> domain name and confirmed that no substantive content results from such action. In the absence of any response or other submission by the Respondent, the Panel finds Complainant’s assertions plus the Panel’s own investigation to be sufficient and it concludes that Respondent lacks rights and legitimate interests in the <grfservices.com> domain name under Policy ¶ 4(c)(i).
Further, Complainant argues that Respondent uses the <grfservices.com> domain name in connection with phishing or the distribution of malware. Such use may evince a lack of rights and legitimate interests in a domain under Policy ¶ 4(a)(ii). See Baker v. J M, FA 1259254 (Forum June 12, 2009) (concluding that the hosting of a virus that activates when an Internet user accesses the resolving website does not demonstrate rights and legitimate interests in a disputed domain name under Policy ¶ 4(a)(ii); see also Morgan Stanley v. Zhange Sheng Xu / Zhang Sheng Xu, FA1501001600534 (Forum Feb. 26, 2015) (“The Panel agrees that the respondent’s apparent phishing attempt provides further indication that the respondent lacks any rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”). Here, Complainant provides screenshots from third-party threat detection services indicating that the IP address associated with the disputed domain name is malicious and has been “blacklisted.” While this evidence does not specify the reason for such characterization, the Panel nevertheless finds Complainant’s evidence sufficient to show that the domain name is being used for some manner of nefarious activity.
Finally, there is no evidence in the record to suggest that the Respondent is making a legitimate or fair use of the <grfservices.com> domain name under Policy ¶ 4(c)(iii). As the Respondent has provided no response or other submission, and as there is nothing contradictory in any of the evidence submitted in this case regarding the meaning of the <grfservices.com> domain name or whether it is specifically targeting Complainant’s GRF SERVICES mark, the Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true.
Thus, the Panel concludes that Respondent lacks rights and legitimate interests in the <grfservices.com> domain name under Policy ¶ 4(a)(ii).
While Complainant does not make any contentions that fall within the articulated provisions of Policy ¶ 4(b), the Panel notes that these provisions are not exclusive and are meant to be merely illustrative of circumstances that can give rise to a finding of bad faith. A respondent’s bad faith may be demonstrated by ancillary allegations considered under the totality of the circumstances in a given case. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith).
Complainant argues that Respondent registered and uses the <grfservices.com> domain name in bad faith because Respondent uses the domain to distribute malware, for phishing, or for some other malicious purpose. Use of a disputed domain for malicious purposes may evince bad faith under Policy ¶ 4(a)(iii). See Twitter, Inc. v. Kiribati Media / Kiribati 200 Media Limited, FA1502001603444 (Forum Mar. 19, 2015) (“Using the disputed domain name to download malicious software into unsuspecting viewers’ computers evidences Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). The Panel notes that Complainant has submitted evidence that third-party services have identified the IP address associated with the disputed domain name as malicious. As no response or other submission has been made by the Respondent the Panel finds Complainant’s evidence to be sufficient. It is therefore determined that Respondent registered and uses the <grfservices.com> domain name in bad faith under Policy ¶ 4(a)(iii).
Finally, Complainant alleges that Respondent fails to actively use the disputed domain name as there is no website associated therewith. Inactively holding a domain name may be evidence of bad faith per Policy ¶ 4(a)(iii). See Marsh Supermarkets Company, LLC, formerly known as Marsh Supermarkets, Inc. v. Choi Sungyeon, FA1312001532854 (Forum Feb. 25, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <marshsupermarkets.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii) because Respondent has failed to make an active use of the disputed domain name.”) Although Complainant does not provide a screenshot of the webpage (or lack of one) that resolves from the disputed domain name the Panel has independently sought to navigate to the <grfservices.com> domain name and found it to be non-resolving. Accordingly, the Panel agrees that Respondent inactively holds the disputed domain name under Policy ¶ 4(a)(iii) and that such inactivity supports a finding of bad faith registration and use.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <grfservices.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: December 20, 2018
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