Tealium, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA1812001819807
Complainant is Tealium, Inc. (“Complainant”), represented by John Paul Oleksiuk of Cooley LLP, California, USA. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <collecttealiumiq.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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 6, 2018; the Forum received payment on December 6, 2018.
On December 7, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <collecttealiumiq.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 December 12, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 2, 2019 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@collecttealiumiq.com. Also on December 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 January 6, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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 a leading developer of enterprise tag management, customer data platform and data management solutions. Complainant has rights in the TEALIUM trademark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,380,057, registered Aug. 6, 2013). Since at least as early as 2011, the Complainant has been using the trademark TEALIUM IQ as the name of Complainant’s flagship offering. The Tealium IQ platforms enable users control and manage their customer data and vendors.
Respondent’s <collecttealiumiq.com> domain name is virtually identical and confusingly similar to Complainant’s trademark/s as it merely adds the descriptive and non-distinctive term “collect.”
Respondent has no rights or legitimate interests in the <collecttealiumiq.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 trademark. 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 has made no attempt to develop a website into a genuine use in connection with an offering of goods and services.
Further, Complainant, referring to the fact that the Complainant has used the word ”collect” as a subdomain in the URL collect.tealiumiq.com since February 9, 2011, states that the Respondent could only have registered the domain name <collecttealiumiq.com> with an intent to misdirect Complainant’s users into providing Respondent with sensitive data.
Respondent registered and uses the <collecttealiumiq.com> domain name in bad faith. Respondent uses the domain name in connection with a phishing scheme. Additionally, given the fame and distinctiveness of the TEALIUM trademark, Respondent must have registered the domain name with knowledge of Complainant’s rights in the trademark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the following U.S. trademark registrations:
No. 4,380,057 TEALIUM, registered August 6, 2013 for services in class 35,
No. 4,380,058 TEALIUM, registered August 6, 2013 for services in class 42
Respondent registered the <collecttealiumiq.com> domain name on September 10, 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.”).
The Complainant claims rights in the TEALIUM trademark through its registration of the mark with the USPTO (e.g. Reg. No. 4,380,057, registered August 6, 2013). 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) (stating, “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).”). Accordingly, the Panel finds that Complainant has established rights in the TEALIUM trademark for the purposes of Policy ¶ 4(a)(i).
The Complainant also claims rights in TEALIUM IQ as a trademark used since 2011. The only evidence of such use provided by the Complainant, is a declaration signed by the Chief Marketing Officer of the Complainant. The Panel would normally not fully accept only such statement as evidence of trademark rights. However, as the Respondent failed to respond, the Panel can at least accept the statement as some form of indication that the Complainant has some level of common law rights also to the combined trademark TEALIUM IQ.
Complainant next argues that Respondent’s <collecttealiumiq.com> domain name is virtually identical and confusingly similar to Complainant’s trademark as it merely adds the descriptive and non-distinctive term “collect.” The Panel notes that <collecttealiumiq.com> also appends the letters “iq” and the “.com” generic top-level domain (“gTLD”) and finds that similar changes in a registered trademark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy).
The Panel therefore finds that the <collecttealiumiq.com> domain name is confusingly similar to the TEALIUM and TEALIUM IQ trademarks under Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). 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 contends that Respondent has no rights or legitimate interests in the <collecttealiumiq.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).
In this case, the WHOIS identifies “Carolina Rodrigues / Fundacion Comercio Electronico” as the registrant. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the TEALIUM trademark. The Panel considers 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).
Accordingly, the Panel agrees that Respondent is not commonly known by the <collecttealiumiq.com> domain name under Policy ¶ 4(c)(ii).
Next, Complainant claims that Respondent has made no attempt to develop a website into a genuine use in connection with an offering of goods and services. Failure to make active use of a confusingly similar domain name can evince a lack of rights and legitimate interests under Policy ¶¶ 4(c)(i) and (iii). See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”).
Complainant provides screenshot evidence of the resolving webpage, which contains “Related Links” such as “Alliums” and “Iq Tests.” Using a domain name to display hyperlinks can also indicate a lack of rights and legitimate interests. See Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (”Respondent’s use of <edcorlando.xyz> also does not qualify as a bona fide offering… the <edcorlando.xyz> domain name resolves to a site containing pay-per-click hyperlinks and advertisements… Since these kinds of advertisements generate revenue for the holder of a domain name, they cannot be noncommercial; further, they do not qualify as a bona fide offering.”).
Accordingly, the Panel finds that Respondent’s use of the domain name fails to establish rights and legitimate interests in the domain name per Policy ¶¶ 4(c)(i) and/or (iii).
Further, Complainant claims that Respondent could only have registered the domain name with an intent to misdirect Complainant’s users into providing Respondent with sensitive data. Complainants may use phishing attempts to evince a failure to make a bona fide offering of goods or services or legitimate noncommercial or fair use. See Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
The Panel finds that Respondent’s use or potential use the disputed domain name in connection with a phishing scheme fails to confer rights and legitimate interests in the domain name <collecttealiumiq.com>.
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, e.g., Match.com, LP v. BillZag and NWLAWS.ORG, D2004-0230 (WIPO June 2, 2004). While Complainant has not made any arguments that would fit within the bounds of Policy ¶ 4(b) elements, the Panel therefore considers Respondent’s actions under a nonexclusive inquiry of Policy ¶ 4(a)(iii).
Complainant argues that Respondent registered and uses the <collecttealiumiq.com> domain name in bad faith as Respondent fails to make any legitimate use of the domain name. Failing to use a confusingly similar domain name can evince bad faith under Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). Using a domain name to display hyperlinks can also provide evidence of bad faith. See 3M Company v. Nguyen Hoang Son / Bussiness and Marketing, FA1408001575815 (Forum Sept. 18, 2014) (finding that the respondent’s use of the disputed domain name to host sponsored advertisements for Amazon, through which the respondent presumably profited, indicated that the respondent had used the disputed domain name in bad faith).
The Panel agrees that Respondent’s failure to use the domain name for a legitimate purpose demonstrates Respondent’s bad faith under the Policy.
Further, Complainant claims that Respondent uses the <collecttealiumiq.com> domain name in connection with a phishing scheme, as it mirrors the URL collect.tealiumiq.com, used by the Complainant as an API endpoint for consumer data collection. Using a confusingly similar domain name to phish for personal or financial information can provide evidence of bad faith registration and use within the meaning of Policy ¶ 4(a)(iii). See Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA1506001625750 (Forum July 17, 2015) (“Respondent uses the <klabzuba-oilgas.com> domain to engage in phishing, which means Respondent registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii).”). Complainant provides an affidavit from its Senior Director of Information Security, who alleges that in his experience, registering domain names of this sort can only be done for the purpose of phishing for users’ information. The Panel concludes that Complainant sufficiently alleged Respondent’s bad faith per Policy ¶ 4(a)(iii).
Further, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the TEALIUM trademark at the time of registering the <collecttealiumiq.com> domain name. Actual knowledge of a complainant's rights in a mark prior to registering a confusingly similar domain name can evince bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). Complainant contends that given the fame and distinctiveness of the TEALIUM mark, Respondent must have registered the domain name with knowledge of Complainant’s rights in the mark.
Based on the use of the disputed domain name, and the combination of the TEALIUM trademark with other words related to the Complainants services, the Panel agrees with Complainant and finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith under 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 <collecttealiumiq.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: January 11, 2019
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