T-Mobile USA, Inc. dba MetroPCS v. Art Briseno
Claim Number: FA1812001821820
Complainant is T-Mobile USA, Inc. dba MetroPCS (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Art Briseno (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <metropcsautoadverts.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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 19, 2018; the Forum received payment on December 19, 2018.
On December 19, 2018, Register.com, Inc. confirmed by e-mail to the Forum that the <metropcsautoadverts.com> domain name is registered with Register.com, Inc. and that Respondent is the current registrant of the name. 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 December 19, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 8, 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@metropcsautoadverts.com. Also on December 19, 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 10, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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 national provider of mobile communications services and services approximately 71.5 million wireless subscribers. Complainant has rights in the MERTOPCS mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,803,097, registered Jan. 6, 2004). Respondent’s <metropcsautoadverts.com> domain name is confusingly similar to Complainant’s mark because it merely adds the descriptive terms “auto adverts” and the generic top-level domain (“gTLD”) “.com” to Complainant’s mark.
Respondent lacks rights or legitimate interest in the <metropcsautoadverts.com> domain name because Respondent is not commonly known by the disputed domain name and Respondent is not affiliated with Complainant nor licensed to use Complainant’s METROPCS mark. Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to pass itself off as Complainant via email in furtherance of phishing.
Respondent registered and uses the <metropcsautoadverts.com> domain name in bad faith. Respondent attempts to disrupt Complainant’s business and attract, for commercial gain, users to the disputed domain name where it uses an email address to pass itself off as an employee of respondent in furtherance of phishing. Finally, Respondent had actual knowledge of Complainant’s rights in the mark at the time of registration and this is evidence of bad faith registration and use.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <metropcsautoadverts.com> domain name.
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 METROPCS mark based on its registration with the USPTO. Registration of a mark with the USPTO is sufficient to establish a complainant’s rights in a mark under Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Complainant provides the Panel with a copy of its registration of the METROPCS mark (e.g. Reg. No. 2,803,097, registered Jan. 6, 2004). The Panel finds Complainant has established rights in the METROPCS mark per Policy ¶ 4(a)(i).
Complainant argues Respondent’s <metropcsautoadverts.com> domain name is confusingly similar to Complainant’s METROPCS mark because Respondent adds the descriptive terms “auto adverts” and the gTLD “.com” to Complainant’s fully incorporated mark. The addition of a descriptive term and a gTLD is insufficient to distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). See Bloomberg Finance L.P. v. Sunny Bhadauria, FA 1786429 (Forum June 7, 2018) (finding the <bloombergquint.org> domain name to be confusingly similar to the complainant’s BLOOMBERG mark, as the name consists of the mark, the added term “quint” (which refers to the complainant’s Indian business partner “Quintillian Media”) and the gTLD “.org”). The Panel finds that the disputed domain name is confusingly similar to Complainant’s mark.
Complainant has proved this element.
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 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 Respondent lacks rights or legitimate interest in the <metropcsautoadverts.com> domain name because Respondent is not commonly known by the disputed domain name nor is Respondent licensed by Complainant to use the METROPCS mark. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by a disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that a respondent is not commonly known by a 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 names per Policy ¶ 4(c)(ii)”). The WHOIS information for the <metropcsautoadverts.com> domain name lists the registrant as “Art Briseno,” and there is no evidence to suggest that Respondent was authorized to use the METROPCS mark for any purpose. The Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant contends Respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <metropcsautoadverts.com> domain name. Complainant argues Respondent instead uses an email associated with the disputed domain name to pass itself off as an employee of Complainant for a phishing scheme. Passing off as a complainant via an email 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) & (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).”). Complainant provides the Panel a copy of a letter displaying Complainant’s METROPCS mark and logo as well as an email address associated with the disputed domain name in the contact information used by Respondent in connection with a phishing scheme. The Panel finds that Respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) & (iii) and Respondent has no rights or legitimate interests in respect to the domain name.
Complainant has proved this element.
Complainant also argues Respondent’s registered and uses the <metropcsautoadverts.com> domain name in bad faith because Respondent disrupts Complainant’s business by using an email address associated with the disputed domain name to pass itself off as Complainant, presumably for commercial gain. Use of an email address associated with a disputed domain name to impersonate a complainant may demonstrate bad faith under 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)”). Complainant provides a copy of a letter in which Respondent displays Complainant’s METROPCS mark and logo and an email address associated with the disputed domain name used in connection with a phishing scheme. This is evidence that Respondent registered and uses the disputed domain name in bad faith under Policy ¶¶ 4(b)(iii) and/or (iv).
Complainant argues Respondent had actual knowledge at the time of registration of the <metropcsautoadverts.com> domain name because Respondent uses an email address associated with the disputed domain name to pass itself off as Complainant. Although panels have generally not regarded constructive notice as sufficient for a finding of bad faith, actual knowledge of Complainant’s mark prior to registering a domain name is adequate to find 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.”); see also 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.”). Complainant argues Respondent’s use of an email associated with the disputed domain name to impersonate Complainant demonstrates Respondent had actual knowledge of Complainant’s rights in the mark. The Panel agrees and finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant has proved this element.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <metropcsautoadverts.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
Dated: January 18, 2019
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