Layfield Group Ltd. v. try sign
Claim Number: FA1902001829896
Complainant is Layfield Group Ltd. (“Complainant”), Canada. Respondent is try sign (“Respondent”), Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <layfieldgr0up.com>, registered with Google 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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 14, 2019; the Forum received payment on February 14, 2019.
On February 18, 2019, Google LLC confirmed by e-mail to the Forum that the <layfieldgr0up.com> domain name is registered with Google LLC and that Respondent is the current registrant of the name. Google LLC has verified that Respondent is bound by the Google 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 February 26, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 18, 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@layfieldgr0up.com. Also on February 26, 2019, 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 March 19, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, 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
i) Complainant is a Manufacturer, Fabricator, Distributor & Installer with over 36 years of international experience, of a diverse range of construction, flexible packaging and environmental products, including geosynthetic floating cover systems, geomembrane containment products, water control baffle systems, vapour barriers, design build services, polyethylene film, sheeting and printed & plain flexible packaging. Complainant has rights in the LAYFIELD GROUP mark as it is the name of Complainant’s company. See Amend. Compl. Ex. 1. The disputed domain name is confusingly similar to Complainant’s mark as it changes the letter “o” in the mark to the number “0.”
ii) Respondent has no rights or legitimate interests in the disputed domain name. There can be no clear case for this domain to legitimately be used for legitimate commercial or personal use.
iii) Respondent registered and uses the disputed domain name in bad faith. Respondent uses the disputed domain name to engage in an email phishing scam targeting Complainant’s customers. See Compl. Exs. 2-6.
B. Respondent
Respondent did not submit a response in this proceeding.
1. Respondent registered the disputed domain name on February 11, 2019.
2. Complainant has established common law rights in the LAYFIELD GROUP mark.
3. Complainant provides various exhibits which include emails between Complainant and a customer, a copy of a fax transmission, and a complaint referral that Complainant filled out with the FBI.
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 LAYFIELD GROUP mark as it is the name of Complainant’s company. A complainant does not need to register a trademark with a governmental authority to have valid rights in the mark. See Psyonix Inc. v. robert gray / notpsyonix, FA 1759780 (Forum Jan. 3, 2018) (“Policy ¶ 4(a)(i) does not require a complainant to own a trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”). Panels may find that a complainant has common law rights in a mark even where the complainant does not specifically allege common law rights. See Lokai Holdings, LLC v. Domain Admin / Whois Privacy Corp., FA 1763598 (Forum Jan. 22, 2018) (“While Complainant does not specifically argue that it has common law trademark rights in FIND YOUR BALANCE, the Panel finds Complainant’s evidence infers that the Complainant has acquired secondary meaning within the FIND YOUR BALANCE mark.”). Here, Complainant provides a copy of its “Certificate of Amendment” which shows that it changed its name to “Layfield Group Limited” on April 1, 2001. See Amend. Compl. Ex. 1. Complainant does not provide any other argument or evidence of having acquired a secondary meaning. However, Complainant has provided the link of Complainant's website where the Panel finds the fact that:
i) Complainant first came into the business in 1950 when it only dealt with fabricated plastic. In 1978, the current owners took over the company and decided to pursue a more aggressive course in terms of expansion. Complainant has continued to adapt to the changing results. Complainant Layfield has focused on long-term growth. Now, Complainant strategically invests in three separate business units: Construction Products, Environmental Products, and Flexible Packaging. Each of them has its own specialized market segments that have grown over time. Complainant is deeply rooted in the family values concerning high ethical standards and commitment;
ii) Complainant was recognized for overall business performance and sustained growth with the prestigious Canada’s Best Managed Companies designation. The 2019 Best Managed program award winners are amongst the best-in-class of Canadian owned and managed companies with revenues over $15 million demonstrating strategy, capability and commitment to achieve sustainable growth; and
iii) Complainant is celebrating its 40th anniversary as a leading manufacturer, fabricator and installer of high performance geomembranes, specialty geosynthetics and custom packaging solutions. During the past 40 years Complainant has built a tradition of innovation, market diversification, geographic expansion and employee development. Complainant continues to be at the forefront of providing unique, innovative and sustainable products that protect our communities, families and environment. Complainant has built its success on its deeply rooted family values concerning high ethical standards and a commitment to excellence.
As such, the Panel finds that Complainant has established common law rights in the LAYFIELD GROUP mark under a Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <layfieldgr0up.com> domain name is confusingly similar to Complainant’s mark as it changes the letter “o” in the mark to the number “0.” The Panel also sees that the disputed domain name adds the “.com” generic top-level domain and finds that similar changes in a complainant’s mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See Vanguard Trademark Holdings USA LLC v. Shuai Wei Xu / Xu Shuai Wei, FA 1784238 (Forum June 1, 2018) (“Respondent arrives at each of the disputed domain names by merely misspelling each of the disputed domain names and adding the gTLD ‘.com.’ This is insufficient to distinguish the disputed domain names from Complainant’s trademark.”). The Panel therefore finds that the disputed domain name is confusingly similar to the LAYFIELD GROUP 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), 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 contends that Respondent has no rights or legitimate interests in the disputed domain name; there can be no clear case for this domain to legitimately be used for legitimate commercial or personal use.
Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by a disputed domain name. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”). The WHOIS information of record identifies the registrant of the disputed domain name as “try sign,” and no information on the record indicates Respondent was authorized to register a domain name incorporating Complainant’s mark. The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the disputed domain name.
Complainant claims that Respondent uses the disputed domain name to engage in an email phishing scam targeting Complainant’s customers. Complainant provides various exhibits which include emails between Complainant and a customer, a copy of a fax transmission, and a complaint referral that Complainant filled out with the FBI. See Compl. Exs. 2-6.
Using a confusingly similar domain name to phish for personal or financial information may not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). The Panel finds that Respondent’s lack of rights or legitimate interests in the disputed domain name is demonstrated by its failure to use the name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the at-issue domain name to pose as Complainant’s CEO by means of email addresses at the confusingly similar domain name in an attempt to determine Complainant’s ability to process a transfer. Using the domain name in this manner is neither a bona fide offering of goods and services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)”).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
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). As 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 claims that Respondent uses the disputed domain name to engage in an email phishing scam targeting Complainant’s customers. 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 Zoetis Inc. and Zoetis Services LLC v. VistaPrint Technologies Ltd, FA1506001623601 (Forum July 14, 2015) (“Respondent’s attempt to use the <zoietis.com> domain name to phish for personal information in fraudulent emails also constitutes bad faith pursuant to Policy ¶ 4(a)(iii).”). The Panel recalls that Complainant provides various exhibits which include emails between Complainant and a customer, a copy of a fax transmission, and a complaint referral that Complainant filled out with the FBI. See Compl. Exs. 2-6. As such, the Panel finds that Respondent’s apparent phishing scheme constitutes bad faith use 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 <layfieldgr0up.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: March 27, 2019
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