Square, Inc. v. rajiv
Claim Number: FA1502001606781
Complainant is Square, Inc. (“Complainant”), represented by Alexander J.A. Garcia of Perkins Coie LLP, Washington, USA. Respondent is rajiv (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <square-support.net>, registered with BigRock Solutions Ltd.
The undersigned certifies she acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the Forum electronically February 25, 2015; the Forum received payment February 25, 2015.
On February 26, 2015, BigRock Solutions Ltd confirmed by e-mail to the Forum that the <square-support.net> domain name is registered with BigRock Solutions Ltd and that Respondent is the current registrant of the name. BigRock Solutions Ltd verified that Respondent is bound by the BigRock Solutions Ltd registration agreement and 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, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 18, 2015, 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@square-support.net. Also on February 26, 2015, 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 27, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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 issues 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.
Complainant’s Contentions in this Proceeding:
Complainant registered the SQUARE mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,917,735, registered Feb. 8, 2011). The mark is used on or in connection with hardware and software for processing credit card, debit card, and gift card transactions via mobile devices. The <square-support.net> domain name is confusingly similar to the SQUARE mark because it contains the entire mark and adds a hyphen, a generic term descriptive of the services offered by Complainant, and the generic top-level domain (“gTLD”) “.net.”
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known as the domain name or in possession of licensing rights that would allow Respondent to use the SQUARE mark in domain names. Further, the resolving webpage shows that Respondent is attempting to pass itself off as Complainant and phish for Internet users’ personal information in the process.
Respondent registered and is using the disputed domain name in bad faith. Respondent is attempting to pass itself off as Complainant in order to obtain the personal information of others by means of a phishing scam. Additionally, Respondent possessed actual knowledge of Complainant and its rights in the SQUARE mark when registering the disputed domain name.
Respondent’s Contentions
Respondent failed to submit a timely response.
The Panel notes that Respondent registered the <square-support.net> domain name November 3, 2014.
Complainant established legal rights and legitimate interests in its protected mark contained in its entirety within the disputed domain name.
Respondent registered a domain name that is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the protected mark or the domain name using that mark in its entirety.
Respondent registered and used the disputed domain name 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 Complainant to 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.
Given 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(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel 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 (Nat. Arb. 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.”).
Identical or Confusingly Similar:
Complainant registered the SQUARE mark with the USPTO (e.g., Reg. No. 3,917,735, registered Feb. 8, 2011). Complainant argues that its rights are further demonstrated by its trademark registration in India, which is Respondent’s country of residence. (Reg. No. 1954702, registered April 22, 2010). The mark is used on or in connection with hardware and software for processing credit card, debit card, and gift cards transactions via mobile devices. The Panel may find that registration with the USPTO is sufficient to establish rights in a trademark. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
Complainant argues that the <square-support.net> domain name is confusingly similar to the SQUARE mark. Complainant claims that the domain name contains the entire mark and adds the following: a hyphen, a generic term that is descriptive of the services offered by Complainant, and the gTLD “.net.” Prior panels have established a confusing similarity where the domain name at issue contains the entire mark and adds a term that describes goods or services offered by the complainant. See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the domain name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business). Also, the addition of a hyphen and the gTLD “.net” provides no distinguishing advantage for Respondent. See Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”; see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Thus, the Panel finds that the disputed domain name is confusingly similar to Complainant’s SQUARE mark for purposes of Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights or Legitimate Interests:
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), and then the burden of proof shifts to Respondent to show it does have such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant claims that Respondent has no rights or legitimate interests in the <square-support.net> domain name. Complainant argues that Respondent is not commonly known by the disputed domain name and is not in possession of licensing rights that would allow Respondent to use the SQUARE mark in domain names. The Panel notes that “rajiv” is listed as the registrant of record for this domain name. See Compl., at Attached Ex. A. The Panel also notes that the record is void of any evidence to indicate that Respondent is either commonly known as the domain name or in possession of licensing rights. Under such circumstances, Respondent cannot have rights or legitimate interests under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant also argues that Respondent’s use of the disputed domain name fails to consist of a bona fide offering of goods or services and shows no legitimate noncommercial or fair use. First, Complainant argues that Respondent used the disputed domain name in an attempt to either pass itself off as Complainant or give the impression that Complainant’s services are being sold at the website. Complainant notes that the domain name currently resolves to a webpage that reads “This webpage is not available” (see Compl., at Attached Ex. F., p. 14), but that this only occurred after Complainant discovered the domain name and coordinated with Limestone Networks, Inc. to suspend access to the content of the domain name. Prior to this action, Complainant argues that the disputed domain name resolved to a webpage that displayed the SQUARE mark and made various assertions, which suggested a partnership between Respondent and Complainant. The Panel notes that the formerly resolving webpage displayed photos of Complainant’s products and contained phrases such as “Our Support team is made up of Square employees…” and that these phrases seem to suggest a relationship between Respondent and Complainant in some capacity. See Compl., at Attached Ex. F. The Panel considered this evidence and finds that Respondent is attempting to pass itself off as Complainant. Thus the Panel that such evidence is sufficient to support a finding that Respondent does not have rights or legitimate interests in the disputed domain name containing Complainant’s mark in its entirety under a Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii) evaluation. See Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
Complainant also argues that Respondent is engaging in a phishing scam aimed at obtaining the personal information of unsuspecting Internet users. The Panel notes that the formerly-resolving webpage does not contain specific solicitations for personal information, but does display a toll free number, which Internet users could potentially call. See Compl., at Attached Ex. F. The Panel notes that Juno Online Servs., Inc. v. Iza, FA 245960 (Nat. Arb. Forum May 3, 2004) defined “phishing” as “the use of e-mails, pop-ups or other methods to trick Internet users into revealing credit card numbers, passwords, social security numbers and other personal information that may be used for fraudulent purposes.” The Panel’s view of the evidence suggests that Respondent engaged in a phishing scam, and thus the Panel finds that Respondent is not making a bona fide offering or a legitimate noncommercial or fair use of the disputed domain name. See Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Nat. Arb. 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).”).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
While Complainant does not make contentions that neatly fall within the articulated provisions of Policy ¶ 4(b), the Panel notes that these provisions are meant to be merely illustrative of bad faith, and that Respondent’s bad faith may be demonstrated under the totality of the circumstances. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. 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); see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (“The requirement in the ICANN Policy that a complainant prove that domain names are being used in bad faith does not require that it prove in every instance that a respondent is taking positive action. Use in bad faith can be inferred from the totality of the circumstances even when the registrant has done nothing more than register the names.”).
Complainant argues that Respondent registered and used the disputed domain name in bad faith. Complainant argues that Respondent is using the domain name in an attempt to hold itself out as Complainant or give Internet users the impression that Respondent and Complainant have a partnership of some sort. The Panel again notes that the formerly resolving webpage displayed photos of Complainant’s products and contained phrases such as “Our Support team is made up of Square employees…” and that these items seem to suggest a relationship between Respondent and Complainant in some capacity. See Compl., at Attached Ex. F. The Panel has reviewed the evidence and finds that Respondent is attempting to pass itself off as Complainant, or as Complainant’s partner, which is not and never has been true, and such misrepresentations mislead Internet users and support findings of bad faith under a Policy ¶ 4(a)(iii) evaluation. See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith).
Complainant also argues that Respondent is engaging in a phishing scam to obtain the personal information of unsuspecting Internet users. The Panel again notes that the formerly resolving webpage does not contain specific solicitations for personal information, but does display a toll free number, which Internet users could potentially call. See Compl., at Attached Ex. F. The Panel views this evidence as sufficient to find that Respondent is engaging in a phishing scam, which supports findings of bad faith under a Policy ¶ 4(a)(iii) evaluation. See Wells Fargo & Co. v. Maniac State, FA 608239 (Nat. Arb. Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers).
Finally, Complainant claims that Respondent had actual and/or constructive knowledge of Complainant and its rights in the SQUARE mark when it registered the disputed domain name, due to the obvious connection between Respondent’s website and Complainant’s business. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds here that Respondent’s use permits the inference that Respondent had actual knowledge of Complainant's mark and rights in it and therefore the Panel finds that Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) [because respondent had] "actual knowledge of Complainant's mark when registering the disputed domain name")."
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN 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 <square-support.net> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: April 10, 2015
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page