Phillips 66 Company v. VistaPrint Technologies Ltd
Claim Number: FA1510001643671
Complainant is Phillips 66 Company (“Complainant”), represented by Steven M. Espenshade of Pirkey Barber PLLC, Texas, USA. Respondent is VistaPrint Technologies Ltd (“Respondent”), Bermuda
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <philips66.net>, registered with Tucows Domains 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 October 23, 2015; the Forum received payment on October 23, 2015.
On October 23, 2015, Tucows Domains Inc. confirmed by e-mail to the Forum that the <philips66.net> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 October 23, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 12, 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@philips66.net. Also on October 23, 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 November 18, 2015, 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.
Complainant
Complainant has rights in the PHILLIPS 66 mark through registration of the mark with multiple trademark agencies including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 255,501, registered April 23, 1929). Respondent’s disputed domain name, <philips66.net>, is confusingly similar to Complainant’s PHILLIPS 66 mark because the domain only differs through the removal of the letter “L” in the word “Phillips” and through the addition of the generic top-level domain (“gTLD) “.net.” The addition of a gTLD and deletion of a singular letter do not present an impression distinct from Complainant’s PHILLIPS 66 mark.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the domain name, nor licensed or in any manner permitted to use Complainant’s PHILLIPS 66 mark. Additionally, Respondent has used emails associated with the domain to pose as an employee of Complainant and contact Complainant’s suppliers; presumably for commercial gain. Such use cannot be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent has registered and is using the disputed domain name in bad faith. Respondent has been involved in a multiple previous adverse UDRP decisions and thus has demonstrated a pattern of bad faith registrations. Respondent’s use of fraudulent email accounts to contact Complainant’s suppliers shows that Respondent intended to compete and disrupt Complainant’s business. Respondent is typosquatting in bad faith. Finally, it is clear from Respondent’s use of the disputed domain name that Respondent had knowledge of Complainant’s rights in the PHILLIPS 66 mark.
Respondent
Respondent did not 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 <philips66.net> 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(e), 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 (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.”).
Complainant contends that its rights in the PHILLIPS 66 mark stem from registration of the mark with multiple trademark agencies throughout the world including the USPTO (e.g. Reg. No. 255,501, registered April 23, 1929). Panels have found a complainant has rights in a mark where the complainant provides evidence of USPTO registration. See Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (holding that the complainant’s trademark registrations with the USPTO had established rights in the BLOOMBERG mark). The Panel therefore finds that Complainant’s USPTO registration is sufficient to demonstrate its rights in the PHILLIPS 66 mark according to Policy ¶ 4(a)(i).
Complainant contends that the domain name at issue, Respondent’s <philips66.net>, is confusingly similar to the PHILLIPS 66 mark. Respondent’s domain name is formed by omitting one letter “L” from Complainant’s mark and adding the gTLD “.net.” Panels consistently find that the presence of a gTLD is not relevant to a Policy ¶ 4(a)(i) analysis. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant). Further, panels have found confusing similarity where the disputed domain removes a single letter that was present in the mark at issue. See Granarolo S.p.A. v. Dinoia, FA 649854 (Nat. Arb. Forum Apr. 17, 2006) (finding that the <granarolo.com> domain name was confusingly similar to the complainant’s registered G GRANAROLO mark). The Panel therefore finds that Respondent’s <philips66.net> is confusingly similar to the PHILLIPS 66 mark under Policy ¶ 4(a)(i).
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), and then the burden shifts to Respondent to show it does have 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 disputed domain name. Complainant contends that Respondent is not commonly known by the disputed domain name, nor has Complainant been permitted to use the PHILLIP 66 marks or entered into a licensing arrangement with Complainant. The WHOIS information for the disputed domain identifies Respondent as “VistaPrint Technologies Ltd,” which does not resemble the disputed domain name. Panels have held that a respondent is not commonly known by a disputed domain name based on a lack of information, including WHOIS information, to the contrary. See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute). The Panel therefore concludes that Respondent is not commonly known by the disputed domain name for the purposes of Policy ¶ 4(c)(ii).
Complainant further claims that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent’s disputed domain resolves to a blank page displaying the message "COMING SOON! www.philips66.net is under construction and hasn’t been published yet.” The only use of the domain appears to be an email sent from an account associated with the domain. In this email someone using the email address <tim.taylor@philips66.net> requested pricing and availability of items from one of Complainant’s suppliers. Respondent’s behavior could be considered an attempt to pass itself off as Complainant which panels have found is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name). Accordingly, the Panel finds that Respondent’s attempt to pass itself off as Complainant is not within uses allowable under Policy ¶¶ 4(c)(i) or 4(c)(iii).
Complainant has proved this element.
Complainant argues that Respondent has registered and is using the disputed domain name in bad faith. Complainant claims that Respondent has been involved in a multiple previous adverse UDRP decisions and thus has demonstrated a pattern of bad faith registrations. Respondent has indeed been the respondent in multiple prior UDRP decisions where the panel determined that the domain in disputed should be transferred. See Thornburg Investment Management, Inc. v. VistaPrint Technologies Ltd, FA 1615194 (Nat. Arb. Forum May 26, 2015); Zoetis Inc. and Zoetis Products LLC v. VistaPrint Technologies Ltd, FA 1550102 (Nat. Arb. Forum May 5, 2014). Panels have held that prior UDRP decisions are sufficient to demonstrate bad faith against a respondent in a subsequent proceeding. See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants). Therefore, the Panel finds that Respondent’s prior UDRP proceedings demonstrate bad faith in this instance pursuant to Policy ¶ 4(b)(ii).
Complainant also contends that Respondent’s use of fraudulent email accounts to contact Complainant’s suppliers shows that Respondent intended to disrupt and compete with Complainant’s business. Respondent appears to use the disputed domain name to send fraudulent emails to Complainant’s suppliers while posing as Complainant. Panels have interpreted competitors broadly under Policy ¶ 4(b)(iii). See Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (defining “competitor” as “one who acts in opposition to another and the context does not imply or demand any restricted meaning such as commercial or business competitor”). The Panel therefore finds that Respondent’s use of the domain name competes with and disrupts Complainant’s business in bad faith pursuant to Policy ¶ 4(b)(iii).
Complainant argues that Respondent’s intentional misspelling of the disputed domain name constitutes typosquatting, which is additional evidence of bad faith under Policy ¶ 4(a)(iii). The Panel agrees with Complainant’s argument here, and finds that Complainant is typosquatting in bad faith under Policy ¶ 4(a)(iii). See Neiman Marcus Group, Inc. v. Party Night, Inc., FA 114546 (Nat. Arb. Forum July 23, 2002) (finding that the <neimanmacus.com> domain name was a simple misspelling of the complainant’s NEIMAN MARCUS mark and was a classic example of typosquatting, which was evidence that the domain name was confusingly similar to the mark).
Complainant contends that in light of the fame and notoriety of Complainant's PHILLIPS 66 mark, in conjunction with Respondent’s use of the disputed domain, it is inconceivable that Respondent could have registered the <philips66.net> domain name without actual and/or constructive knowledge of Complainant's rights in the mark. Any arguments of bad faith based on constructive notice are irrelevant, however, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. 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 has proved this element.
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 <philips66.net> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: November 24, 2015
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