Nucor Corporation v. Sam Seigel / Nucor Steel
Claim Number: FA1601001656527
Complainant is Nucor Corporation (“Complainant”), represented by J. Mark Wilson of Moore & Van Allen PLLC, North Carolina, USA. Respondent is Sam Seigel / Nucor Steel (“Respondent”), North Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nucorsteels.com>, registered with Domain.com, LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 14, 2016; the Forum received payment on January 14, 2016.
On January 14, 2016, Domain.com, LLC confirmed by e-mail to the Forum that the <nucorsteels.com> domain name is registered with Domain.com, LLC and that Respondent is the current registrant of the name. Domain.com, LLC has verified that Respondent is bound by the Domain.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 January 15, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 4, 2016 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@nucorsteels.com. Also on January 15, 2016, 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 February 5, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 the largest steel producer in the United States.
Complainant holds a registration for the NUCOR trademark, which is on file with the United States Patent and Trademark Office (“USPTO”) (as Registry No. 2,320,054, registered on February 22, 2000).
Respondent registered the <nucorsteels.com> domain name on May 30, 2014.
The domain name is confusingly similar to Complainant’s NUCOR mark.
Respondent has not been commonly known by the domain name.
Complainant has not authorized Respondent to use its NUCOR mark.
Respondent uses the domain name to pass itself off as Complainant through the hosting of e-mail addresses used to impersonate employees of Complainant.
Respondent has used such email addresses to provide fraudulent verification of previous employment with Complainant, presumably to assist unknown persons to obtain employment or some other business advantage.
Respondent has no rights to or legitimate interests in the domain name.
Respondent registered the domain name with actual knowledge of Complainant’s rights in the NUCOR mark.
Respondent registered and uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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 that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it considers appropriate. The Panel is entitled to accept all reasonable allegations and inferences set out 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) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP 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 has rights in the NUCOR trademark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (finding, under Policy ¶ 4(a)(i), that a UDRP complainant’s trademark registration with the USPTO established its rights in the BLOOMBERG mark).
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <nucorsteels.com> domain name is confusingly similar to Complainant’s NUCOR trademark. The domain name contains the mark in its entirety, merely adding the term generic term “steels,” which relates to Complainant’s business, and the generic Top Level Domain (“gTLD”) “.com.” These alterations of Complainant’s mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity under Policy ¶ 4(a)(i) where the domain name there in dispute contained the entire mark of a UDRP complainant combined with a generic term).
See also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the addition of the generic top-level domain “.com” to the mark of another in creating a domain name was insufficient to differentiate the resulting domain name from that mark).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in a disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name which are cognizable under the Policy.
We begin by noting that Complainant asserts, and Respondent does not deny,
that Respondent has not been commonly known by the <nucorsteels.com> domain name, and that Complainant has not granted Respondent permission to use its NUCOR mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Sam Seigel,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the <nucorsteels.com> domain name so as to have acquired rights to or legitimate interests in it within the meaning of Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the domain name thee in issue, where there was no evidence in the record, including the relevant WHOIS information, showing that that respondent was commonly known by the domain name, and where a UDRP complainant asserted that it did not authorize that respondent’s use of its mark in a domain name).
We next consider that Complainant alleges, without objection from Respondent, that Respondent uses the <nucorsteels.com> domain name to attempt to pass off as Complainant by hosting e-mail addresses used to impersonate employees of Complainant, thus to provide fraudulent verification of previous employment with Complainant, presumably to assist unknown persons to obtain employment or some other business advantage. This employment of the domain name is neither a bona fide offering of goods or services by means of, nor a legitimate noncommercial or fair use of, the domain name such as would establish in Respondent rights to or legitimate interests in the domain under Policy ¶ 4(c)(i) or 4(c)(iii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that a respondent’s attempt to pass itself off as a UDRP complainant online through unauthorized use of that complainant’s mark in a domain name was evidence that that respondent had no rights to or legitimate interests in the domain name as provided in Policy ¶ 4(c)(i) or 4(c)(iii)).
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent uses the <nucorsteels.com> domain name, which is confusingly similar to Complainant’s NUCOR trademark, to attempt to pass itself off as Complainant for the purposes alleged in the Complaint. This is proof of Respondent’s bad faith in registering and using the domain name. See Smiths Group plc v. Snooks, FA 1372112 (Nat. Arb. Forum Mar. 18, 2011) (finding that a respondent’s attempt to impersonate an employee of a UDRP complainant by means of a domain name which was confusingly similar to the mark of that complainant was evidence of bad faith registration and use of the domain under Policy ¶ 4(a)(iii)). See also Qatalyst Partners LP v. Devimore, FA 1393436 (Nat. Arb. Forum July 13, 2011) (finding that a respondent’s use of a disputed domain name in an e-mail address in order to pass itself off as a UDRP complainant was evidence of that respondent’s bad faith registration and use).
We are also convinced by the evidence that Respondent registered the <nucorsteels.com> domain name while knowing of Complainant and its rights in the NUCOR mark. Under Policy ¶ 4(a)(iii), this too is proof of Respondent’s bad faith in registering the domain name. See Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding bad faith registration of a domain name under Policy ¶ 4(a)(iii) where the method by which a respondent acquired the domain name indicated that that respondent was well aware that the domain name incorporated a mark in which a UDRP complainant had rights).
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <nucorsteels.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: February 10, 2016
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