Name Acquisition Co. v. Derick Mohan
Claim Number: FA1602001662120
Complainant is Name Acquisition Co. (“Complainant”), represented by Courtni E. Moorman of Baker & Hostetler LLP, Ohio, United States. Respondent is Derick Mohan (“Respondent”), Florida, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aleris-usa.com>, registered with GoDaddy.com, 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 22, 2016; the Forum received payment on February 22, 2016.
On February 23, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <aleris-usa.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.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 February 24, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 15, 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@aleris-usa.com. Also on February 24, 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 March 18, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (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 global leader in the manufacture and sale of aluminum rolled products, with approximately 14 facilities in three geographically aligned business units in North America, Europe, and China. Complainant has registered the ALERIS mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,395,766, registered March 11, 2008), which demonstrates Complainant’s rights in its mark. The <aleris-usa.com> domain is confusingly similar to Complainant’s mark as it wholly incorporates Complainant’s mark and merely adds a hyphen, the geographic acronym “USA,” and the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the disputed domain name. First, Respondent is not commonly known by the disputed domain name or any variant of Complainant’s mark. Second, Respondent is not licensed or authorized to use Complainant’s mark. Finally, Respondent is not making a bona fide offering of goods or services through the disputed domain name or a legitimate noncommercial or fair use. Rather, Respondent’s disputed domain resolves to a website that is an exact copy of Complainant’s own website, including text, photos, images and layout, to create an identical, mirror site without Complainant’s authorization.
Respondent has registered and is using the disputed domain name in bad faith. First, Respondent has attempted to pass itself off as Complainant through its resolving website that is identical to that of Complainant. Second, Respondent affirmatively concealed identify by means of a proxy service. Finally, Respondent registered the disputed domain with actual knowledge of Complainant’s mark.
B. Respondent
Respondent has failed to submit a response.
Complainant, Name Acquisition Co., owns the trademark rights for its related entity, Aleris International, Inc. (together “Complainant”). Complainant is a global leader in the manufacture and sale of aluminum rolled products. Complainant has rights in the ALERIS mark through registration with the USPTO (e.g., Reg. No. 3,395,766, registered March 11, 2008). The <aleris-usa.com> domain is confusingly similar to Complainant’s mark.
Respondent, Derick Mohan, registered the <aleris-usa.com> domain name on January 13, 2016. Respondent’s domain name resolves to a website that is an exact copy of Complainant’s own website, creating an identical, mirror site without Complainant’s authorization.
Respondent has registered and is using the disputed domain name in bad faith. Respondent has attempted to pass itself off as Complainant through its resolving website that is identical to that of Complainant. Respondent has concealed his identify by means of a proxy service. Respondent registered the disputed domain with actual knowledge of Complainant’s mark.
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 (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 has rights in the ALERIS mark under Policy ¶ 4(a)(i) through registration with the USPTO. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Respondent’s <aleris-usa.com> domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i) as it wholly incorporates Complainant’s mark and adds a hyphen, the geographic acronym “USA,” and the gTLD “.com.”
Respondent does not have rights or legitimate interests in the <aleris-usa.com> domain name. Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). Complainant has not authorized Respondent to use Complainant’s mark. The WHOIS information lists “Derick Mohan” as registrant. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in [the respondent’s] WHOIS information implies that [the respondent] is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
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. Specifically, Respondent’s disputed domain resolves to a website that is an exact copy of Complainant’s own website, including text, photos, images and layout, to create an identical, mirror site without Complainant’s authorization. A respondent’s use of a domain to pass itself off as a complainant does not constitute 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). 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) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website).
Respondent has attempted to pass itself off as Complainant through its resolving website that is identical to that of Complainant. A respondent’s attempt through a confusingly similar domain to pass itself off as a complainant constitutes bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”).
Respondent concealed his identify by means of a proxy service, which is evidence of Respondent’s bad faith registration and use under Policy ¶ 4(a)(iii) under the circumstances of this case. The consensus view among panels is that use of a privacy service, without more, cannot reach the threshold of bad faith registration and use. See WWF-World Wide Fund for Nature aka WWF International v. Moniker Online Services LLC and Gregory Ricks, D2006-0975 (WIPO November 1, 2006) (finding use of proxy registration service does not of itself indicate bad faith; there are many legitimate reasons for proxy registration services); see also Divex Limited v. ZJ, Sam Chang and Tim NG, D2007-0861 (WIPO September 21, 2007) (finding privacy services may be justified by the need to avoid spam and identity theft). However, the totality of the circumstances which surround a respondent’s engagement of a privacy service may give rise to a finding of bad faith registration and use. See, e.g., HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, D2007-0062 (WIPO June 4, 2007) (finding a change of privacy service after notice of complaint indicative of bad faith); see also Sermo, Inc. v. CatalystMD, LLC, D2008-0647 (WIPO July 2, 2008) (stating that use of privacy shield can be “treated as evidence of bad faith . . . when serial registrants use privacy shields to mask each registrant’s actual date of registration”). Here, Respondent used a privacy shield in connection with his activity of attempting to pass himself off as Complainant. Under these circumstances, Respondent’s use of the privacy service is evidence of bad faith under Policy ¶ 4(a)(iii).
Respondent registered the <aleris-usa.com> domain name with actual knowledge of Complainant’s mark.
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 <aleris-usa.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: March 31, 2016
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