Institut National D'Optique National Optics Institute also doing business as INO v. link daniel
Claim Number: FA1702001717563
Complainant is Institut National D'Optique National Optics Institute also doing business as INO (“Complainant”), represented by Marcel Naud of ROBIC, LLP, Quebec, CA. Respondent is link daniel (“Respondent”), Nigeria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ino-ca.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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 February 16, 2017; the Forum received payment on February 16, 2017.
On Feb 17, 2017, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <ino-ca.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 20, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 13, 2017 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@ino-ca.com. Also on February 20, 2017, 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 17, 2017, 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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Operating under the INO name and mark, Complainant is a technology design and development company providing optic and photonic products, such as 3D imaging systems, lasers, lighting and computer vision, to enterprises worldwide.
Complainant holds a registration for the INO mark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 3,022,377, registered December 6, 2005.
Respondent registered the domain name <ino-ca.com> on January 11, 2017.
The domain name is confusingly similar to Complainant’s INO mark.
Respondent has not been commonly known by the domain name.
Respondent is not sponsored by or affiliated with Complainant in any way.
Complainant has not given Respondent permission to use the INO mark in a domain name.
Respondent does not use the domain name for a bona fide offering of goods or services or a legitimate or fair use.
Respondent uses the domain name to pass itself off as Complainant via fraudulent email communications for its commercial gain, in that Respondent used the domain name in an email address as part of a scheme to reroute a payment for Complainant’s goods to an unauthorized bank account unrelated to Complainant, which relied on impersonating Complainant through false email communications and forged business documents, in order to deceive staff at one of Complainant's customers into believing they were communicating with their counterparts at Complainant in the course of an actual business transaction when, in fact, and completely unbeknownst to them, they were communicating with Respondent instead.
Respondent has no rights to or legitimate interests in the domain name.
Respondent’s use of the domain name disrupts Complainant’s business.
Respondent knew of Complainant and its rights in the INO mark when it registered the domain name.
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 and service mark 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 deems 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, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (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 INO trademark and service mark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Nigeria). See, for example, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum August 24, 2010):
[T]he Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.
Turning to the core question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <ino-ca.com> domain name is confusingly similar to Complainant’s INO trademark and service mark. The domain name includes the mark in its entirety, adding only a hyphen, a country code and a generic Top Level Domain (“gTLD”). These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Forum September 23, 2003):
The addition of a hyphen to Complainant's mark [in forming a domain name] does not create a distinct characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis.
As to adding a country code to the mark of another in creating a domain name, see Avaya Inc. v. Evelyn Dayda / Avaya Unlimited Sources LLC, FA 1611255 (Forum May 4, 2015), finding that:
[Where t]he ‘usa’ portion of the disputed domain name is a generic geographic term, the internet user will assume that the domain name deals with the activities of Complainant in the USA and that it will lead to a website dealing with that subject. The domain name is therefore confusingly similar to the … mark and the Panel so finds.
Likewise, adding the gTLD “.com” to the mark of another in forming a domain name is irrelevant to an analysis of confusing similarity. See F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (Forum July 9, 2015) finding that:
Respondent’s <frburger.com> domain name is identical to Complainant’s FRBURGER mark because it differs only by the domain name’s addition of the top-level domain name “.com.”
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to or 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 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or 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 (Forum September 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 December 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 they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny,
that Respondent has not been commonly known by the <ino-ca.com> domain name, that Respondent is not sponsored by or affiliated with Complainant in any way, and that Complainant has not given Respondent permission to use the INO mark in a domain name. Moreover, the pertinent WHOIS identifies the registrant of the domain name only as “link daniel,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that a respondent was not commonly known by disputed domain names where the relevant WHOIS information, as well as other evidence in the record, gave no indication that that respondent was commonly known by the domain names, and where a UDRP complainant had not authorized that respondent to register a domain name containing its mark).
To the same effect, see also Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that a respondent was not commonly known by a disputed domain name where a UDRP complainant had not authorized that respondent to incorporate its mark in a domain name registration).
We next observe that Complainant asserts, without objection from Respondent,
that Respondent uses the <ino-ca.com> domain name to pass itself off as Complainant via fraudulent email communications for its commercial gain, in that Respondent has used the domain name in an email address as part of a scheme to reroute a payment for Complainant’s goods to an unauthorized bank account unrelated to Complainant. This scheme relied on impersonating Complainant through false email communications and forged business documents, in order to deceive staff at one of Complainant's customers, into believing they were communicating with their counterparts at Complainant, in the course of an actual business transaction when, in fact, and completely unbeknownst to them, they were communicating with Respondent instead. This employment of the domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Graybar Services Inc. v. Graybar Elec, Grayberinc Lawrenge, D2009-1017 (WIPO October 2, 2009), concluding, under Policy ¶ 4(c), that a respondent had no rights to or legitimate interests in a domain name where it found that:
[I]t is apparent from the evidence that the Respondent has been using the domain name to perpetrate a fraud. The essence of the fraud is that the Respondent has used the domain name to pretend that it is the Complainant and in particular to create false emails pretending that they are genuine emails coming from the Complainant …. These false emails have then been used to order goods from the Complainant's suppliers using the documents created for the purported transactions to attempt to have the Complainant pay for the goods….
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s employment of the <ino-ca.com> domain name, as alleged in the Complaint, demonstrates its bad faith in the registration and use of the domain name by disrupting Complainant’s business as is contemplated in Policy ¶ 4(b)(iv). See Graybar Services Inc. v. Graybar Elec, D2009-1017 (WIPO October 2, 2009), supra:
The Respondent's conduct … brings the case within the provisions of paragraph 4(b)(iv) of the Policy, for the whole of the fraudulent transaction was conducted on the Internet, showing that by using the domain name as the origin of the emails, the Respondent intentionally attempted to attract, for commercial gain, Internet users being the Complainant's suppliers to the Respondent's on-line location, by creating a likelihood of confusion between the Complainant's mark and the source … of the fraudulent emails.
We are also convinced by the evidence that Respondent knew of Complainant and its rights in the INO mark when it registered the challenged domain name. This too demonstrates Respondent’s bad faith in registering the domain name. See, for example, Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum August 16, 2007) (rejecting a respondent's contention that it did not register a disputed domain name in bad faith since a panel found that that respondent knew of a UDRP complainant's rights in a mark when it registered that domain name).
For these reasons, the Panel 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 <ino-ca.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: March 20, 2017
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