StormX, Inc. v. real / real
Claim Number: FA1711001758654
Complainant is StormX, Inc. (“Complainant”), represented by Craig A. Beaker of Perkins Coie, Washington DC, USA. Respondent is real / real (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <stormstoken.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 November 15, 2017; the Forum received payment on November 15, 2017.
On November 16, 2017, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <stormstoken.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 November 16, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 6, 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@stormstoken.com. Also on November 16, 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 December 7, 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
Complainant, operating under the STORM TOKEN mark, is a software application publisher that enables Internet users to engage with advertisers while earning rewards, in the form of tokens, through Bitcoin and Ethereum.
Although Complainant does not hold a trademark registration for the STORM TOKEN mark, Complainant has acquired common law rights in the mark dating from at least July of 2017.
Respondent registered the domain name <stormstoken.com> on or about October 18, 2017.
The domain name is confusingly similar to Complainant’s STORM TOKEN mark.
Respondent has not been commonly known by the domain name.
Complainant has not licensed or otherwise permitted Respondent to use the STORM TOKEN mark.
Respondent does not use the domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use.
Rather, Respondent uses the domain name in connection with a phishing and fraud scheme whereby Respondent’s website associated with the domain name mirrors Complainant’s official website in an effort to confuse Internet users into believing that they are visiting Complainant’s website.
Respondent thus seeks to deceive Internet users into providing to it their personal identity and financial information, and Respondent intends to profit illicitly from this activity.
Respondent has no rights to or legitimate interests in the domain name.
Respondent knew of Complainant and its rights in the STORM TOKEN 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 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 was registered and is being used by Respondent 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 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 February 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”
Complainant has asserted unchallenged common law rights in the STORM TOKEN mark, which are sufficient for purposes of Policy ¶ 4(a)(i), because the Policy does not require a UDRP complainant to hold a trademark registration in order to acquire the protection of the Policy. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017), finding that:
The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.
This is true without regard to whether Complainant’s rights in its mark arise in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Germany). See, for example, Frank E. Rijkaard v. Marc Perez-Tejero, Case No. D2004-1044 (WIPO January 24, 2005):
[T]he Policy does not require that the trademark of the Complainant be protected in the Respondent’s country.
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <stormstoken.com> domain name is confusingly similar to Complainant’s STORM TOKEN mark. The domain name contains the mark in its entirety, absent only the space between its terms, and with the addition of the single letter “s” and the generic Top Level Domain (“gTLD”) “.com.” 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, for example, Google, Inc. v. DktBot.org, FA 286993 (Forum August 4, 2004):
The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).
See also Trip Network Inc. v. Alviera, FA 914943 (Forum March 27, 2007) (concluding that the inclusion of a gTLD in a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). This is because every domain name requires a gTLD.
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in the 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 <stormstoken.com> domain name, and that Complainant has not licensed or otherwise permitted Respondent to use the STORM TOKEN mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “real / real,” which does not resemble the domain name. On this record we conclude that Respondent has not been commonly known by the contested domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy
¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (finding that a respondent was not commonly known by disputed domain names, and so failed to show that it had rights to or legitimate interests in it as provided in Policy ¶ 4(c)(ii), where the relevant WHOIS information, as well as the 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). 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, thus failing to demonstrate that it had rights to or legitimate interests in that domain name within the meaning of Policy ¶ 4(c)(ii), where a UDRP complainant had not authorized that respondent to incorporate its mark in a domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent uses the <stormstoken.com> domain name in connection with a phishing fraud scheme whereby the website associated with the domain name mirrors Complainant’s website in an effort to confuse Internet users into believing that they are visiting Complainant’s website, and that Respondent thus seeks to profit by obtaining personal identification and financial information from those users. This employment of the domain name is neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under ¶ 4(c)(iii). See Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007)
Because respondent in this case is also attempting to pass itself off as complainant, presumably for financial gain, the Panel finds the respondent is not using the … domain name for 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 also Google Inc. v. Pritam Singh / Pandaje Technical Services Pvt Ltd., FA 1660771 (Forum March 17, 2016) (concluding that a respondent had not shown any bona fide offering of goods or services or any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii) where that respondent used a UDRP complainant’s mark and logo on a resolving website that solicited Internet users’ personal information).
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 use of the challenged <stormstoken.com> domain name, which we have found to be confusingly similar to Complainant’s STORM TOKEN mark, which is to mimic Complainant’s official website while phishing for Internet users’ personal identification and financial information, is an effort by Respondent to profit financially from the confusion thus caused among Internet users. Under Policy ¶ 4(b)(iv), this stands as proof of Respondent’s bad faith in registering and using the domain name. See Red Bull GmbH v. Gutch, D2000-0766 (WIPO September 21, 2000) (finding, under Policy ¶ 4(b)(iv), that a respondent’s intended use of a domain name would lead Internet users to believe that that domain name was connected to a UDRP complainant, which permitted a finding of bad faith registration and use). See also Target Brands, Inc. v. JK Internet Servs., FA 349108 (Forum December 14, 2004) (finding bad faith, under Policy ¶ 4(b)(iv), where a respondent not only registered a domain name containing a UDRP complainant’s mark, but “reproduced [at its resolving website] ... Complainant’s … mark ... [and] added Complainant’s distinctive red bull’s eye [at the domain name] ... to a point of being indistinguishable from the original.”).
We are also convinced by the evidence that Respondent knew of Complainant and its rights in the STORM TOKEN mark when Respondent registered the offending <stormstoken.com> domain name. This further demonstrates Respondent’s bad faith in registering the domain name. See, for example, Univision Comm. 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 where a panel found that that respondent had knowledge of a UDRP complainant's rights in a mark at the time it registered a confusingly similar domain name).
Therefore, the Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
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 <stormstoken.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: December 12, 2017
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