American Petroleum Institute v. Jonquia S Barrier / sdaw
Claim Number: FA1712001764032
Complainant is American Petroleum Institute (“Complainant”), represented by B. Brett Heavner of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., District of Columbia, USA. Respondent is Jonquia S Barrier / sdaw (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <apimembership.org>, registered with Tucows Domains Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 21, 2017; the Forum received payment on December 21, 2017.
On December 22, 2017, Tucows Domains Inc. confirmed by e-mail to the Forum that the <apimembership.org> 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 December 22, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 11, 2018 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@apimembership.org. Also on December 22, 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 January 16, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 states that it is a leading trade association for the petroleum and natural gas industry. It represents more than 600 members involved in all aspects of petroleum. Its association draws on the experience and expertise of its members and staff to support the oil and natural gas industry. Complainant uses its API mark to promote its goods and services. Complainant established rights in the API mark through registration in the United States in 1967.
Complainant alleges that the disputed domain name is confusingly similar to Complainant’s API mark because it appends the generic term “membership” and the generic top-level domain (“gTLD”) “.org” to the fully incorporated mark. Complainant cites UDRP precedents to support its position.
According to Complainant, Respondent does not have rights or legitimate interests in the disputed domain name. Complainant has not licensed or otherwise authorized Respondent to use its API mark in any fashion. Respondent is not commonly known by the disputed domain name, as the WHOIS information of record lists “Jonquia S Barrier / sdaw” as the registrant. Respondent is not using the disputed domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to impersonate Complainant in order to defraud Complainant and Complainant’s members and customers. Further, the disputed domain name resolves to an inactive website. Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent registered and is using the disputed domain name in bad faith. Respondent attempts to create a likelihood of confusion between the mark and the disputed domain name for Respondent’s commercial benefit. Additionally, Respondent commercially benefits by phishing for Internet users’ personal information through fraudulent emails. Further, Respondent registered the disputed domain name with full knowledge of Complainant’s rights in the API mark. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns rights in the mark API dating back to 1967.
The disputed domain name was registered in 2017.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
Respondent uses the disputed domain name to impersonate Complainant in e-mails whose purpose is to defraud Complainant and Complainant’s members and customers.
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 (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.”).
The disputed domain name is confusingly similar to Complainant’s API mark because it appends the generic term “membership” and the gTLD “.org” to the fully incorporated mark. The addition of a generic term and gTLD to a mark do not negate confusing similarity between the mark and a disputed domain name. See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).). Accordingly, the Panel finds that Respondent’s <apimembership.org> domain name is confusingly similar to Complainant’s API mark.
Complainant has not licensed or otherwise authorized Respondent to use its API mark in any fashion. Under Policy ¶ 4(c)(ii), WHOIS information can be used to support a finding that a respondent is not commonly known by a disputed domain name. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). The WHOIS information of record for the disputed domain name lists “Jonquia S Barrier / sdaw” as the registrant. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name.
Further, Respondent is not using the disputed domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to impersonate Complainant in e-mails whose purpose is to defraud Complainant and Complainant’s members and customers. Specifically on December 17, 2017, Respondent sent an e-mail to an AOL user and API member using the e-mail address, “servicecase02962@apimembership.org”. The e-mail featured the subject line, “Urgent: Please view your recent activity and we’ll help you take corrective action.” The body of the e-mail read: “For your security, we regularly monitor accounts for possible fraudulent activity. Please read your secure message by opening attachment (pdf). You will be prompted to open (Visit My Account) file or save (download) to your computer.” The e-mail recipient forwarded the email to Complainant’s Membership Fraud division to alert Complainant of the fraudulent activity.
Use of a domain name to pass off as a complainant to conduct a phishing scheme may not be considered a bona fide offering of goods or services or legitimate noncommercial or fair use. See Chevron Intellectual Property LLC v. Thomas Webber / Chev Ronoil Recreational Sport Limited, FA 1661076 (Forum Mar. 15, 2016) (finding that the respondent had failed to provide a bona fide offering of goods or services or any legitimate noncommercial or fair use, stating, “Respondent is using an email address to pass themselves off as an affiliate of Complainant. Complainant presents evidence showing that the email address that Respondent has created is used to solicit information and money on false pretenses. The disputed domain name is being used to cause the recipients of these emails to mistakenly believe Respondent has a connection with Complainant and is one of the Complainant’s affiliates.”). Therefore, the Panel finds that Respondent used the disputed domain name as part of a fraudulent e-mail phishing scheme and holds that Respondent failed to use the domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Further, the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, as already noted, Respondent uses the disputed domain name to attempt to create a likelihood of confusion between Complainant’s API mark and the disputed domain name for Respondent’s commercial benefit. Use of a domain name to cause confusion as to the source, sponsorship, affiliation, or endorsement of the content therein can be evidence of bad faith per Policy ¶ 4(b)(iv). See Eastman Chemical Company v. Amnon Jakony, FA1606001681860 (Forum Jul. 31, 2016) (“Respondent’s use of the <eastmanindustries.net> domain to pass itself off as Complainant shows that Respondent has attempted to commercially benefit—unfairly and opportunistically from the goodwill associated with Complainant’s EASTMAN trademark.); see also Qatalyst Partners LP v. Devimore, FA 1393436 (Forum July 13, 2011) (finding that using the disputed domain name as an e-mail address to pass itself off as the complainant in a phishing scheme is evidence of bad faith registration and use). Accordingly, the Panel finds that Respondent attempted to create a likelihood of confusion between the API mark and the disputed domain name for Respondent’s commercial gain and therefore, registered and is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Further, again as already noted, Respondent is using the disputed domain name to conduct a fraudulent email phishing scam. Use of a domain name in furtherance of a phishing scam can be evidence of bad faith under Policy ¶ 4(a)(iii). See Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA1506001625750 (Forum July 17, 2015) (“Respondent uses the <klabzuba-oilgas.com> domain to engage in phishing, which means Respondent registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii).”). Therefore, the Panel finds that Respondent used the domain name for phishing purposes and engaged in bad faith registration and use.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <apimembership.org> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: January 17, 2018
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