Rosendin Electric, Inc. v. Kerri Simmons
Claim Number: FA1801001765916
Complainant is Rosendin Electric, Inc. (“Complainant”), represented by Lindsay J. Hulley of Rutan & Tucker, LLP, California, USA. Respondent is Kerri Simmons (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <rrosendin.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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 8, 2018; the Forum received payment on January 8, 2018.
On January 9, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <rrosendin.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 January 9, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 29, 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@rrosendin.com. Also on January 9, 2018, 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 2, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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
1. Complainant has common law rights in the ROSENDIN and ROSENDIN ELECTRIC marks based upon secondary meaning established through over 98 years of use.
2. Respondent’s <rrosendin.com>[1] domain name is confusingly similar to Complainant’s marks as it incorporates the ROSENDIN mark in its entirety before appending an intentional, additional “r.”
3. Respondent has no rights or legitimate interests in the <rrosendin.com> domain name. Respondent is not commonly known by the domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the marks.
4. Respondent also 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 to pass off as Complainant for Respondent’s commercial gain.
5. Respondent registered and uses the <rrosendin.com> domain name in bad faith. Respondent intentionally creates confusion for Respondent’s commercial gain via fraudulent emails.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds common law rights for the ROSENDIN and ROSENDIN ELECTRIC marks. Respondent’s domain name is confusingly similar to Complainant’s ROSENDIN and ROSENDIN ELECTRIC marks. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <rrosendin.com> domain name and that Respondent registered and uses the domain name 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:
(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.”).
Complainant asserts common law rights in the ROSENDIN mark based upon secondary meaning. Trademarks are unnecessary where complainants can demonstrate common law rights in a mark via secondary meaning given to the mark through use and advertising per Policy ¶ 4(a)(i). 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.”). Complainant has provided evidence that it is the fourth largest electrical contractor in the United States, with more than 6,000 employees and an annual revenue of approximately $2 billion. Complainant began operating in 1919 and has operated under the ROSENDIN and ROSENDIN ELECTRIC trademarks since then. The Panel agrees that the record supports Complainant’s assertion that its ROSENDIN and ROSENDIN ELECTRIC marks have acquired secondary meaning such that Complainant has common law rights in the marks for the purpose of the Policy. See Marquette Golf Club v. Al Perkins, 1738263 (Forum July, 27, 2017) (finding that Complainant had established its common law rights in the MARQUETTE GOLF CLUB mark with evidence of secondary meaning, including “longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising.”).
Next, Complainant argues that Respondent’s <rrosendin.com> domain name is confusingly similar to Complainant’s mark as it incorporates the ROSENDIN mark in its entirety before appending an intentional, additional “r.” Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶4(a)(i). See ModCloth, Inc. v. James McAvoy, FA 1629102 (Forum Aug. 16, 2015) (“The Panel finds that the disputed domain name is confusingly similar to Complainant’s mark because it differs from Complainant’s mark by merely adding the letter ‘L’ . . . ”). The Panel agrees with Complainant and finds that the <rrosendin.com> domain name is confusingly similar to the ROSENDIN mark under Policy ¶4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <rrosendin.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant contends that Respondent has no rights or legitimate interests in the <rrosendin.com> domain name. Where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship, or lack thereof, with a respondent. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). The WHOIS identifies “Kerri Simmons” as the registrant. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the ROSENDIN mark. Nothing in the record contradicts this assertion. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Complainant alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the <rrosendin.com> domain name prior to its registration, and Complainant has not given Respondent permission to use the domain name. Once again, nothing in the record is to the contrary. Accordingly, the Panel agrees that Respondent is not commonly known by the <rrosendin.com> domain name under Policy ¶ 4(c)(ii).
Next, Complainant contends Respondent uses the <rrosendin.com> domain name to pass off as Complainant for Respondent’s commercial gain. Use of a domain name to pass off as a complainant for commercial gain via fraudulent emails does not represent a bona fide offer per Policy ¶ 4(c)(i) or a noncommercial fair use per Policy ¶ 4(c)(iii). See Emerson Electric Co. v. Adilcon Rocha, FA 1735949 (Forum July 11, 2017) (finding that respondent’s attempt to pass off as complainant through emails does not constitute a bona fide offering of goods or services and, as such, respondent lacked rights or legitimate interests in the disputed domain name). Complainant contends Respondent intentionally misrepresented itself to be an employee of Complainant and solicited payments from Complainant’s vendors and business associates, one of which sent Respondent an amount over $200,000.00. Complainant has provided evidence to support this contention. The Panel agrees with Complainant and finds Respondent lacks rights and legitimate interests in the <rrosendin.com> domain name.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant asserts Respondent intentionally creates confusion for Respondent’s commercial gain via fraudulent emails. Using a phishing scheme through fraudulent email communications shows bad faith under Policy ¶ 4(a)(iii). See Zoetis Inc. and Zoetis Services LLC v. VistaPrint Technologies Ltd, FA1506001623601 (Forum July 14, 2015) (“Respondent’s attempt to use the <zoietis.com> domain name to phish for personal information in fraudulent emails also constitutes bad faith pursuant to Policy ¶ 4(a)(iii).”). Complainant has provided evidence that Respondent sent emails from the address vrogers@rrosendin.com to Complainant’s vendors and business associates requesting payment, and Complainant is aware of at least one payment by one of its subcontractors to Respondent in an amount over $200,000.00, when that amount was intended for Complainant. The Panel agrees that Respondent’s activities constitute bad faith pursuant to Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <rrosendin.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: February 12, 2018
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