Nourison Industries, Inc. v. Ahlyek SAHNDR5 SAHNDR5 / ahlyekSAHNDR5 Limited
Claim Number: FA1801001766718
Complainant is Nourison Industries, Inc. (“Complainant”), represented by Yuval H. Marcus of Leason Ellis LLP, New York, USA. Respondent is Ahlyek SAHNDR5 SAHNDR5 / ahlyekSAHNDR5 Limited (“Respondent”), Nigeria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <noiurison.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 known conflict in serving as Panelist in this proceeding.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 12, 2018; the Forum received payment on January 12, 2018.
On January 13, 2018, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <noiurison.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 January 16, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 5, 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@noiurison.com. Also on January 16, 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 7, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 made the following contentions
Complainant, Nourison Industries, Inc. is a leading multi-category resource in the floor covering market. In connection with this business, Complainant uses the NOURISON mark to enhance consumer awareness of their products and services. Complainant claims rights in the mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,893,748, registered Dec. 21, 2010). See Compl. Ex. C. Respondent’s <noiurison.com> is confusingly similar as it contains Complainant’s mark in its entirety, merely adding the letter “i” in between the “o” and “u” to misspell Complainant’s NOURISON mark, and adds the generic top level domain (“gTLD”) “.com.”
Respondent does not have rights or legitimate interests in the <noiurison.com> domain name. Respondent is not commonly known by the domain name, and Complainant has not granted Respondent permission or license to use the NOURISON mark for any purpose. Respondent is not using the disputed domain name to make a bona fide offering of goods or services or for a legitimate non-commercial or fair use. Rather, Respondent’s <noiurison.com> domain name does not resolve to an active website. See Compl. Ex. F. Further, Respondent is using the disputed domain name as part of a fraudulent phishing scheme.
Respondent has registered and used the <noiurison.com> domain name in bad faith. Respondent fails to make an active use of the disputed domain name and is attempting to operate a fraudulent phishing scheme against users seeking Complainant’s business. Finally, Respondent registration of domain name that virtually identical to Complainant’s NOURISON mark is typosquatting.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company and a leading multi-category resource in the floor covering market
2. Complainant has established its trademark rights in the NOURISON mark by virtue of its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,893,748, registered Dec. 21, 2010).
3. Respondent registered the disputed domain name on December 18, 2017.
4. Respondent has failed to make an active use of the disputed domain name and is using it to attempt to operate a fraudulent phishing scheme against internet users seeking Complainant’s business.
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 first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the NOURISON mark based upon its registration with the USPTO (e.g. Reg. No. 3,893,748, registered Dec. 21, 2010). See Compl. Ex. C. Registration with the USPTO is sufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Therefore, the Panel finds that Complainant has rights in the NOURISON mark per Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s NOURISON mark. Complainant asserts that the <noiurison.com> domain name is confusingly similar to the NOURISON mark as it consists of a misspelling of Complainant’s mark, adding an “i” in between the “o” and “u” in the mark, and adds the gTLD “.com.” Panels have consistently found that slight differences between domain names and registered marks, such as the addition of letters in connection with the mark or removal of a space, do not distinguish the domain name from the mark incorporated therein. See Coachella Music Festival, LLC v. Domain Administrator / China Capital Investment Limited, FA 1734230 (Forum July 17, 2017) (“The addition of letters—particularly of those that create a common misspelling—fails to sufficiently distinguish a domain name from a registered mark.”). Similarly, the addition of a gTLD to a mark is irrelevant in determining whether the disputed domain name is confusingly similar. See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel agrees with Complainant and finds that the <noiurison.com> domain name does not contain changes that would sufficiently distinguish it from the NOURISON mark.
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s NOURISON mark and to use it in its domain name, making only a slight spelling alteration;
(b) Respondent registered the disputed domain name on December 18, 2017;
(c) Respondent is using the domain name to attempt to operate a fraudulent phishing scheme against internet users seeking Complainant’s business;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent has no rights or legitimate interests in the <noiurison.com> domain name as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the NOURISON mark in any way. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sep. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.). The WHOIS information of record identifies Respondent registrant as “Ahlyek SAHNDR5 SAHNDR5 / ahlyekSAHNDR5 Limited.” See Compl. Ex. E. Additionally, lack of evidence in the record to indicate that the respondent has been authorized to register a domain name using a complainant’s mark supports a finding that respondent does not have rights or legitimate interests in the disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum Jun. 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). The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the disputed domain name;
(f) Complainant contends that Respondent has made no effort to use the <noiurison.com> domain name since it was registered. Failure to make an active use of a domain name is not indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See Kohler Co. v xi long chen, FA 1737910 (Forum Aug. 4, 2017) (”Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <kohler-corporation.com> resolves to an inactive webpage displaying the message “website coming soon!”). Complainant notes Respondent’s domain name resolves to an inactive website. See Compl. Ex. F. Therefore, the Panel agrees that the <noiurison.com> domain name is inactively held, and as such is not being used in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii);
(g) Complainant argues that Respondent’s lack of rights and legitimate interests is demonstrated by its attempts to impersonate Complainant in fraudulent emails in order to conduct a phishing scheme. Use of a domain name to pass off as a complainant via fraudulent emails is not a use indicative of rights or legitimate interests in the name per Policy ¶¶ 4(c)(i) or (iii). See Lockheed Martin Corporation v. mail mail, FA1707001739473 (Forum, Aug. 9, 2017) (“Respondent does not use the <lm-corporation.com> domain name for any legitimate purpose because Respondent uses it to fraudulently obtain valuable and highly sensitive government contracts. Using a confusingly similar domain name to obtain information or money fraudulently fails to constitute a bona fide offering of goods or services or legitimate noncommercial or fair use”); see also Microsoft Corporation v. Terrence Green / Whois Agent / Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr. 4, 2016) (finding the respondent’s use of the disputed domain names to send fraudulent emails purportedly from agents of complainant to be 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)). Here, Complainant claims Respondent attempts to pass itself off as Complainant by using the <noiurison.com> domain name to set up a fraudulent email address in order to pose falsely as a representative of Complainant. See Compl. Ex. G. Complainant submits that Respondent has used this address to contact a supplier of Complainant’s in an attempt to order valuable goods. Id. The Panel agrees that Respondent’s use of the domain name indicates it lacks rights and legitimate interests in the name per Policy ¶¶ 4(c)(i) and (iii).
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, the examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which bad faith may be found. See, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000). The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. See, e.g., Match.com, LP v. BillZag and NWLAWS.ORG, D2004-0230 (WIPO June 2, 2004). Although Complainant has not made any arguments that would fit specifically within the bounds of the Policy ¶ 4(b) elements, the Panel will consider whether Respondent’s actions come within a nonexclusive inquiry under Policy ¶ 4(a)(iii).
Complainant argues that Respondent uses the <noiurison.com> domain name in bad faith to attempt to engage in a phishing scheme to obtain personal or financial information. Using a confusingly similar domain name to phish for personal or financial information can provide evidence of bad faith registration and use within the meaning of 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).”). Complainant submits that Respondent is using email addresses associated with the disputed domain name to create the false impression that Respondent is Complainant in an attempt to obtain fraudulently a transfer of funds to pay for fake merchandise orders. See Compl. Ex. G. The Panel agrees Respondent’s use of the name is evidence it has used the name in bad faith within the meaning of Policy ¶ 4(a)(iii) and that, as this was in all probability Respondent’s intention in registering the domain name, it also registered the domain name in bad faith.
Secondly, Complainant argues that Respondent’s failure to make an active use of the <noiurison.com> domain name indicates bad faith. Inactive holding of domain names that are confusingly similar to a complainant’s mark can be considered evidence of bad faith under Policy ¶ 4(a)(iii). See Dermtek Pharmaceuticals Ltd. v. Sang Im / Private Registration, FA1310001522801 (Forum Nov. 19, 2013) (holding that because the respondent’s website contained no content related to the domain name and instead generated the error message “Error 400- Bad Request,” the respondent had registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii)). Complainant contends Respondent’s disputed domain name resolves to an inactive webpage. See Compl. Ex. F. The Panel agrees with Complainant and finds that Respondent registered and uses the disputed domain name in bad faith pursuant to the Policy.
Thirdly, Complainant argues that Respondent engaged in typosquatting. A respondent engaging in typosquatting by registering domain names featuring common spelling errors of a mark can evince bad faith registration and use. See Chegg Inc. v. yang qijin, FA1503001610050 (Forum April 23, 2015) (“Users might mistakenly reach Respondent’s resolving website by misspelling Complainant’s mark. Taking advantage of Internet users’ typographical errors, known as typosquatting, demonstrates a respondent’s lack of rights or legitimate interests under Policy ¶ 4(a)(ii).”). Complainant submits that Respondent has not only intentionally misspelled Complainant’s mark but has also engaged in typosquatting with respect to other trademarks, which is also indicative of bad faith. Complainant submits Respondent has registered 48 other domain names that appear to be misspellings of unrelated company names. See Compl. Ex. H. The Panel finds that Respondent has exhibited typosquatting behavior, indicating it registered and used the disputed domain name in bad faith.
Fourthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the NOURISON mark and in view of the conduct that Respondent has engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <noiurison.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: February 8, 2018
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