LANXESS Deutschland GmbH v. Jack Owens
Claim Number: FA1806001792039
Complainant is LANXESS Deutschland GmbH (“Complainant”), represented by Mark V.B. Partridge of Partridge IP Law P.C., USA. Respondent is Jack Owens (“Respondent”), Louisiana, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lanxessgroup.us>, registered with NameCheap, Inc.
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 June 16, 2018; the Forum received payment on June 16, 2018.
On Jun 18, 2018, NameCheap, Inc. confirmed by e-mail to the Forum that the <lanxessgroup.us> domain name(s) is/are registered with NameCheap, Inc. and that Respondent is the current registrant of the names. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On June 19, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 9, 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@lanxessgroup.us. Also on June 19, 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 July 13, 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 usTLD 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 usTLD Policy, usTLD 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 is in the business of developing, manufacturing and marketing of chemical intermediates, additives, specialty chemicals and plastics since 2004. Complainant has rights in the LANXESS mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,154,793, registered Oct. 10, 2006). Respondent’s <lanxessgroup.us>[i] domain name is confusingly similar to Complainant’s LANXESS mark as Respondent merely adds the generic term “group” and the “.us” country code top-level domain (“ccTLD”) to the mark.
2. Respondent has no rights or legitimate interests in the <lanxessgroup.us> domain name. Respondent is not licensed or otherwise authorized to use Complainant’s LANXESS mark and is not commonly known by the domain name. Additionally, Respondent is not using the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent users the domain name to operate a pay-per-click.
3. Further, Respondent attempts to impersonate one of Complainant’s employees in furtherance of a phishing scheme.
4. Respondent registered and uses the <lanxessgroup.us> domain name in bad faith. Respondent attempts to attract, for commercial gain, users to the resolving website where Respondent hosts a pay-per-click website. Additionally, Respondent attempts to pass off as Complainant in furtherance of an email phishing scheme.
5. Finally, Respondent had constructive notice and actual knowledge of Complainant’s rights in the LANXESS mark prior to registering the domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the LANXESS mark. Respondent’s domain name is confusingly similar to Complainant’s LANXESS mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <lanxessgroup.us> 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.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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 has rights in the LANXESS mark through its trademark registration with the USPTO. Registering a mark with the USPTO is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). Complainant provides a copy of its USPTO registration for the LANXESS (e.g., Reg. No. 3,154,793, registered Oct. 10, 2006).
Next, Complainant contends Respondent’s <lanxessgroup.us> domain name is confusingly similar to Complainant’s LANXESS mark. Specifically, Complainant has shown that Respondent adds a generic term and a ccTLD to the mark. Adding a generic term or a TLD to a complainant’s mark does not mitigate any confusing similarity between the domain name and mark under Policy ¶ 4(a)(i). See Morgan Stanley v. Eugene Sykorsky / private person, FA 1651901 (Forum Jan. 19, 2016) (concluding that the addition of a generic term and top level domain to a trademark is inconsequential under a Policy ¶ 4(a)(i) analysis.); see also Allied Bldg. Prods. Corp. v. Henkel, FA 827652 (Forum Dec. 11, 2006) (holding that “it is well established that the top-level domain, here “.us,” is insignificant with regard to UDRP analysis” when determining confusing similarity). Consequently, the Panel holds that Respondent’s domain name is confusing similar to the LANXESS mark per 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 <lanxessgroup.us> 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 asserts Respondent has no rights or legitimate interests in the <lanxessgroup.us> domain name. Specifically, Complainant has provided evidence that Respondent is not licensed or otherwise authorized to use Complainant’s LANXESS mark and is not commonly known by the domain name. Where a response is lacking, relevant WHOIS information may be used to determine whether a respondent is commonly known by a domain name under Policy ¶ 4(c)(iii). 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)). Complainant provides a copy of the WHOIS information which identifies Respondent as “Jack Owens.” Therefore, the Panel finds Respondent is not commonly known by the <lanxessgroup.us> domain name per Policy ¶ 4(c)(iii).
Additionally, Complainant claims Respondent fails to use the <lanxessgroup.us> domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Complainant has provided evidence that Respondent uses the domain name to host a pay-per-click website. Use of a domain name containing a mark in which another has rights to generate revenue through click-through fees does not constitute as a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(ii) and (iv). See Materia, Inc. v. Michele Dinoia, FA1507001627209 (Forum Aug. 20, 2015) (“The Panel finds that Respondent is using a confusingly similar domain name to redirect users to a webpage with unrelated hyperlinks, that Respondent has no other rights to the domain name, and finds that Respondent is not making a bona fide offering or a legitimate noncommercial or fair use.”). Complainant provides a screenshot of the domain name’s resolving website which features a parked page with hyperlinks. Thus, the Panel holds that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(ii) and (iv).
Further, Complainant has proven that Respondent attempts to pass off as Complainant through an email phishing scheme associated with the <lanxessgroup.us> domain name. Use of domain name to obtain personal or financial information from email phishing is not indicative of any rights or legitimate interests under Policy ¶ 4(a)(ii). See DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (”Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”). Complainant provides copies of emails sent from an email address associated with the <lanxessgroup.us> domain name and evidence that Respondent impersonates one of Complainant’s employees in an attempt to obtain information through phishing. Thus, the Panel agrees with Complainant and finds Respondent lacks rights or legitimate interests per Policy ¶ 4(a)(ii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant claims Respondent registered and uses the <lanxessgroup.us> domain name in bad faith. Specifically, Complainant alleges Respondent attempts to attract, for commercial gain, users to the domain name which resolves to a pay-per-click website. Use of a confusing similar domain name containing a mark in which another has rights to generate revenue through click-through fees amounts to bad faith under Policy ¶ 4(b)(iv). See Dovetail Ventures, LLC v. Klayton Thorpe, FA1506001625786 (Forum Aug. 2, 2015) (holding that the respondent had acted in bad faith under Policy ¶ 4(b)(iv), where it used the disputed domain name to host a variety of hyperlinks, unrelated to the complainant’s business, through which the respondent presumably commercially gained). Complainant provides a screenshot of the disputed domain name’s resolving website which features a variety of hyperlinks. See Amend. Compl. Annex 4. Therefore, the Panel agrees that Respondent registered and uses the <lanxessgroup.us> domain name in bad faith per Policy ¶ 4(b)(iv).
Additionally, Complainant alleges Respondent attempts to obtain users’ personal information through an email phishing scheme associated with the <lanxessgroup.us> domain name. Use of a domain name to engage in email phishing demonstrates bad faith under Policy ¶ 4(a)(iii). See Emdeon Business Services, LLC v. HR Emdeon Careers, FA1507001629459 (Forum Aug. 14, 2015) (finding that the respondent had engaged in an email phishing scheme indicating bad faith under Policy ¶ 4(a)(iii), where respondent was coordinating the disputed domain name to send emails to Internet users and advising them that they had been selected for a job interview with the complainant and was persuading the users to disclose personal information in the process). Complainant provides copies of emails sent by Respondent to Complainant’s customers appearing to impersonate one of Complainant’s employees. Therefore, the Panel holds that Respondent engages in phishing, and thus uses the <lanxessgroup.us> domain name in bad faith per Policy ¶ 4(a)(iii).
Furthermore, Complainant also contends Respondent registered the <lanxessgroup.us> domain name with actual knowledge of Complainant's rights in the mark. The Panel agrees that the record as a whole shows Respondent clearly had actual knowledge of Complainant's rights in the mark prior to registering the domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lanxessgroup.us> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: July 19, 2018
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