GEARENCH v. Web Solutions ApS
Claim Number: FA1808001801565
Complainant is GEARENCH (“Complainant”), represented by Arthur Fouré of Brandstock Domains GmbH, Germany. Respondent is Web Solutions ApS (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gearench.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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 16, 2018; the Forum received payment on August 16, 2018.
On August 16, 2018, NameCheap, Inc. confirmed by e-mail to the Forum that the <gearench.us> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. 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 August 16, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 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@gearench.us. Also on August 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 September 6, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. 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
Complainant owns and operates a manufacturing business for hand tools and other products for use in various areas of the oil industry including exploration, drilling, production, refining and completion. Since 1926 these products have been sold under the trademark GEARENCH and Complainant has rights in the mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”). This trademark is made up of an arbitrary term and has no common or general meaning in any language. Respondent’s <gearench.us> domain name was registered on April 30, 2018 and is identical to Complainant’s GEARENCH mark as Respondent merely adds the “.us” country code top-level domain (“ccTLD”) to the fully incorporated mark.
Respondent has no rights or legitimate interests in the <gearench.us> domain name. Respondent is not authorized or licensed to use Complainant’s GEARENCH mark and is not commonly known by the disputed domain name. Additionally, Respondent is not using the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent is using the disputed domain name to impersonate and pass itself off as Complainant by sending emails to Complainant’s customers. Through this phishing scheme, false invoices and fabricated documents are sent bearing the GEARENCH mark and <gearench.us> domain name, and payments are sought. This scheme has already been successful in one instance resulting in a significant financial loss to one of the Complainant’s customers.
Respondent registered and uses the <gearench.us> domain name in bad faith. Based upon the reputation of the GEARENCH mark and the nature of Respondent’s activities, it is inconceivable that Respondent registered the disputed domain name without actual knowledge of Complainant’s rights in the trademark. Moreover, the Respondent has engaged in a phishing scheme targeted at Complainant’s customers. Respondent also registered the disputed domain name with false or misleading WHOIS information and has failed to respond to cease and desist letters sent by the Complainant. Finally, Respondent has engaged in a pattern of bad faith conduct based upon its having registered domain names using third party trademarks.
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;
(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:
(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 claims rights in the GEARENCH mark based upon registration of the mark with the USPTO. Registration of a mark with the USPTO is sufficient to establish rights in that mark. 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). The Panel therefore holds that Complainant’s registration of the GEARENCH mark with the USPTO is sufficient to establish rights in such mark under Policy ¶ 4(a)(i).
Complainant next argues Respondent’s <gearench.us> domain name is identical to the GEARENCH mark, as the name incorporates the mark in its entirety while adding only the “.us” ccTLD. Adding a ccTLD to a complainant’s mark is not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See CloudFlare, Inc. v. [Registrant], FA 1624251 (Forum Aug. 1, 2015) (“The inclusion of a ccTLD does not alleviate the similarity between a mark and a disputed domain name as per Policy ¶ 4(a)(i).”). The Panel therefore determines that the <gearench.us> domain name is confusingly similar to the GEARENCH mark under Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii), Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name. Should it succeed in this effort, the burden then shifts to Respondent to show that 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”).
Complainant argues that Respondent is not making a bona fide offering of goods or services via the <gearench.us> domain name, nor a legitimate noncommercial or fair use thereof. Instead, Complainant argues that Respondent is using an email associated with the disputed domain name to pass itself off as the Complainant in furtherance of a phishing scheme. Use of a disputed domain name to pass oneself off in furtherance of phishing is not indicative of rights or legitimate interests under Policy ¶¶ 4(c)(ii) and (iv). See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“Passing off as a complainant through e-mails is evidence that a respondent lacks rights and legitimate interests under [UDRP] Policy ¶¶ 4(c)(i) & (iii).”). In the present case, Respondent has engaged in a rather elaborate phishing scheme complete with supporting falsified documents. Complainant provides copies of email correspondence from Respondent requesting payments from Complainant’s customers. These emails are signed with certain names that purport to be Complainant’s employees. Complainant further provides documentation of Respondent’s false representations to Complainant’s customers including an organizational chart purporting to show the relationship between Complainant and another corporate entity to which Respondent asks its victims to direct funds. Also submitted is a copy of a letter, purportedly hand-signed by an “Inside Sales Manager” of Gearench, addressed “Dear Valued Customer”, and explaining that Complainant’s “parent company” has acquired another company to which Complainant’s customers are directed to pay funds. In view of the submitted evidence the Panel finds that Complainant’s claim of Respondent’s phishing scheme using the <gearench.us> domain name is well supported. The Panel thus concludes that Respondent is not using the disputed domain name for a bona fide offering of goods or services via the disputed domain name, nor a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(ii) and (iv).
Next, Complainant argues that Respondent has no rights or legitimate interests in the <gearench.us> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the GEARENCH mark in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by a disputed domain name per Policy ¶ 4(c)(iii). See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (where “the pertinent WHOIS information identifies the registrant of the domain name only as ‘Usama Ramzan,’ which does not resemble the domain name” the Panel concluded that Respondent has not been commonly known by the disputed domain name). Here, the WHOIS information of record identifies the registrant of the <gearench.us> domain name as “Web Solutions ApS,” and no information in the record indicates Respondent is commonly or legitimately known otherwise or was authorized to register a domain name incorporating Complainant’s mark. The Panel therefore finds, under Policy ¶ 4(c)(iii), that Respondent has not been commonly known by the <gearench.us> domain name.
Finally, the Panel finds nothing in the available evidence to indicate that Respondent has rights in a mark identical to the disputed domain name which would satisfy Policy ¶ 4(c)(i). See Pepsico, Inc. v. Becky, FA 117014 (Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
In light of the above, and in the absence of a response, the Panel finds that Respondent does not have any rights or legitimate interests in the <gearench.us> domain name under Policy ¶ 4(a)(ii).
Complainant claims that Respondent registered and uses the <gearench.us> domain name in bad faith. As a foundation for this, Complainant contends that it is inconceivable that Respondent could have registered the <gearench.us> domain name without actual knowledge of Complainant's rights in the mark in light of Respondent’s use of the <gearench.us> domain name and the GEARENCH mark. Based upon the reputation of the GEARENCH mark and Respondent’s perpetration of a phishing scheme based upon that mark, the Panel agrees with Complainant that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name. Evidence of actual knowledge is an adequate base upon which a finding of bad faith may be built under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Next, Complainant contends that Respondent is using the <gearench.us> domain name to pass itself off as Complainant in furtherance of a phishing scheme. Use of an email associated with a disputed domain name in this manner constitutes bad faith under Policy ¶ 4(b)(iv), as it demonstrates a respondent’s intent to register and use the domain name for the purposes of attracting commercial gain by creating a likelihood of confusion with a complainant’s trademark. 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 seeking to persuade such users to disclose personal information in the process). Here, the Panel notes that Complainant provides email correspondence from Respondent requesting payments from Complainant’s customers. Additional evidence has been submitted that Respondent created an elaborate scheme involving impersonation of Complainant employees and falsified documents claiming relationships between Complainant and other corporate entities. Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(iv) and, thus, ¶ 4(a)(iii).
The Complaint asserts that additional evidence of Respondent’s bad faith may be found in Respondent’s use of false company name and address information in the Whois record of the disputed domain name in an effort to conceal its identity. It also cites Respondent’s failure to respond to Complainant’s cease-and-desist notice as well as its ownership of three or four domain names that copy the trademarks of other companies who are not party to this case (i.e., a pattern of conduct involving cybersquatting). The Panel finds that all of these items further support the strong showing of bad faith already made by the evidence of Respondent’s phishing activities using the <gearench.us> domain name.
In light of the evidence and arguments presented, and in view of the lack of any contradicting evidence, arguments, or response from Respondent, the Panel finds that Respondent registered and used the <gearench.us> domain name bad faith under 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 <gearench.us> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: September 7, 2018
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page