Digi-Key Corporation v. admin administration
Claim Number: FA1810001812413
Complainant is Digi-Key Corporation (“Complainant”), represented by Joel D. Leviton of Stinson Leonard Street LLP, Minnesota, USA. Respondent is admin administration (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <digikeyus.com>, registered with Wild West Domains, 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.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 18, 2018; the Forum received payment on October 19, 2018.
On October 22, 2018, Wild West Domains, LLC confirmed by e-mail to the Forum that the <digikeyus.com> domain name is registered with Wild West Domains, LLC and that Respondent is the current registrant of the name. Wild West Domains, LLC has verified that Respondent is bound by the Wild West Domains, 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 October 26, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 15, 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@digikeyus.com. Also on October 26, 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 November 18, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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 is a leading distributor of electronic parts. Complainant offers its services through a network of websites, where customers can order more than one million electronic parts that are available for shipment to more than 170 countries. Complainant has rights in the DIGI-KEY mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,487,965, registered May 10, 1988). See Compl. Ex. 5. Respondent’s <digikeyus.com> domain name is identical and confusingly similar to Complainant’s mark as it merely removes the hyphen and adds the geographic term “us” and the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <digikeyus.com> domain name. Respondent is not commonly known by the disputed domain name, as the WHOIS information lists Respondent as “admin administration.” See Amend. Compl. Ex. 2. Complainant also has not authorized, licensed, or otherwise permitted Respondent to use the mark for any purpose. Further, Respondent does not use the disputed 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 to further a phishing scheme. See Compl. Ex. 6.
Respondent registered and uses the <digikeyus.com> domain name in bad faith. Respondent uses the domain name in connection with a phishing scheme by attempting to trick Complainant’s customer into sending payments to Respondent’s designated account. See Compl. Ex. 6. Further, Respondent clearly had knowledge of Complainant’s rights in the mark when it registered the domain name given its incorporation of the DIGI-KEY mark in the domain name used to impersonate Complainant. See Compl. Ex. 6.
B. Respondent
Respondent failed to submit a Response in this proceeding. The disputed domain name, <digikeyus.com>, on October 1, 2018.
The Panel finds that the dispute domain name is confusingly similar with Complainant’s valid and subsisting trademark; that Respondent lacks any rights or legitimate interests in or to the disputed domain name; and that Respondent has engaged in bad faith use and registration of the disputed domain name.
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 Panel finds that the dispute domain name, <digikeyus.com>, is confusingly similar to Complainant’s valid and subsisting trademark, DIGI-KEY. Complainant has adequately plead its rights and interests in and to this trademark. Respondent arrives at the disputed domain name by merely removing the hyphen and adding the geographic term “us” and the “.com” generic top-level domain (“gTLD”). This is insufficient to distinguish the disputed domain name from Complainant’s trademark.
As such, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark.
The Panel further finds that Respondent lacks any rights or legitimate interests in or to the disputed domain name. Respondent has no right, permission or license to register the disputed domain name. Respondent is not commonly known by the disputed domain name.
Furthermore, Respondent apparently does not use the disputed 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 itself off as Complainant to further a phishing scheme. See Compl. Ex. 6.
As such, the Panel finds that Respondent lacks any rights or legitimate interests in or to the disputed domain name.
The Panel also finds that Respondent has engaged in bad faith use and registration of the disputed domain name. 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). While Complainant has not made any arguments that would fit within the bounds of Policy ¶ 4(b) elements, the Panel will consider Respondent’s actions under a nonexclusive inquiry of Policy ¶ 4(a)(iii).
Complainant claims that Respondent registered and uses the disputed domain name in bad faith as Respondent uses the domain name in connection with a phishing scheme by attempting to trick Complainant’s customer into sending payments to Respondent’s designated account. Using a confusingly similar domain name to phish for 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 provides a copy of an email Respondent sent to an individual using the domain name, which directs users to send all future payments to a bank account specified in the email. See Compl. Ex. 6. Thus, the Panel finds that Respondent uses the disputed domain name to engage in a phishing scheme, indicative of bad faith registration and use under Policy ¶ 4(a)(iii).
Further, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the DIGI-KEY mark at the time of registering the <digikeyus.com> domain name. Actual knowledge of a complainant's rights in a mark prior to registering a confusingly similar domain name can evince bad faith 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). Complainant contends that Respondent clearly had knowledge of Complainant’s rights in the mark when it registered the domain name given its incorporation of the DIGI-KEY mark in the domain name used to impersonate Complainant. See Compl. Ex. 6. The Panel finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith under Policy ¶ 4(a)(iii).
As such, the Panel finds that Respondent has engaged in bad faith use and registration of the disputed domain name.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be granted.
Accordingly, it is Ordered that the <digikeyus.com> domain name be transferred from Respondent to Complainant.
Kenneth L. Port, Panelist
Dated: November 19, 2018
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