True Value Company, L.L.C. v. Sean James
Claim Number: FA1901001825456
Complainant is True Value Company, L.L.C. (“Complainant”), represented by Gregory Golla of Merchant & Gould P.C., Minnesota, USA. Respondent is Sean James (“Respondent”), Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <trueevalue.com>, registered with Google 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 16, 2019; the Forum received payment on January 16, 2019.
On January 16, 2019, Google LLC confirmed by e-mail to the Forum that the <trueevalue.com> domain name is registered with Google LLC and that Respondent is the current registrant of the name. Google LLC has verified that Respondent is bound by the Google 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 21, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 11, 2019 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@trueevalue.com. Also on January 21, 2019, 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 17, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant is an international manufacturer and wholesale distributor for a cooperative of approximately 8,000 retail hardware stores, most of which operate under TRUE VALUE service marks and sell a large range of products bearing the TRUE VALUE mark.
Complainant has rights in the TRUE VALUE mark based on its registration with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <trueevalue.com> domain name is confusingly similar to Complainant’s mark because respondent adds an extra “e” to Complainant’s fully incorporated mark.
Respondent lacks rights or legitimate interest in the <trueevalue.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent received permission or license to use Complainant’s mark. Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Respondent instead attempts to pass off as Complainant in furtherance of a phishing scheme. Additionally, Respondent fails to make active use of the disputed domain name as the resolving webpage which offers no content on the resolving webpage.
Respondent registered and uses the disputed domain name in bad faith. Respondent engaged in a pattern of bad faith as it has prevented Complainant from reflecting its TRUE VALUE mark in a domain name. Respondent attempts to pass off as the CEO of Complainant’s company in an attempt to collect personal and/or financial information. Respondent used email from the at-issue domain name to pose as Complainant’s CEO. Respondent used the bogus email to contact another employee of Complainant and to solicit from such employee confidential financial information about Complainant’s accounts. Additionally, Respondent registered the disputed domain name with false contact information. Finally, Respondent had actual notice of Complainant’s rights in the mark based on Respondent’s use of the disputed domain name in furtherance of a phishing scheme and this also demonstrates bad faith registration.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the TRUE VALUE mark through the registration of such mark with the USPTO.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in the TRUE VALUE trademark.
Respondent uses the at-issue domain name to host email and to use such email pass itself off as Complainant’s CEO in furtherance of a phishing scheme.
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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant owns several USPTO registered trademarks for TRUE VALUE. The mark’s USPTO trademark registrations are conclusive evidence of Complainant’s rights in the marks 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).
Respondent’s <trueevalue.com> domain name contains Complainant’s TRUE VALUE trademark with its space replaced by the letter “e.” To complete the domain name all is followed by the top-level domain name “.com.” The slight differences between Complainant’s trademark and the <trueevalue.com> domain name fail to distinguish the domain name from Complainant’s mark for the purpose of Policy ¶ 4(a)(i). The Panel thus concludes that Respondent’s <trueevalue.com> domain name is confusingly similar to Complainant’s TRUE VALUE trademark. See OpenTable, Inc. v. Above.com Domain Privacy, FA 1626187 (Forum Aug. 10, 2015) (“Respondent’s <oipentable.com> domain name is confusingly similar to the OPENTABLE mark under Policy ¶ 4(a)(i) because the disputed domain merely adds the letter ‘i’ . . . ”); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
The WHOIS information for the at-issue domain name identifies the domain name’s registrant as “Sean James” and the record before the Panel contains no evidence that otherwise tends to prove that Respondent is commonly known by the <trueevalue.com> domain name. The Panel therefore concludes that Respondent is not commonly known by the <trueevalue.com> domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent used the <trueevalue.com> domain name to pass itself off as Complainant’s CEO to facilitate an email based phishing scheme aimed at acquiring confidential financial information. On the other hand, Respondent fails to make active use of the domain name; the domain name has no web presence. In either case, Respondent’s use of the domain name is neither a bona fide offering of goods or services under Policy ¶ 4 (c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). 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.”); see also, Dell Inc. v. link growth / Digital Marketing, FA 1785283 (Forum June 7, 2018) (“Respondent’s domain names currently display template websites lacking any substantive content. The Panel finds that Respondent has does not have rights or legitimate interests with respect of the domain name per Policy ¶¶ 4(c)(i) or (iii).”)
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name under Policy ¶ 4(a)(ii).
The at-issue domain name was registered and is being used in bad faith. As discussed below without limitation, Policy ¶ 4(b) bad faith circumstances are present and there is additional non-Policy ¶ 4(b) evidence from which the Panel may independently conclude that Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii).
First and as mentioned above regarding rights and legitimate interests, Respondent uses email originating from the at-issue domain name to pass itself off as Complainant’s CEO in furtherance of a phishing scheme. To wit, Respondent, posing as Complainant’s CEO, contacted another employee of Complainant and attempted to trick such employee into giving up Complainant’s confidential financial information. Use of the <trueevalue.com> domain name in this manner demonstrates Respondent’s bad faith under Policy ¶¶ 4(b)(iii) and/or (iv). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the <abbuie.com> domain name to impersonate Complainant’s CEO. Such use is undeniably disruptive to Complainant’s business and demonstrates bad faith pursuant to Policy ¶ 4(b)(iii), and/or Policy ¶ 4(b)(iv)”).
Additionally, Respondent had actual knowledge of Complainant’s rights in the TRUE VALUE mark when it registered <trueevalue.com>. Respondent’s actual knowledge is evident from Respondent’s use of the <trueevalue.com> domain name to host fraudulent email pretending to be from Complainant’s CEO. Registering and using a confusingly similar domain name with knowledge of Complainant’s rights in such domain name shows bad faith registration and use pursuant to Policy ¶4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); see also, 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <trueevalue.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: February 20, 2019
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