Steelcase Inc. v. Feyisayo Adesina
Claim Number: FA1905001843177
Complainant is Steelcase Inc. (“Complainant”), represented by Lisa R. Harris, Michigan, United States. Respondent is Feyisayo Adesina (“Respondent”), Nigeria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <careers-steelcase.com>, registered with GoDaddy.com, 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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 14, 2019; the Forum received payment on May 14, 2019.
On May 15, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <careers-steelcase.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 May 15, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 4, 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@careers-steelcase.com. Also on May 15, 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 June 6, 2019, 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 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 global leader in office furniture industry, delivering a better work experience to its customers by providing products, services, and insights into the ways people work. Complainant has rights in the trademark STEELCASE through its longstanding use in commerce dating back to 1920, and its registration with the United States Patent and Trademark Office (“USPTO”) dating back to 1950. Respondent’s <careers-steelcase.com> domain name, registered on May 8, 2019, is confusingly similar to Complainant’s STEELCASE mark as Respondent only adds the generic term “careers” and a hyphen preceding the STEELCASE mark.
Respondent lacks rights and legitimate interests in the <careers-steelcase.com> domain name as Respondent is not commonly known by the disputed domain name. Respondent registered and uses the disputed domain name to infringe on Complainant’s rights in the STEELCASE mark and to trade off of Complainant’s goodwill in an elaborate phishing scheme to obtain personal information from unsuspecting job applicants who respond to a fraudulent advertisement. Furthermore, Respondent’s use of the <careers-steelcase.com> domain name is not a bona fide offering of goods and services or legitimate noncommercial or fair use as the domain name resolves to a locked page.
Respondent registered and is using the disputed domain name in bad faith by attempting to confuse, for commercial gain, email recipients into believing they are communicating with Complainant about a job opportunity. Lastly, Respondent was well-aware of Complainant’s rights in the STEELCASE mark due to Complainant’s use of the mark and the fame the mark has achieved.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant claims to have rights in the trademark STEELCASE mark through its registrations with the USPTO. Registration of a mark with the USPTO is sufficient to demonstrate rights in a mark per policy ¶ 4(a)(i). See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i)). Here, Complainant has provided this Panel with copies of certain of its USPTO registrations for the STEELCASE mark. Therefore, the Panel finds that Complainant has rights in the STEELCASE mark per Policy ¶ 4(a)(i).
Complainant further argues that Respondent’s <careers-steelcase.com> domain name is confusingly similar to Complainant’s STEELCASE mark as Respondent only adds the generic term “careers” and a hyphen preceding the STEELCASE mark. Panels have routinely held that the addition of a generic term does not distinguish the disputed domain name from a complainant’s trademark pursuant to Policy ¶ 4(a)(i). See Starbucks Corporation d/b/a Starbucks Coffee Company v. Waseem A Ali / Micron Web Services, FA 1785616 (Forum June 8, 2018) (finding the <starbucksreal.com> domain name to be confusingly similar to the STARBUCKS mark, as “the addition of the generic term ‘real’ to Complainant's mark does not distinguish the Domain Name from Complainant's trade mark pursuant to the Policy.”). Therefore, the Panel finds that Respondent’s <careers-steelcase.com> is confusingly similar to Complainant’s STEELCASE mark.
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). Should it succeed in that 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 asserts that Respondent has no rights or legitimate interests in the <careers-steelcase.com> domain name because Respondent is not commonly known by the disputed domain name, nor was Respondent authorized to use Complainant’s STEELCASE mark. Where there is no response, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Further, lack of authorization to use a complainant’s mark may support a finding that the respondent is not commonly known by the disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 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 notes that the WHOIS information for the <careers-steelcase.com> domain name identifies Respondent as “Feyisayo Adesina” and there is nothing in the record to suggest that Respondent is known otherwise or that it is authorized to use the STEELCASE mark. Thus, in the absence of a Response or other submission in this case by Respondent, the Panel finds that Respondent is not commonly known by the <careers-steelcase.com> domain name per Policy ¶ 4(c)(ii).
Complainant next argues that Respondent registered and uses the disputed domain name to infringe on Complainant’s rights in the STEELCASE mark and to trade off of Complainant’s goodwill in an elaborate phishing scheme to obtain personal information. Panels have held in the past that using a disputed domain name in furtherance of a phishing scheme is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) and (iii). Chevron Intellectual Property LLC v. Thomas Webber / Chev Ronoil Recreational Sport Limited, FA 1661076 (Forum Mar. 15, 2016) (finding that the respondent had failed to provide a bona fide offering of goods or services or any legitimate noncommercial or fair use stating “Respondent is using an email address to pass themselves off as an affiliate of Complainant. Complainant presents evidence showing that the email address that Respondent has created is used to solicit information and money on false pretenses. The disputed domain name is being used to cause the recipients of these emails to mistakenly believe Respondent has a connection with Complainant and is one of the Complainant’s affiliates.”). Here, Complainant provides the Panel with evidence of Respondent’s “elaborate phishing scheme to obtain personal information from persons applying for a job.” This consists of a copy of a job posting on a popular professional social media website and a series of emails between would-be job applicants and email addresses designed to impersonate certain actual employees of the Complainant. In the course of these emails, the job applicants are asked to send copies of their identification cards or drivers licenses as well as certain personal information to an email address that uses the <careers-steelcase.com> domain name. In sum, the Respondent uses the disputed domain name to engage in a phishing scheme that leverages the goodwill of Complainant’s mark in an effort to obtain personal information under false pretenses. As such, the Panel finds that Respondent has not used the disputed domain name for a bona fide offering of goods or services or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(i) and (iii).
Complainant additionally contends that Respondent’s use of the <careers-steelcase.com> domain name is not a bona fide offering of goods and services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and (iii) as the disputed domain name resolves to a locked page. Panels have routinely held that a domain name that resolves to a locked or parked page is not a bona fide offering of goods and services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and (iii). See Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Here, Complainant has provided the Panel with a screenshot of the web content that resolves from the disputed domain name. This shows a “403 Forbidden error” and a message that the user “does have permission to access / on this server”. Therefore, the Panel agrees with Complainant and finds that Respondent’s use of the domain name to resolve to a locked or inaccessible page is also not a bona fide offering of goods and services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and (iii).
Complainant asserts that its trademark rights and registrations for the STEELCASE mark existed well before the registration of the disputed domain name. Complainant argues that Respondent has constructive knowledge of Complainant's rights in the mark. Panels have concluded that constructive notice is not sufficient to support a bad faith finding. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy.") However, a respondent’s actual knowledge of a complainant’s mark may support a finding of bad faith. See Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration). Here, the Panel finds that, due to the fame of Complainant's mark and Respondent’s use of the disputed domain name for an elaborate phishing exploit targeting people applying for jobs at Complainant’s company, Respondent had actual knowledge of the mark and of Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant next argues that Respondent registered and is using the disputed domain name in bad faith by attempting to confuse, for commercial gain, would-be job applicants and email recipients into believing they are communicating with Complainant. Panels have held in the past that using a disputed domain name to pass oneself off as a complainant is evidence of bad faith registration and use per Policy ¶ 4(b)(iv). See Qatalyst Partners LP v. Devimore, FA 1393436 (Forum July 13, 2011) (finding that using the disputed domain name as an e-mail address to pass itself off as the complainant in a phishing scheme is evidence of bad faith registration and use per Policy ¶ 4(b)(iv)). Here, Complainant has provided screenshots of email communications between Respondent and those seeking employment with Complainant that show Respondent is using the goodwill of the STEELCASE mark to obtain personal information from email recipients. Therefore, the Panel finds that Respondent’s use of the domain name to pass itself off as Complainant is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <careers-steelcase.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: June 7, 2019
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