DECISION

 

VF Wines, Inc. v. Michea kalu / James co., ltd

Claim Number: FA1906001846467

 

PARTIES

Complainant is VF Wines, Inc. (“Complainant”), represented by Vanessa A. Ignacio of Lowenstein Sandler LLP, New Jersey, USA.  Respondent is Michea kalu / James co., ltd (“Respondent”), United Arab Emirates.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <vinfolio.us>, registered with Hosting Concepts B.V. d/b/a Openprovider.

 

PANEL

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on June 4, 2019; the Forum received payment on June 4, 2019.

 

On June 11, 2019, Hosting Concepts B.V. d/b/a Openprovider confirmed by e-mail to the Forum that the <vinfolio.us> domain name is registered with Hosting Concepts B.V. d/b/a Openprovider and that Respondent is the current registrant of the name.  Hosting Concepts B.V. d/b/a Openprovider has verified that Respondent is bound by the Hosting Concepts B.V. d/b/a Openprovider registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).

 

On June 18, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 8, 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@vinfolio.us.  Also on June 18, 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 July 10, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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 to the usTLD Dispute Resolution Policy (“Rules”).  Therefore, the Panel issues 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.   Complainant

1.    Complainant is the leading source for fine wine in the United States. Complainant has rights in the VINFOLIO mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,069,010, registered March 14, 2006). See Compl. Ex. 2. Respondent’s <vinfolio.us> domain name is identical or confusingly similar to Complainant’s VINFOLIO mark as the disputed domain name incorporates the VINFOLIO mark in whole and adds only the country-code top-level domain (ccTLD) “.us.”

 

2.    Respondent has no rights or legitimate interests in the <vinfolio.us> domain name as Respondent has not been granted a license or other rights to use the VINFOLIO mark. Additionally, Respondent is not commonly known by the disputed domain name. Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent impersonates an employee of Complainant in an attempt phish for financial information.

 

3.    Respondent registered and is using the <vinfolio.us> domain name in bad faith as Respondent uses an email associate with the disputed domain name in furtherance of a phishing scheme. Respondent also had constructive or actual knowledge of Complainant’s rights in the VINFOLIO mark as Respondent was aware of Complainant’s business because Respondent used an infringing domain name to impersonate Complainant.

                              

B.   Respondent

1.    Respondent failed to submit a Response.

 

FINDINGS

1.    Respondent’s <vinfolio.us> domain name is confusingly similar to Complainant’s VINFOLIO mark.

 

2.    Respondent does not have any rights or legitimate interests in the <vinfolio.us> domain name.

 

3.    Respondent registered or used the <vinfolio.us> domain name in bad faith.

 

DISCUSSION

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 or 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 set forth in a complaint; however, the Panel denies 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”).

 

Identical and/or Confusingly Similar

Complainant claims to have rights in the VINFOLIO mark through its registration with the USPTO. Registration of a mark with the USPTO is sufficient in establish rights in the mark per Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Here, Complainant has provided the Panel with a copy of its USPTO registration for the VINFOLIO mark (e.g. Reg. No. 3,069,010, registered March 14, 2006). See Compl. Ex. 2. Therefore, the Panel finds that Complainant has rights in the VINFOLIO mark per Policy ¶ 4(a)(i).

 

Complainant argues that Respondent’s <vinfolio.us> domain name is identical or confusingly similar to Complainant’s VINFOLIO mark as the disputed domain name incorporates the VINFOLIO mark in whole and adds only ccTLD “.us.” Addition of a ccTLD is irrelevant when determining whether a mark is identical or confusingly similar. See Philip Morris USA Inc. v. Naveen Patnayak, FA 1731422 (Forum June 12, 2017) (“First, the addition of “.us” is inconsequential to the claim of confusing similarity.”) Therefore, the Panel finds that Respondent’s <vinfolio.us> domain name is identical or confusingly similar to Complainant’s VINFOLIO mark per Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

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), then the burden shifts to Respondent to show 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 has no rights or legitimate interests in the <vinfolio.us> domain names as Respondent has not been granted a license or other rights to use the VINFOLIO mark nor is Respondent commonly known by the disputed domain name. A Respondent may lack rights or legitimate interests in a domain name if they are not licensed by a complainant to use a mark and/or they are not commonly known by the disputed domain name by the provided WHOIS information per Policy ¶ 4(c)(iii). See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”); see also Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Here, there is nothing in the record to suggest that Complainant has licensed or authorized Respondent to use the VINFOLIO mark in any way. Additionally, the provided WHOIS information identifies “Michea Kalu” as Respondent. Therefore, the Panel finds that Respondent has no rights or legitimate interests in the <vinfolio.us> domain name per Policy ¶ 4(c)(iii).

 

The Panel further agrees that there is nothing in the available evidence which indicates that Respondent has rights in a mark identical to the disputed domain name, which would serve to 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)). Therefore, this Panel concludes that Respondent has failed Policy ¶ 4(c)(i).

 

Complainant argues that Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use of the <vinfolio.us> domain name. Instead, Respondent uses an email address associated with the disputed domain name to impersonate an employee of Complainant in an attempt to phish for financial information. Use of a 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)(ii) or (iv). See 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 has provided email communications in which Respondent is purportedly impersonating an employee of Complainant trying to obtain financial information. See Compl. Exs. 5, 6, and 7. Therefore, the Panel finds that Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use of the disputed domain name per Policy ¶ 4(c)(ii) or (iv).

 

Registration or Use in Bad Faith

Complainant argues that Respondent registered and is using the <vinfolio.us> domain name in bad faith as Respondent is using an email associated with the disputed domain name to pass off as an employee of Complainant’s business in furtherance of a phishing scheme. Using a disputed domain name to pass off as an employee of a complainant via email can demonstrate bad faith under Policy ¶¶ 4(b)(iii) and (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)”). The Panel recalls Complainant has provided email communications in which Respondent is purportedly impersonating an employee of Complainant trying to obtain financial information. See Compl. Exs. 5, 6, and 7.. Therefore, the Panel finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶¶ 4(b)(iii) and (iv).

 

Complainant also argues that respondent registered and uses the disputed domain name in bad faith as Respondent uses the disputed domain name in furtherance of phishing. Use of a disputed domain name in furtherance of a phishing scheme may be evidence of bad faith registration and use per 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).”). Here, Complainant has provided the Panel with email correspondence that entails Respondent using the domain name in association with an email address to phish for and obtain financial information. Therefore, the Panel finds that Respondent has registered and used the disputed domain name in bad faith per Policy ¶ 4(a)(iii).

 

Finally, Complainant contends that Respondent had constructive or actual knowledge of Complainant’s rights in the VINFOLIO mark as evidenced by Respondent using the disputed domain name to impersonate Complainant’s employee. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, actual knowledge of Complainant’s rights in the mark prior to registering the disputed domain name is adequate to find 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.”). Use of a disputed domain name to pass off as an employee in furtherance of a phishing scheme can demonstrate a respondent’s actual knowledge of a complainant’s rights in a mark. See Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum Jan. 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.”). The Panel agrees and finds that Respondent had actual knowledge of Complainant’s rights in the VINFOLIO mark, thus constituting bad faith registration per Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <vinfolio.us> domain name be TRANSFERRED from Respondent to Complainant.

 

 

John Upchurch, Panelist

Dated:  July 22, 2019