United States Steel Corporation v. Isaac Goldstein / DOMAIN FOR SALE CHECK AFTERNIC.COM
Claim Number: FA1907001852967
Complainant is United States Steel Corporation (“Complainant”), represented by Michael D. Lazzara, Pennsylvania, USA. Respondent is Isaac Goldstein / DOMAIN FOR SALE CHECK AFTERNIC.COM (“Respondent”), Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ussteelbuilding.com>, registered with DropCatch.com 409 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 19, 2019; the Forum received payment on July 19, 2019.
On July 22, 2019, DropCatch.com 409 LLC confirmed by e-mail to the Forum that the <ussteelbuilding.com> domain name is registered with DropCatch.com 409 LLC and that Respondent is the current registrant of the name. DropCatch.com 409 LLC has verified that Respondent is bound by the DropCatch.com 409 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 July 23, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 12, 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@ussteelbuilding.com. Also on July 23, 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 August 13, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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
1. Complainant is in the steel industry. Complainant has rights in the U.S. STEEL mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,469,301, registered July 17, 2001). Respondent’s <ussteelbuilding.com>[i] domain name is confusingly similar to Complainant’s mark as Respondent merely adds the generic or descriptive term “building” and the “.com” generic top-level domain (“gTLD”).
2. Respondents has no rights or legitimate interests in the <ussteelbuilding.com> domain name as Respondent is not commonly known by the domain name nor has Respondent been licensed, authorized, or otherwise permitted by Complainant to use Complainant’s mark.
3. Furthermore, Respondent’s use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. Rather, Respondent uses the domain name to feature hyperlinks that compete with Complainant.
4. Finally, Respondent’s <ussteelbuilding.com> domain name was registered and is being used in bad faith, as the Respondent is attempting to attract Internet users for commercial gain.
5. Additionally, Respondent had actual knowledge of Complainant’s rights in its mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the U.S. STEEL mark. Respondent’s domain name is confusingly similar to Complainant’s U.S. STEEL mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <ussteelbuilding.com> domain name and that Respondent registered and uses the domain name 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 has rights in the U.S. STEEL mark through its registration of the mark with the USPTO (e.g., Reg. No. 2,469,301, registered July 17, 2001). Registration with the USPTO is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Therefore, the Complainant has rights in the U.S. STEEL mark under Policy ¶ 4(a)(i).
Complainant argues Respondent’s <ussteelbuilding.com> domain name is confusingly similar to Complainant’s mark as Respondent merely adds the descriptive term “building” and the “.com” generic top-level domain (“gTLD”). The mere addition to a descriptive term and a gTLD to a fully incorporated mark is generally not sufficient to distinguish a domain name from a mark in which a complainant has rights under Policy ¶ 4(a)(i). See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”). Therefore, Respondent’s <ussteelbuilding.com> domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <ussteelbuilding.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent has no rights or legitimate interests in the <ussteelbuilding.com> domain name as Respondent is not commonly known by the domain name nor has Respondent been licensed or authorized by the Complainant to use Complainant’s mark. Where a response is lacking, relevant WHOIS information can be used as evidence to show a respondent is or is not commonly known by a 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). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent lacks rights or legitimate interest in a domain name. 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)”). The WHOIS of record identifies the Respondent as “Isaac Goldstein/DOMAIN FOR SALE CHECK AFTERNIC.COM” and no information in the record indicates that Respondent is authorized to use Complainant’s mark or commonly known by the <ussteelbuilding.com> domain name. Therefore, the Panel holds that Respondent has no rights or legitimate interests in the <ussteelbuilding.com> domain name under Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent fails to use the <ussteelbuilding.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent is offering links that complete with Complainant’s business. Use of a domain name incorporating the mark of the complainant to offer hyperlinks that compete with the complainant’s business is not be a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”). Here, Complainant provided the <ussteelbuilding.com> domain name’s resolving webpage, showing links for products such as “Steel Buildings”, “Metal Works” and other links for goods and services that compete with Complainant’s business. Therefore, the Panel finds Respondent use of the <ussteelbuilding.com> domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues Respondent registered and uses the <ussteelbuilding.com> domain name in bad faith as Respondent is attempting to attract Internet users for commercial gain by offering competing hyperlinks. Registration and use of a domain name incorporating the mark of another to offer hyperlinks that compete with the complainant’s business is be evidence of bad faith under Policy ¶ 4(b)(iv). See Capital One Financial Corp. v. Above.com Domain Privacy / Above.com Domain Privacy, FA1501001598657 (Forum Feb. 20, 2015) (“This Panel agrees that Respondent’s use as shown in Exhibits C-D illustrates that Respondent here seeks commercial gain through a likelihood of confusion, as competing hyperlinks have been found to establish evidence of intent to seek commercial gain through referral fees, and thus demonstrates bad faith registration under Policy ¶ 4(b)(iv).”). Here, Complainant provided the <ussteelbuilding.com> domain name’s resolving webpage, showing links for products such as “Steel Buildings”, “Metal Works” and other links for goods and services that compete with Complainant’s business. Therefore, the Panel holds that Respondent registered and used the <ussteelbuilding.com> domain name in bad faith under Policy ¶ 4(b)(iv).
Additionally, Complainant argues Respondent registered and uses the <ussteelbuilding.com> domain name in bad faith as Respondent had actual knowledge of Complainant’s rights in the U.S. STEEL mark when the domain name was registered. Adequately demonstrate bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Here, Complainant points to its trademark registration and longstanding use in the marketplace, as well as the full incorporation of Complainant’s mark into the <ussteelbuilding.com> domain name as evidence of actual knowledge. Therefore, the Panel holds that Respondent had actual knowledge of Complainant’s rights in the U.S. STEEL mark under Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied 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 <ussteelbuilding.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: August 19, 2019
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page