LANXESS Deustschland GmbH v. Stephen Mark
Claim Number: FA1908001856706
Complainant is LANXESS Deustschland GmbH (“Complainant”), represented by Mark V.B. Partridge of Partridge IP Law P.C., Illinois, USA. Respondent is Stephen Mark (“Respondent”), Oregon, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lanxees.us>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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 August 12, 2019; the Forum received payment on August 12, 2019.
On August 13, 2019, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <lanxees.us> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On August 14, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 3, 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@lanxees.us. Also on August 14, 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 September 4, 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 to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant operates under its LANXESS trademarks in connection with the development, manufacturing and marketing of chemical intermediates, additives, specialty chemicals and plastics since 2004. Complainant provides these products to customers around the world.
Complainant has rights in the LANXESS mark through its registration with the United States Patent and Trademark Office (“USPTO”) and European Union Intellectual Property Office (“EUIPO”).
Respondent’s <lanxees.us> domain name is confusingly similar to Complainant’s LANXESS mark. Respondent incorporates the entirety of Complainant’s LANXESS mark except replacing the first “s” with an “e.” Respondent also adds the top-level domain “.us.”
Respondent has no rights or legitimate interests in the <lanxees.us> domain name as Respondent is not commonly known by the disputed domain name. Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the at-issue domain name to divert internet users to a fraudulent banking services website. Furthermore, Respondent attempts to impersonate an employee of Complainant.
Respondent registered and is using the <lanxees.us> domain name in bad faith as Respondent engages in a fraudulent email scheme. Respondent also engages in the practice of typosquatting. Lastly, Respondent had knowledge of Complainant’s rights in the LANXESS mark prior to registration of the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the LANXESS trademark through its registration of such mark with the USPTO as well as through its EUIPO registrations of such mark.
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 LANXESS trademark.
Respondent uses the at-issue domain name to address a fraudulent banking services website. Furthermore, Respondent also attempts to impersonate an employee of Complainant via email originating from the at-issue domain name in furtherance of fraud.
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 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 or identical to a trademark in which Complainant has rights.
Complainant shows it has USPTO registrations as well as EUIPO registrations for its LANXESS trademark. Such registrations are each persuasive evidence of Complainant’s rights in the LANXESS mark pursuant to Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also, Alibaba Group Holding Limited v. YINGFENG WANG, FA 1568531 (Forum Aug. 21, 2014) (“Complainant has rights in the ALIBABA mark under the Policy through registration with trademark authorities in numerous countries around the world.”)..
Respondent’s domain name contains Complainant’s LANXESS trademark with its first letter “s” substituted with the letter “e” and concludes with the top level domain name “.us.” The slight differences between Respondent’s <lanxees.us> domain name and Complainant’s trademark are insufficient to distinguish one from the other for the purposes of Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent’s <lanxees.us> domain name is identical to Complainant’s LANXESS trademark. See Oracle International Corporation v. DAINA TRADING COMPANY LIMITED, FA 1612604 (Forum May 11, 2015) (finding confusing similarity in all disputed domain names where “[t]he <oralce.com> domain name transposes the letters ‘l’ and ‘c.’ The <orcale.com> domain name transposes the letters ‘c’ and ‘a.’ The <oracel.com> domain name transposes the letters ‘e’ and ‘l.’” Thus, the Panel held, “There is confusing similarity where a disputed domain name merely transposes letters of a registered mark (at least where the first several letters remain the same).”); see also, CloudFlare, Inc. v. [Registrant], FA 1624251 (Forum Aug. 1, 2015) (holding, “The inclusion of a ccTLD does not alleviate the similarity between a mark and a disputed domain name as per Policy ¶ 4(a)(i).”).
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.
WHOIS information for the at-issue domain name identifies the domain name’s registrant as “Stephen Mark” and the record before the Panel contains no evidence that otherwise tends to prove that Respondent is commonly known by the <lanxees.us> domain name. The Panel therefore concludes that Respondent is not commonly known by the <lanxees.us> 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 uses the confusingly similar <lanxees.us> domain name to address a website displaying what appear to be bogus banking services and asks internet users to login and transfer money. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use of the at-issue domain name pursuant to Policy ¶4(c)(iii). See Goodwin Procter LLP v. GAYLE FANDETTI, FA 1738231 (Forum Aug. 8, 2017) (“[T]he Domain Name has been used in an attempted fraud. As such it cannot have been registered for a legitimate purpose.”).
Moreover, Respondent uses the at-issue domain name to host an email address which facilitates a phishing scheme. Respondent sends email from <lanxees.us> pretending to be from an employee of Complainant. Respondent thereby attempts to pass itself off as Complainant’s head of procurement operations to scam third party businesses. Respondent’s use of phony email so that Respondent may pass itself off as Complainant in furtherance of fraud is also not indicative of rights or legitimate interests under Policy ¶¶ 4(c)(i) or (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, Microsoft Corporation v. Terrence Green / Whois Agent / Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr. 4, 2016) (finding the respondent’s use of the disputed domain names to send fraudulent emails purportedly from agents of complainant to be neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(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 pursuant to Policy ¶ 4(a)(ii).
The at-issue domain name was registered and is being used in bad faith. As discussed below without limitation, circumstances are present which compel the Panel to conclude that Respondent has acted in bad faith pursuant to Policy ¶ 4(a)(iii).
First, Respondent uses forged email from its confusingly similar <lanxees.us> domain name to deceive recipients into entering into fraudulent dealings with Respondent. Respondent’s use of email pretending to be from Complainant facilitates Respondent in passing itself off as Complainant in furtherance of fraud and demonstrates Respondent’s 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)”); see also, Airbnb, Inc. v. JAMES GRANT, FA 1760182 (Forum Dec. 28, 2017) (“Using a misleading email address to defraud unwary customers certainly constitutes bad faith.”).
Additionally, Respondent’s overt misspelling of Complainant’s trademark in the at-issue domain name shows that Respondent is engaged in typosquatting. Typosquatting is a practice whereby a domain name registrant deliberately introduces typographical errors or misspellings into a trademark and then uses the resulting string in a domain name hoping that internet users will either: 1) inadvertently type the malformed string when searching for products or services related to the domain name’s target trademark; and/or 2) in viewing the domain name will confuse the domain name with its target trademark. Here, in creating the at-issue domain name Respondent misspells Complainant’s LANXESS trademark by substituting an “e” for the trademark’s first “s” so that email recipients are prone to confuse the sender’s email domain name with what might pass for Complainant’s real email address. Typosquatting, in itself, indicates bad faith under Policy ¶ 4(a)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)); see also, Artemis Marketing Corp. v. ICS INC et al, WIPO Case No. D2019-0141 (Apr. 8, 2019) (“The altering of one or just a few characters is the very nature of typosquatting”).
Finally, Respondent had actual knowledge of Complainant’s rights in the LANXESS mark when it registered <lanxees.us> as a domain name. Respondent’s actual knowledge is evident from the notoriety of Complainant’s trademark and from Respondent’s inclusion of Complainant’s trademark and logo in Respondent’s fraudulent emails originating from the at-issue typosquatted domain name in its attempt to pass itself off as Complainant. Registering and using a confusingly similar domain name with knowledge of Complainant’s rights in such domain name in itself 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 usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lanxees.us> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: September 4, 2019
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page