Tyler Technologies, Inc. v. Team Openly / Openly
Claim Number: FA1909001862044
Complainant is Tyler Technologies, Inc. (“Complainant”), represented by Sana Hakim, Illinois, USA. Respondent is Team Openly / Openly (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <evergov.com>, registered with Tucows Domains Inc..
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 September 13, 2019; the Forum received payment on September 13, 2019.
On September 13, 2019, Tucows Domains Inc. confirmed by e-mail to the Forum that the <evergov.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. 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 September 19, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 9, 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@evergov.com. Also on September 19, 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 October 11, 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 the largest software company in the nation solely focused on providing integrated and technology services to the public sector. Complainant has rights in the trademark ENERGOV through its use in commerce since 2013 and its trademark registrations with the United States Patent and Trademark Office (“USPTO”) dating to August 25, 2015. Respondent’s <evergov.com> domain name, registered on February 5, 2019, is confusingly similar to Complainant’s ENERGOV mark as it incorporates the mark, merely changing the letter “n” to a “v,” and adds the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <evergov.com> domain name. Respondent is not authorized to use Complainant’s ENERGOV mark and is not commonly known by the disputed domain name. Respondent also fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to solicit personal information through a website that encourages users to upload documents for payment such as utility and tax bills, parking and vehicle infractions, and others that require payments to public sector and government entities.
Respondent registered and uses the <evergov.com> domain name in bad faith. Respondent attempts to disrupt Complainant’s business and attract, for commercial gain, users to the disputed domain name where it solicit users’ personal information. Furthermore, Respondent failed to respond to Complainant’s cease-and-desist letters, phone calls, and other attempts at communication. Respondent also engages in typosquatting. Finally, Respondent had actual or constructive knowledge of Complainant’s ENERGOV mark prior to registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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 rights in the ENERGOV mark based upon registration thereof with the USPTO. Registration of a mark with the USPTO is sufficient to establish rights in that mark. 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). The Panel therefore holds that Complainant’s registration of the ENERGOV mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <evergov.com> domain name is confusingly similar to the ENERGOV mark, as the name incorporates the mark, merely changing the letter “n” to a “v,” and adding the “.com” gTLD. Such changes are not sufficient to distinguish a disputed domain name from a complainant’s asserted mark in a Policy ¶ 4(a)(i) analysis. See Vanguard Trademark Holdings USA LLC v. Shuai Wei Xu / Xu Shuai Wei, FA 1784238 (Forum June 1, 2018) (“Respondent arrives at each of the disputed domain names by merely misspelling each of the disputed domain names and adding the gTLD ‘.com.’ This is insufficient to distinguish the disputed domain names from Complainant’s trademark.”) The Panel therefore determines that the <evergov.com> domain name is confusingly similar to the ENERGOV mark per Policy ¶ 4(a)(i).
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 this 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 argues that Respondent has no rights or legitimate interests in the <evergov.com> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the ENERGOV mark in any way. In considering this issue, WHOIS information can support a finding that the respondent is or is not commonly known by a disputed domain name. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”) The WHOIS information of record identifies the registrant of the at-issue domain name as “Team Openly / Openly,” and no information on the record indicates that Respondent was authorized to register a domain name incorporating Complainant’s mark. In light of the evidence before it and the Respondent’s failure to participate in these proceedings, the Panel therefore finds, under Policy ¶ 4(c)(ii), that Respondent has not been commonly known by the <evergov.com> domain name.
Complainant further argues that Respondent’s lack of rights or legitimate interests in the <evergov.com> domain name is demonstrated by its failure to use the name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Complainant contends that Respondent uses the disputed domain name to solicit users’ personal information. Use of a disputed domain name to obtain users’ personal information through a phishing scheme is not indicative of any rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See Enterprise Holdings, Inc. v. I S / Internet Consulting Services Inc., FA 1785242 (Forum June 5, 2018) (“On its face, the use of a domain name that is confusingly similar to the mark of another in order to facilitate a phishing scheme cannot be described as either a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(iii).”); see also Virtu Financial Operating, LLC v. Lester Lomax, FA1409001580464 (Forum Nov. 14, 2014) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii) where the respondent was using the disputed domain name to phish for Internet users personal information by offering a fake job posting on the resolving website). Complainant provides screenshots of the disputed domain name’s resolving website which includes the website’s Terms of Service and Privacy policies, and a screenshot of the Quick Pay link and related webpages. Respondent’s websites invites users to click on various links to conduct business with various governmental and other public sector entities such as paying utility or tax bills, paying for parking tickets and vehicle infractions, and the like. Complainant asserts that Respondent encourages users to upload related documents that contain sensitive personal information and that the Respondent may be using this information for identity theft and other illegal purposes. These assertions are not contested by the Respondent who has not filed a Response or made any other submission in this case and has also not responded to the Complainant’s various attempts at contact through email, postal mail, telephone, and the live chat feature of Respondent’s website. As the Complainant has made a prima facie case and the Respondent has not met its burden of rebutting the same, the Panel finds that Respondent lacks rights or legitimate interests in the disputed domain name per Policy ¶¶ 4(c)(i) or (iii).
Complainant contends that in light of the fame and notoriety of Complainant's ENERGOV mark, it is inconceivable that Respondent could have registered the <evergov.com> domain name without actual or constructive knowledge of Complainant's rights in the mark. While UDRP case precedent typically declines to find bad faith as a result of constructive knowledge, where the parties are both located in the United States and the complainant has obtained a federal trademark registration predating the relevant domain name registration – panels have been prepared to apply the concept of constructive notice. See WIPO Overview 3.0, par. 3.2.2. Also Leite’s Culinaria, Inc. v. Gary Cieara, D2014-0041 (WIPO Feb. 25, 2014) (“under 15 USC §1072, registration of Complainant’s mark constitutes constructive notice of the mark. Respondent therefore had legal, if not actual, notice of Complainant’s mark prior to registering the disputed domain name.”) As both parties to this dispute are US-based and the doctrine of constructive notice is recognized under US law, the Panel finds it reasonable to apply the principle in this case. Further, the Panel also acknowledges Complainant’s position that Respondent must have had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name. Both parties are in a highly specialized field (providing support services to local governments) and so it seems more likely than not that Respondent had actual knowledge of Complainant in light of its position as the leader in this industry for a number of years. Actual knowledge is an adequate foundation upon which to build a case of bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). The Panel thus finds that Respondent had both constructive and actual knowledge of Complainant’s rights in the ENERGOV mark at the time it registered the disputed domain name.
Complainant further contends that Respondent’s bad faith is demonstrated by its use of the <evergov.com> domain name to solicit users’ personal information. Use of a disputed domain name to obtain users’ personal information through phishing, which may be disruptive or for commercial gain, can indicate bad faith under Policy ¶¶ 4(b)(iii) and/or (iv). See Wells Fargo & Co. v. Maniac State, FA 608239 (Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers); see also Wells Fargo & Co. v. Mihael, FA 605221 (Forum Jan. 16, 2006) (“Complainant asserts,…that soon after the disputed domain name was registered, Respondent arranged for it to resolve to a web site closely resembling a legitimate site of Complainant, called a ‘doppelganger’ (for double or duplicate) page, the purpose of which is to deceive Complainant’s customers into providing to Respondent their login identification, social security numbers, and/or account information and Personal Identification Numbers…. The Panel finds that Respondent’s behavior, as alleged, constitutes bad faith registration and use of the subject domain name pursuant to Policy ¶ 4(a)(iii).”) The Panel notes that Complainant provides screenshots of the disputed domain name’s resolving website which includes the website’s Terms of Service and Privacy policies, and a screenshot of the Quick Pay link and related webpages. Complainant argues that the activity carried out at Respondent’s website, as noted above, constitutes solicitation of personal information for illicit purposes. It asserts that the disputed domain name is thus not being used in connection with a legitimate business. As in the prior section of this opinion, the Panel finds that Complainant has made out a prima facie case and the Respondent has not rebutted it or participated in this case in any way despite numerous attempts at communication on the part of the Complainant and the Forum using the contact information provided by Respondent itself at both its website and in the Whois record for the <evergov.com> domain name. Based upon a preponderance of the evidence before it, the Panel finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶¶ 4(b)(iiii) and/or (iv).
Complainant further contends that Respondent’s registration of the <evergov.com> domain name is further evidence of bad faith as the letters “v” and “n” are close to one another on the keyboard. The Panel is reminded that typographical errors, specifically those intended to capitalize on confusion as to a complainant’s mark, may demonstrate bad faith under Policy ¶ 4(a)(iii). See Homer TLC, Inc. v. Artem Ponomarev, FA1506001623825 (Forum July 20, 2015) (“Finally, under this head of the Policy, it is evident that the <homededpot.com> domain name is an instance of typosquatting, which is the deliberate misspelling of the mark of another in a domain name, done to take advantage of common typing errors made by Internet users in entering into a web browser the name of an enterprise with which they would like to do business online. Typosquatting is independent evidence of bad faith in the registration and use of a domain name.”). Given the specific circumstances of this case, the Panel agrees with Complainant and finds that typosquatting constitutes supporting evidence of bad faith per 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 <evergov.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: October 14, 2019
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