Watermark Securities, Inc. v Watermark Securities, Inc Watermark Securities, Inc / Watermark Securities, Inc
Claim Number: FA2002001882980
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <watermarksecinc.com>, registered with WEBCC; Web Commerce Communications Limited dba WebNic.cc.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 12, 2020; the Forum received payment on February 13, 2020.
On February 13, 2020, WEBCC; Web Commerce Communications Limited dba WebNic.cc confirmed by e-mail to the Forum that the <watermarksecinc.com> domain name is registered with WEBCC; Web Commerce Communications Limited dba WebNic.cc and that Respondent is the current registrant of the name. WEBCC; Web Commerce Communications Limited dba WebNic.cc has verified that Respondent is bound by the WEBCC; Web Commerce Communications Limited dba WebNic.cc 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 February 17, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 9, 2020 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@watermarksecinc.com. Also, on February 17, 2020, 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 March 13, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson 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 broker and dealer headquartered in New York, NY, USA. Complainant has common law rights in the WATERMARK and WATERMARK SECURITIES, INC marks. Complainant also has rights in the WATERMARK mark based on registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 5,831,649, registered Aug. 13, 2019). Respondent’s <watermarksecinc.com> domain name is identical or confusingly similar to Complainant’s mark as it incorporates Complainant’s mark with word SECURITIES truncated to “sec.”
Respondent lacks rights or legitimate interests in the <watermarksecinc.com> domain name. Respondent does not engage in any legitimate business or commerce under the domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to pass off as Complainant to conduct a phishing scheme.
Respondent registered and uses the <watermarksecinc.com> domain name in bad faith. Respondent uses the disputed domain name to pass itself off as Complainant in furtherance of a phishing scheme. Respondent registered the disputed domain name using a privacy service and provided false contact information. Respondent’s use of Complainant’s information on the resolving webpage indicate Respondent registered the disputed domain name with actual knowledge of Complainant’s trademark rights.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Watermark Securities, Inc. (“Complainant”), of New York, NY, USA. Complainant is the owner of the domestic registration for the mark WATERMARK, which it has continually used since at least as early as 1991, in connection with its provision of brokerage services for hedge funds, as well as the purchase and sale of securities.
Respondent is Watermark Securities, Inc Watermark Securities, Inc / Watermark Securities, Inc (“Respondent”). Respondent provided an address that is identical to Complainants. Respondent’s registrar’s address is listed as Singapore. The Panel notes that Respondent registered the <watermarksecinc.com> domain name on or about September 20, 2019.
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 asserts rights in the WATERMARK mark based on registration with the USPTO (e.g. Reg. No. 5,831,649, registered Aug. 13, 2019). Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of 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.”). The Panel here finds that Complainant has established rights in the WATERMARK mark for the purposes of Policy ¶ 4(a)(i).
Complainant also claims it has common law rights in the WATERMARK and WATERMARK SECURITIES marks. Policy ¶ 4(a)(i) does not require a complainant to own a trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding that “The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”). To establish common law rights in a mark, a complainant generally must prove that the mark has generated a secondary meaning. See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”). Complainant provides Complainant’s Certificate of Good Standing, FINRA broker check, and prior UDRP decisions as evidence that the mark has an established secondary meaning. The Panel here finds it unnecessary to determine if Complainant has common law rights as Complainant’s first use in commerce and USPTO registration, establishing Complainant’s rights in its mark, predate Respondent’s domain name registration, and Respondent has not provided an answer addressing any of Complainant’s contentions.
Complainant next argues that Respondent’s <watermarksecinc.com> domain name is identical or confusingly similar to Complainant’s mark as it incorporates Complainant’s mark with word SECURITIES truncated to “sec.” While not asserted by Complainant, the Panel notes that the disputed domain name also incorporates the “.com” generic top-level domain (“gTLD”). The addition of a generic term and a gTLD to a complainant’s mark is insufficient to differentiate the disputed domain name from the mark under Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)). The Panel here finds that Respondent’s disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel notes that 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”).
The Panel here finds that Complainant has set forth the requisite prima facie case.
Complainant asserts Respondent lacks rights or legitimate interests in the <watermarksecinc.com> domain name. Respondent does not engage in any legitimate business or commerce under the domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. WHOIS information may be used to determine whether a respondent is has rights or legitimate interest in a disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Where a respondent appears to be commonly known by a disputed domain name, the Panel may still find the respondent lacks rights or legitimate interest in the disputed domain name if the respondent lacks authorization to use the complainant’s mark and the respondent fails to provide affirmative evidence in support of this identity. See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding that, although the respondent listed itself as “Jessie McKoy / Ripple Reserve Fund” in the WHOIS contact information, it did not provide any affirmative evidence to support this identity; combined with the fact that the complainant claimed it did not authorize the respondent to use the mark, the respondent is not commonly known by the domain name). The WHOIS information for the disputed domain name identifies the registrant as “Watermark Securities, Inc Watermark Securities, Inc/Watermark Securities, Inc” but Respondent provides no affirmative evidence in support of this identity and no evidence in the record suggests Respondent is authorized to use the WATERMARK mark. The Panel here finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant next argues Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses the disputed domain name to pass off as Complainant to conduct a phishing scheme. Passing off as a complainant in furtherance of phishing may not be a bona fide offering of goods or services or legitimate noncommercial or fair use per 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.”). Complainant provides a screenshot of the resolving webpage of the disputed domain name which displays Complainant’s mark and company information. Complainant asserts that the “sign up” portion of the website is likely an attempt at phishing. The Panel here finds Respondent does not use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
The Complainant has proven this element.
Complainant avers that Respondent registered and uses the <watermarksecinc.com> domain name in bad faith as Respondent uses the disputed domain name to pass itself off as Complainant in furtherance of a phishing scheme. Use of a domain name to pass off as a complainant in furtherance of phishing can show bad faith registration and use per Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Caroline Alves Maia, FA 1796113 (Forum Aug. 6, 2018) (finding the respondent registered and used the domain name in bad faith per Policy ¶ 4(b)(iv) because the respondent used the disputed domain name to present users with a website that was “virtually identical, with the same color scheme, the same layout and the same substantive content” and used the website to gain access to users’ cryptocurrency accounts). The Panel again notes that Complainant provides a screenshot of the resolving webpage of the disputed domain name which displays Complainant’s mark and company information and Complainant asserts that the “sign up” portion of the website is likely an attempt at phishing. The Panel finds Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Complainant also argues that Respondent’s use of Complainant’s information on the resolving webpage indicates Respondent registered the disputed domain name with actual knowledge of Complainant’s trademark rights. Actual knowledge of a complainant’s rights in a mark prior to registration can evince bad faith registration per Policy ¶ 4(a)(iii). 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 again notes that Complainant provides a screenshot of the resolving webpage of the disputed domain name which displays Complainant’s mark and company information, and Complainant asserts that the “sign up” portion of the website is likely an attempt at phishing. Additionally, the Panel recalls that Respondent presents its address as the same as Complainant’s. The Panel finds Complainant has provided sufficient evidence to support the conclusion that Complainant had actual knowledge of Complainant’s rights in the WATERMARK mark prior to registration of the domain name. Based on the uncontested evidence provided the Panel finds Respondent registered the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <watermarksecinc.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: March 31, 2020
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