YPO, Inc. v. Trickle Down / Swiss TBC
Claim Number: FA2005001897892
Complainant is YPO, Inc. (“Complainant”), represented by Gail Podolsky of Carlton Fields Jorden Burt, P.A., Georgia, USA. Respondent is Trickle Down / Swiss TBC (“Respondent”), Yemen.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <ypomembership.org> and <ypomemberships.org>, registered with NameCheap, 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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 27, 2020; the Forum received payment on May 27, 2020.
On May 28, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <ypomembership.org> and <ypomemberships.org> domain names are registered with NameCheap, Inc. and that Respondent is the current registrant of the names. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 May 28, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 17, 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@ypomembership.org, postmaster@ypomemberships.org. Also on May 28, 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.
On June 17, 2020, Respondent requested an extension of the deadline to reply to July 7, 2020. Pursuant to that request, Forum Supp. Rule 6(a)(i), and ICANN Rule 5(b), the Forum set a new response deadline at June 22, 2020 and informed Respondent of the modalities to request a further extension. By e-mail of June 17, 2020, Complainant objected to the extension of the deadline to reply, stating, in pertinent part: “As detailed in the Complaint, Respondent is engaging in a fraudulent phishing scheme to steal Complainant’s customer information and funds. Any further delays in adjudicating this dispute will significantly prejudice Complainant and its customers. Complainant opposes any further extensions …”.
In subsequent exchanges of e-mails, the Forum again informed Respondent of the modalities for requesting a further extension of the deadline to reply, and of the modalities for requesting disclosure from Complainant of certain documents. Respondent did not comply with those modalities.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On June 29, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant states that it was founded in 1950 and is an organization offering products and services to create better leaders. Its members include more than 29,000 chief executives in 130 countries. Complainant has very strict membership criteria and carefully screens its applicants. For example Complainant’s members have included Charles R. Schwab, Founder & CEO of Charles Schwab Corporation, Bob Galvin, Founder and former CEO of Motorola, Robert Wood Johnson II, President of Johnson & Johnson, Sheryl Sandberg, COO of Facebook, and Doug Ledba, CEO of Lending Tree. Speakers at YPO events have included ex-Presidents, Henry Kissinger, Gloria Steinem, Moshe Dayan, astronaut Alan Bean, Playboy’s Christie Hefner, social activist Jesse Jackson, former FCC chairman Newton Minow, and Coca-Cola director Donald Keough. Complainant’s members lead businesses and organizations contributing $9 trillion (USD) in annual revenue. Through Complainant’s products and services, its members become better leaders and better people through peer learning and exceptional experiences in an inclusive community of open sharing and trust. Complainant has over 460 organization chapters around the world. Complainant has rights in the YPO mark through its registration of the mark in the United States in 1998. The mark is also registered elsewhere around the world.
Complainant alleges that the disputed domain names are confusingly similar to its mark, as they incorporate the mark in its entirety and merely add the descriptive terms “membership” or “memberships”, as well as the “.com” generic top-level domain (“gTLD”). Complainant cites UDRP precedents to support its position.
According to Complainant, Respondent has no rights or legitimate interests in the disputed domain names as Respondent is not commonly known by the disputed domain names nor has Respondent been licensed, authorized, or otherwise permitted by Complainant to use Complainant’s mark. Furthermore, Respondent’s use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, as Respondent uses one of the disputed domain names in fraudulent e-mails it sent to Complainant’s members offering them the ability to purchase a lifetime membership. Respondent thus attempted to phish Complainant’s members for personal or financial information; in fact, at least one of Complainant’s members sent funds to Respondent under the belief that Respondent’s e-mail was a legitimate offer. Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent registered and used the disputed domain names in bad faith. Specifically, Respondent is attempting to phish Complainant’s members for personal or financial information. Finally, Respondent had actual or constructive knowledge of Complainant’s rights in the YPO mark at the time of registration. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding. In its e-mails to the Forum, Respondent states, in pertinent part: “Complainant is a Cult of Very Rich Highly Influential Individuals with a history of bullying and scare tactics and are attempting to do same with our Client, Kali Swiss of <swisslogsonly@zoho.com> who conducts his business in a tidy manner.” Respondent does not present any evidence to support its allegations.
Complainant owns the YPO mark and uses it to offer products and services to create better leaders. According to Complainant’s web site, its “membership is intended to be available to individuals who hold the top position of a qualifying company or division and are directly responsible for all operations of the business or division. Titles representing this position may include President, Chairman of the Board, CEO, Managing Director, or Managing Partner.”
Complainant’s rights in its mark date back to at least 1998.
The disputed domain names were registered in 2020.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
Respondent alleges that it is related to <zoho.com>. That web site promotes “unique and powerful suite of software to run your entire business, brought to you by a company with the long term vision to transform the way you work.”
One of the disputed domain names was used in a fraudulent e-mail phishing scheme. The fraudulent e-mail purported to be from a person who was “2018-2019 YPO Chairman”; the person in question was indeed the 2018-2019 YPO Chairman.
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”).
The disputed domain names incorporate Complainant’s mark in its entirety and merely add the descriptive terms “membership” or “memberships”, which are related to Complainant’s business, as well as the “.com” gTLD. Adding a descriptive term, in particular one that refers to Complainant’s business, and a gTLD to a complainant’s mark may not sufficiently distinguish a disputed domain name from the complainant’s mark 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, the Panel finds that the <ypomembership.org> and <ypomemberships.org> domain names are confusingly similar to Complainant’s YPO mark under Policy ¶ 4(a)(i).
Complainant has not licensed or otherwise authorized Respondent to use its mark. Respondent is not commonly known by the disputed domain names: where a response is lacking, relevant WHOIS information can be used as evidence to show a respondent is or is not commonly known by the disputed 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). Here, the WHOIS of record identifies Respondent as “Trickle Down / Swiss TBC”. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant presents evidence showing that Respondent uses one of the disputed domain names in fraudulent e-mails sent to Complainant’s members offering them the ability to purchase a lifetime membership. Respondent thus attempted to phish Complainant’s members for personal or financial information. Using a disputed domain name to deceive Internet users into divulging personal or financial information may 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 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 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.”). Therefore, the Panel finds that Respondent fails to use the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). And the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Respondent alleges, without providing evidence, that Complainant has a history of bullying and scare tactics. As noted above, the Panel may dismiss arguments that are not supported by evidence. Consequently, the Panel dismisses Respondent’s allegations.
Respondent has not presented any plausible explanation for its use of Complainant’s mark. Its alleged association with <zoho.com> does not in any way explain its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain names.
Indeed, as already noted, Respondent is attempting to phish Complainant’s members for personal or financial information. Registering a disputed domain name to phish for personal or financial information from Internet users may be evidence of bad faith under Policy ¶ 4(b)(iii). See 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 supported a finding of bad faith registration and use under Policy ¶ 4(b)(iii)). Therefore, the Panel finds that Respondent registered and used the disputed domain names in bad faith under Policy ¶ 4(b)(iii).
Further, Respondent registered the disputed domain name with actual knowledge of Complainant’s mark: the fraudulent e-mail purported to come from a person identified as a previous Chairman of Complainant, and the signature block contained Complainant’s mark; thus Respondent knew of Complainant and its mark. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant’s rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also 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.”); 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). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark prior to Respondent’s registration of the disputed domain name and that this constitutes bad faith under 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 <ypomembership.org> and <ypomemberships.org> domain names be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: June 29, 2020
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