Seatex, LLC v. Vikki Laing
Claim Number: FA2006001899876
Complainant is Seatex, LLC (“Complainant”), represented by Stephen R. Baird of Greenberg Traurig, LLP, United States. Respondent is Vikki Laing (“Respondent”), United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <seatexcorps.com>, registered with Wild West Domains, LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 11, 2020; the Forum received payment on June 11, 2020.
On June 12, 2020, Wild West Domains, LLC confirmed by e-mail to the Forum that the <seatexcorps.com> domain name is registered with Wild West Domains, LLC and that Respondent is the current registrant of the name. Wild West Domains, LLC has verified that Respondent is bound by the Wild West Domains, 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 June 15, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 6, 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@seatexcorps.com. Also on June 15, 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 July 9, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a contract manufacturer of industrial chemical products.
Complainant has made continuous use of the SEATEX mark in commerce since 1967.
In the past five years, Complainant has spent approximately $2,500,000 to advertise, promote and market its services under the SEATEX mark.
As a consequence of Complainant’s efforts at advertising, promoting and marketing its services under the SEATEX mark, consumers have come to recognize that mark as a strong and distinctive indicator of the source and quality of Complainant’s services, as evidenced by the fact that those efforts have produced approximately $250,000,000 in sales revenues in the same period.
Complainant has therefore established common law rights in the SEATEX trademark predating by many years Respondent’s registration of the challenged <seatexcorps.com> domain name.
Respondent registered the domain name <seatexcorps.com> on April 24, 2020.
The domain name is nearly identical and confusingly similar to Complainant’s SEATEX mark.
Respondent has not been commonly known by the domain name.
Respondent has never received permission from Complainant to use its SEATEX mark.
Respondent fails to use the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent lacks rights to and legitimate interests in the domain name.
Respondent knew of Complainant’s rights in the SEATEX mark at the time of its domain name registration.
Respondent registered and uses the domain name in bad faith.
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; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the 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:
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept as true all reasonable claims and inferences set out in the Complaint unless the supporting evidence is manifestly contradictory. See, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). But see 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”).
To be eligible to pursue a claim for relief under the Policy, Complainant must demonstrate that it has rights in a trademark or service mark. Complainant has not offered any facts showing that it has rights in its SEATEX mark by reason of registration of the mark with a national or international trademark authority, but it has advanced a case for such rights under the common law. If such rights are adequately shown, that will suffice. See, for example, Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA 1625750 (Forum July 17, 2015):
Complainant does not claim to own a trademark registered with a governmental authority. However, Policy ¶ 4(a)(i) does not require such registration if a complainant can demonstrate having common law rights.
To establish common law rights in a mark, a complainant generally must show extensive and continuous use of the mark in commerce such that consumers have come to associate the mark with the complainant as the source of its goods or services. See, for example, Iacocca v. Tex. Int’l Prop. Assocs., FA 1088017 (Forum November 29, 2007):
In order to garner the benefit of common law trademark rights, Complainant must lay out, not only evidence of extensive and continuous use of the mark in commerce, but also evince some strong probability that as a result of such exposure, that consumers have come to associate the mark with Complainant, as to the source of the goods.
Such an association is commonly called “secondary meaning.”
In support of its claim of common law rights in the SEATEX mark from the development of secondary meaning, Complainant submits that:
a. Complainant has made continuous use of the SEATEX mark in commerce since 1967.
b. In the past five years, Complainant has spent approximately $2,500,000 to advertise, promote and market its services under the SEATEX mark.
c. As a consequence of Complainant’s efforts at advertising, promoting and marketing its services under the SEATEX mark, consumers have come to recognize the mark as a strong and distinctive indicator of the source and quality of Complainant’s services, as evidenced by the fact that those efforts have produced approximately $250,000,000 in sales revenues in the indicated period.
Because Respondent does not contest these assertions, we conclude that Complainant has made a sufficient showing of secondary meaning in its SEATEX mark to establish its rights in the mark under the common law, and, therefore, to meet the standing requirements of Policy ¶ 4(a)(i).
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <seatexcorps.com> domain name is confusingly similar to Complainant’s SEATEX mark. The disputed domain name incorporates the mark in its entirety, merely adding the business form designation “corps” and the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See, for example, Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum January 22, 2016) (finding that the addition of a generic term and a gTLD to the mark of another in creating a domain name was insufficient to distinguish one from the other under Policy ¶ 4(a)(i)).
See also Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding that adding to a mark a gTLD and the generic term “finance,” which described a UDRP complainant’s financial services business, did not sufficiently distinguish the resulting domain name from that mark under Policy ¶ 4(a)(i)).
Further see Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum September 27, 2002):
[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.
This is because every domain name requires a gTLD or other TLD.
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent lacks rights to and legitimate interests in the <seatexcorps.com> domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c)(i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <seatexcorps.com> domain name, and that Complainant has not licensed or otherwise authorized Respondent to use the SEATEX mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “VIKKI LAING,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(ii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as “Bhawana Chandel,” and nothing in the record showed that that respondent was authorized to use a UDRP Complainant’s mark in any manner). See also Navistar International Corporation v. N Rahmany, FA 620789 (Forum June 8, 2015) (finding, under Policy ¶ 4(c)(ii), that a respondent was not commonly known by a disputed domain name where a UDRP complainant had not authorized that respondent to incorporate its mark in a domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent makes no active use of the <seatexcorps.com> domain name except to employ it to impersonate officials of Complainant in e-mail messages in furtherance of a fraudulent “phishing” scheme by which Respondent has sought to induce customers of Complainant to remit funds to an unauthorized bank account controlled by Respondent. This employment is neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy. See, for example, DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017):
Passing off [as a UDRP complainant by employing a domain name that is confusingly similar to its mark] in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or [a] legitimate noncommercial or fair use.
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s use of the contested <seatexcorps.com> domain name, as alleged in the Complaint, disrupts
Complainant’s business. Under Policy ¶ 4(b)(iii), this stands as proof of Respondent’s bad faith in registering and using the domain name. See, for example, Qatalyst Partners LP v. Devimore, FA 1393436 (Forum July 13, 2011) (finding that a respondent’s use of a domain name that was confusingly similar to the mark of a UDRP complainant in an e-mail address to pass itself off as that complainant in furtherance of a fraudulent phishing scheme evidenced bad faith registration and use of the domain name).
See also Abbvie, Inc. v. James Bulow, FA 1701075 (Forum November 30, 2016):
Respondent uses the … 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)….
We are also convinced by the evidence that Respondent knew of Complainant and its rights in the SEATEX mark when it registered the <seatexcorps.com> domain name. This further demonstrates Respondent’s bad faith in registering it. See, for example, Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum February 6, 2014):
The Panel … here finds actual knowledge [by a respondent of a UDRP complainant’s rights in a mark, and therefore that respondent’s bad faith in registering a confusingly similar domain name] through the name used for the domain and the use made of it.
See also Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum January 5, 2018):
[T]he fact Respondent registered a domain name that looked identical to the … mark [of Complainant] 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 thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <seatexcorps.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: July 13, 2020
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