ACT Commodities B.V. v. Thomas S. Mihalyi
Claim Number: FA2006001899967
Complainant is ACT Commodities B.V. (“Complainant”), represented by Thomas E. Zutic of DLA Piper LLP (US), District of Columbia, USA. Respondent is Thomas S. Mihalyi (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <actcomnodities.com> (‘the Domain Name’), registered with Google LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne 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, Google LLC confirmed by e-mail to the Forum that the <actcomnodities.com> domain name is registered with Google LLC and that Respondent is the current registrant of the name. Google LLC has verified that Respondent is bound by the Google 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 19, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 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@actcomnodities.com. Also on June 19, 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 7, 2020, the Forum received email communications from Respondent stating that Respondent's credit card information had been stolen and used to purchase miscellaneous internet and cloud services. With the exception of Respondent’s emails denying registration the domain name, Respondent has not provided other evidence in support of a claim of stolen identity.
On July 14, 2020 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne 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
The Complainant’s contentions can be summarized as follows:
The Complainant is the owner of the trade mark ACT COMMODITIES COLLABORATIVE TRADING (figurative mark) registered in the EU since 2018. It operates its web site at actcommodities.com registered in 2016.
The Domain Name registered in 2020 is confusingly similar to the Complainant’s ACT COMMODITIES trademark replacing the second letter ‘m’ with a letter ‘n’.
The Respondent does not have rights or legitimate interests in the Domain Name and is not authorized by the Complainant.
The Domain Name does not resolve to an active web site, but has been used for fraudulent e mails using the name of two of the Complainant’s employees. This is not a bona fide offering of goods or services or a legitimate noncommercial fair use. It is registration and use in bad faith for fraudulent purposes, disrupting the Complainant’s business. The use of the names of two of the Complainant’s employees shows that the Respondent is aware of the Complainant and its rights.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the trade mark ACT COMMODITIES COLLABORATIVE TRADING (figurative mark) registered in the EU since 2018. It operates its web site at actcommodities.com registered in 2016. The Complainant has common law rights in the mark ACT COMMODITIES using it in its domain name, on its web site and in its corporate name.
The Domain Name registered in 2020 which appears to be a typosquatting registration has been used for fraudulent e mails using the name of two of the Complainant’s employees.
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”).
PRELIMINARY ISSUE: RESPONDENT’S ALLEGATION OF IDENTITY THEFT PROFFERED WITHOUT EVIDENCE.
Panelist notes the Respondent’s unsubstantiated assertions in an e mail to the Forum that it is the victim of identity theft and did not register the Domain Name. In the absence of any evidence of this such as a police report the Panelist is unable to take these assertions into account.
The Complainant is the owner of common law rights in the name ACT COMMODITIES which it uses as a domain name, on its web site and in its corporate name.
The Domain Name consists of a misspelling of the Complainant’s ACT COMMODITIES mark (in which the Complainant has common law rights) substituting the second ‘m’ with an ‘n’ and adding the gTLD “.com.” The Panel agrees that substituting one letter for another letter does not distinguish the Domain Name from the Complainant's trade mark pursuant to the Policy as minor changes to a mark is enough to support a finding of confusing similarity under Policy ¶ 4(a)(i). See Klein Tools, Inc. v chenxinqi, FA 1617328 (Forum July 6, 2018).
The gTLD “.com” does not serve to distinguish the Domain Name from the Complainant’s mark, which is the distinctive component of the Domain Name. See Red Hat Inc. v. Haecke, FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Name is confusingly similar for the purpose of the Policy to a mark in which the Complainant has rights.
The Complainant has not authorized the use of a sign confusingly similar to its mark. The Respondent has not submitted a formal Response to this Complaint and there is no evidence or reason to suggest the Respondent is, in fact, commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
The Domain Name has been used in a fraudulent e mail scheme. This is deceptive and confusing and amounts to passing off. As such it cannot amount to the bona fide offering of goods and services or a noncommercial legitimate or fair use. See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the at-issue domain name to pose as Complainant’s CEO by means of email addresses at the confusingly similar domain name in an attempt to determine Complainant’s ability to process a transfer. Using the domain name in this manner is neither a bona fide offering of goods and services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)”).
As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
Typosquatting per se is bad faith registration and use. Typosquatting itself is evidence of relevant bad faith registration and use. See Diners Club int'l Ltd. v. Domain Admin ****** It's all in the name ******, FA 156839 (Forum June 23, 2003) ('registering a domain name which entirely incorporates a famous mark with additional letter (s) in the hope that Internet users will mistype the Complainant’s mark and be taken to the Respondent’s site is registration and use in bad faith).
Impersonating a complainant by use of a sign confusingly similar to a complainant’s mark in a fraudulent e mail scam is disruptive and evinces bad faith registration and use. See Microsoft Corporation v. Terrence Green/ Whois Agent/Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr. 4, 2016) (finding that respondent’s use of the disputed domain name to send fraudulent e mails constituted bad faith registration and use pursuant to Policy ¶ 4(b)(iii).)
As such, the Panelist believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under ¶ 4(b)(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 <actcomnodities.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: July 14, 2020
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