Associated Builders and Contractors, Inc. v. Samuel Miranda / Finixio Limited
Claim Number: FA2008001909316
Complainant is Associated Builders and Contractors, Inc. (“Complainant”), represented by Christopher Kelly of Wiley Rein LLP, District of Columbia, USA. Respondent is Samuel Miranda / Finixio Limited (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <halttheassault.com>, registered with GoDaddy.com, LLC.
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 August 20, 2020; the Forum received payment on August 21, 2020.
On August 21, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <halttheassault.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 August 25, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 14, 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@halttheassault.com. Also on August 25, 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 September 17, 2020, 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, Associated Builders and Contractors, Inc., is a national construction industry trade association. Complainant asserts rights in the HALT THE ASSAULT mark through its use in commerce since 2010 and its registration of the mark with the United States Patent and Trademark Office (“USPTO”) in 2011. Respondent’s <halttheassault.com> domain name is confusingly similar to Complainant’s mark, as it incorporates the mark in its entirety and merely adds the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interest in the <halttheassault.com> domain name. Respondent is not commonly known by the disputed domain name, and Respondent registered the domain name shortly after Complainant’s registration of the domain lapsed. Additionally, Respondent fails to use the domain name in connection with a bona fide offering of goods and services or a legitimate noncommercial or fair use. Rather, Respondent copied the content of Complainant’s website at the domain prior to the inadvertent lapse.
Respondent registered and uses the <halttheassault.com> domain name in bad faith. Respondent registered the domain name when Complainant in advertently let the domain lapse, which shows opportunistic bad faith. Respondent’s copying of Complainant’s web content, including it solicitation of donations, shows that Respondent is attempting to attract Internet users for their own commercial gain. Respondent also concealed its identity through a privacy service. Finally, Respondent had actual knowledge of Complainant’s rights in the mark.
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 disputed 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 and supported 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 trademark HALT THE ASSAULT through its registration of the mark with the USPTO. Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Here, Complainant provides a copy of its USPTO registration certificate for the HALT THE ASSAULT mark. Therefore, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <halttheassault.com> domain name is confusingly similar to Complainant’s mark because the disputed domain name incorporates the HALT THE ASSAULT mark in its entirety and merely adds the “.com” gTLD. A domain name that incorporates a mark in its entirety and merely adds a gTLD is identical to a Complainant’s mark. See Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017) (“When a respondent’s domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD), “.com”, then the Panel may find that the disputed domain name is identical to Complainant’s mark.”). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s 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 does not have rights or legitimate interests in the <halttheassault.com> domain name, as Respondent is not commonly known by the disputed domain name and has never been authorized to use the HALT THE ASSAULT mark. In considering this issue, relevant WHOIS information can be used to determine if a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Additionally, lack of authorization to use a complainant’s mark may demonstrate that the respondent is not commonly known by the disputed domain name. See Navistar International Corporation v. N Rahmany, FA 1620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Although Complainant fails to submit into evidence a copy of the WHOIS record for the disputed domain name, the concerned Registrar, in its verification response to the Forum has indicated that registrant’s name is “Samuel Miranda / Finixio Limited”. Nothing in the record indicates that respondent is known otherwise or that it is licensed to use Complainant’s mark and Respondent has not filed a response or made any other submission in this case to rebut Complainant’s claims. Therefore, the Panel finds no evidence that Respondent is commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Additionally, Complainant argues that Respondent lacks rights or legitimate interests in the <halttheassault.com> domain name because Respondent registered the domain name when Complainant had allowed its registration to lapse. Opportunistic registration of the Complainant’s domain name can weigh in favor of a finding that Respondent has no rights or legitimate interests in the disputed domain name. See Raise Labs, Inc. v. Hong young jin, FA 1685247 (Forum Sept. 1, 2016) (“[The disputed domain name was] registered by Complainant on or about September 20, 2013. The registration was inadvertently allowed to lapse and was registered by Respondent at a subsequent date… As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.”) Here, Complainant states that it inadvertently allowed its registration of the disputed domain name to lapse and the WHOIS record shows that the domain name was updated on April 11, 2020, presumably the date on which Respondent instituted its own registration. While registration of a disputed domain name after its inadvertent expiration should not per se indicate the lack of any rights or legitimate interests, taking into account all of the circumstances of a given case such conclusion may be warranted. Here, the Panel notes that Respondent registered the <halttheassault.com> domain name and, for several months, maintained the prior website resolution as that used by Complainant. Further, Respondent has not participated in this case to rebut Complainant’s assertions or otherwise explain its actions with respect to the disputed domain name. Upon a preponderance of the evidence before it, the Panel thus finds that Respondent lacks rights or legitimate interests in the disputed domain name based upon its opportunistic registration thereof.
Complainant also claims that Respondent fails to use the <halttheassault.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent copies Complainant’s content exactly from when Complainant owned the domain name. See ShipChain, Inc. v. 谢东东 / 谢东东, FA 1785189 (Forum June 21, 2018) (“The resolving webpages between Complainant’s and Respondent’s websites are virtually the same. Respondent’s use of the disputed domain name does not confer rights and legitimate interests under Policy ¶¶ 4(c)(i) and (iii).”) Here, Complainant provides screenshots of the <halttheassault.com> website after the disputed domain name was acquired by Respondent. For comparison, it also provides screenshots of the domain name’s website when it was owned and operated by Complainant. The Panel notes that Respondent’s website is identical in all respects to that used by Complainant, including its copyright notice and a link asking users to “Donate Now To Halt The Assault”. As Respondent has owned the disputed domain name for several months but has continued to use Complainant’s web content, the Panel finds it highly likely that this does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
Complainant asserts that Respondent’s use of Complainant’s content shows Respondent had knowledge of Complainant’s rights in the HALT THE ASSAULT mark. Knowledge of a mark may be shown through the fame and reputation of a mark or through a respondent’s use of the domain name that demonstrates its awareness of the mark. See Snap Inc. v. Domain Admin / Whois Privacy Corp., FA 1907704 (Forum Sept. 4, 2020) (“Complainant’s marks and SNAPCHAT App had become internationally recognized and well-known and had reached a famous status among Internet users. It is most improbable that the registrant of the disputed domain name was unaware of Complainant, its App, mark and reputation when the disputed domain name was chosen and registered.”); see also 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.”) Here, Complainant asserts that “the public has come to recognize” its HALT THE ASSAULT mark and it “enjoys an exceedingly valuable reputation and goodwill”. In support thereof, Complainant claims that that it represents “more than 21,000 members” and that it publishes a newsletter. However, other than a screenshot of its former website, no evidence is submitted on these points nor to otherwise demonstrate the scope and reputation of Complainant’s mark (a trademark registration certificate is evidence of trademark rights but not the scope or reputation of that mark)[i]. Thus, the Panel is unable to conclude that Respondent knew or should have known of the HALT THE ASSAULT mark based upon its reputation. However, the screenshot of Respondent’s website shows that it uses the identical content as that which was used by Complainant prior to the expiration of the <halttheassault.com> domain name. Such use does make it more likely than not that Respondent had actual knowledge of Complainant and its mark at the time it registered the disputed domain name and Respondent has not rebutted this.
Next, Complainant argues that Respondent registered and uses the <halttheassault.com> domain name in bad faith. Use of a disputed domain name to mimic a complainant’s website may show bad faith per Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”) As previously noted, Complainant provides screenshots of two versions of the disputed domain name – that used by Complainant prior to expiration of the disputed domain name and that used by Respondent after it registered the same. These show identical content, including the appearance of a banner that says “Donate Now To Halt The Assault”. Complainant asserts that Respondent is seeking commercial gain through its use of the former website content and Respondent does not refute this. The Panel thus agrees with Complainant that the content of Respondent’s website makes it highly likely that the disputed domain name has been used for commercial gain based upon confusion with Complainant’s mark in bad faith under Policy ¶ 4(b)(iv).
Additionally, Complainant claims that Respondent registered the <halttheassault.com> domain name opportunistically in bad faith. Registering a domain name after its previous owner mistakenly allows its ownership to expire may be evidence of opportunistic bad faith according to Policy ¶ 4(a)(iii). See Avocent Huntsville Corp. v. Taro Yamada / Personal, FA1409001582613 (Forum Nov. 25, 2014) (holding that the respondent had engaged in opportunistic bad faith pursuant to policy ¶ 4(a)(iii), when it registered the disputed domain name immediately after the complainant mistakenly allowed it to expire). As previously noted, Complainant notes that it previously owned the <halttheassault.com> domain name but inadvertently let it expire following which Respondent registered the domain name. While registration of a disputed domain name after its inadvertent expiration should not per se indicate bad faith, when all of the circumstances of this case are considered, including the content of Respondent’s website, the Panel finds it just to hold that Respondent registered the disputed domain name opportunistically in bad faith.
Finally, Complainant claims that Respondent’s use of a privacy service in registration of the domain name signals bad faith. A respondent's use of a privacy registration service in an attempt to conceal its identity, though not itself dispositive, can be a further indication of bad faith. See Phoenix Niesley-Lindgren Watt v. Contact Privacy Inc., Customer 0150049249, FA 1800231 (Forum Sept. 6. 2018) (“In a commercial context, using a WHOIS privacy service raises the rebuttable presumption of bad faith registration and use of the disputed domain name. An honest merchant in the marketplace does not generally try to conceal the merchant’s identity. Good faith requires honesty in fact. Respondent did nothing to rebut this presumption of bad faith. Therefore, the Panel will find bad faith registration and use for this reason.”) Here, Complainant does not provide a copy of the public WHOIS record for the disputed domain name and so the Panel has no information upon which to consider the question of whether Respondent did, in fact, use a privacy service when it registered the halttheassault.com> domain name.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <halttheassault.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: September 21, 2020
[i] Dean & Simmons, Sàrl and Heintz Van Landewyck S.à.r.l. v. Domain Capital / Moniker Privacy Services, D2015-0080 (WIPO Mar. 27, 2015) (“Few things are more settled, or more fundamental under the Policy and Rules, than the requirement that material factual allegations must be proven, not simply alleged.”)
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