DECISION
Dewberry Engineers Inc. v. Chen Carlo
Claim Number: FA2011001920818
PARTIES
Complainant is Dewberry Engineers Inc. (“Complainant”), represented by Kathryn C. Swain of McCandlish Lillard, P.C., United States. Respondent is Chen Carlo (“Respondent”), United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dewberry.us>, registered with NameCheap, Inc..
PANEL
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the Forum electronically on November 16, 2020; the Forum received payment on November 16, 2020.
On November 18, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <dewberry.us> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. 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 the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On November 19, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 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@dewberry.us. Also on November 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 December 15, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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 usTLD 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 usTLD Policy, usTLD 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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES' CONTENTIONS
A. Complainant
1. Complainant has rights in the DEWBERRY mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,991,044, registered on October 13, 2020). The <dewberry.us> domain name is confusingly similar to the DEWBERRY mark as the domain name incorporates the mark in its entirety and does not alter the overall commercial impression.
2. Respondent has no rights or legitimate interests in the <dewberry.us> domain name. Respondent is not commonly known by the disputed domain name. Further, Respondent does not have rights in any marks similar to the disputed domain name. Additionally, Respondent is not making a bona fide offering of goods or services via the disputed domain name, nor a legitimate noncommercial or fair use because the disputed domain name does not resolve to any active website.
3. Respondent registered or uses the <dewberry.us> domain name in bad faith because the domain name does not resolve to an active webpage. Additionally, Respondent attempted to use the disputed domain name in connection with fraud.
B. Respondent
1. Respondent did not submit a response.
FINDINGS
1. Respondent’s <dewberry.us> domain name is confusingly similar to Complainant’s DEWBERRY mark.
2. Respondent does not have any rights or legitimate interests in the <dewberry.us> domain name.
3. Respondent registered or used the <dewberry.us> domain name in bad faith.
DISCUSSION
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”).
Identical and/or Confusingly Similar
Complainant asserts rights in the DEWBERRY mark based upon registration with the USPTO. Registration of a mark with multiple trademark authorities can demonstrate rights in a mark per Policy ¶ 4(a)(i). See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA 1625332 (Forum July 17, 2015) (finding,
“Registration of a mark with a governmental authority (or, in this case, multiple governmental authorities) is sufficient to establish rights in the mark for purposes of Policy ¶4(a)(i)”). Complainant provides evidence of registration with the USPTO (e.g., Reg. No. 2,991,044, registered on October 13, 2020). The Panel therefore finds respondent has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that the <dewberry.us> domain name is confusingly similar to the DEWBERRY mark as the domain name incorporates the mark in its entirety and does not alter the overall commercial impression. It may be noted that the disputed domain name also appends the “.us” country-code top-level domain to the mark. Under Policy ¶ 4(a)(i), the addition of a ccTLD to a fully incorporated mark is unsuccessful in overcoming confusing similarity between a domain name and a mark. See Allied Bldg. Prods. Corp. v. Henkel, FA 827652 (Forum Dec. 11, 2006) (holding that “it is well established that the top-level domain, here “.us,” is insignificant with regard to UDRP analysis” when determining confusing similarity). Therefore, this Panel agrees that the disputed domain name is identical or confusingly similar to the DEWBERRY mark.
Rights or Legitimate Interests
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”).
Complainant claims that Respondent has no rights or legitimate interests in the <dewberry.us> domain name because Respondent is not commonly known by the disputed domain name. When no response is submitted, WHOIS information may be used to determine whether a respondent is commonly known by a domain name per Policy ¶ 4(c)(iii). 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). Here, the WHOIS information identifies the registrant as "Chen Carlo" and no other information of record suggests that Respondent is commonly known by the disputed domain name. The Panel therefore finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(iii).
Further, Complainant claims that Respondent does not have rights in any marks similar to the <dewberry.us> domain name. Lack of registration of a mark identical to a disputed domain name supports a finding that the respondent lacks rights and legitimate interests in the domain name under Policy ¶ 4(c)(i). See Pepsico, Inc. v. Becky, FA 117014 (Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)). Complainant notes that “dewberry.us” is not a registered trademark and there is no evidence that Respondent has any other trademark registrations relating to the disputed domain name. Therefore, this Panel concludes that Respondent has not satisfied Policy ¶ 4(c)(i).
Additionally, Complainant argues that Respondent is not making a bona fide offering of goods or services via the <dewberry.us> domain name, nor a legitimate noncommercial or fair use because the disputed domain name does not resolve to any active website. Passively holding a domain name is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(ii) and (iv). See TMP Int’l, Inc. v. Baker Enters., FA 204112 (Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's [failure to make an active use] of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”). Complainant claims that it has seen no evidence of any use or demonstrable preparations to use the disputed domain name in connection with an active webpage. The Panel finds that Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(ii) or (iv).
Registration or Use in Bad Faith
The Panel finds that while Complainant has not made arguments under Policy ¶ 4(b), such arguments are not required under the Policy—so long as Complainant shows bad faith use and registration in some manner. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); see also Bloomberg Finance L.P. v. Nikita A Paskhalnyy / Private Person, FA 1638757 (Forum Nov. 5, 2015) (the panel noting that Policy ¶ 4(b) factors “are meant to be merely illustrative of bad faith, and that Respondent’s bad faith may be demonstrated under the totality of the circumstances”). The Panel therefore finds Complainant’s Policy ¶ 4(a)(iii) arguments are sufficient to establish bad faith.
Complainant also argues that Respondent registered or uses the <dewberry.us> domain name in bad faith since Respondent attempted to use the disputed domain name in connection with fraud. Use of a disputed domain name in connection with fraudulent activity is evidence of bad faith per Policy ¶ 4(a)(iii). See SHUAA Capital psc v. Oba Junkie / shuaa capital psc, FA14009001581255 (Forum Oct. 29, 2014) (“The Panel finds that Respondent’s use of the domain name’s e-mail suffix for fraudulent purposes illustrates Policy ¶ 4(a)(iii) bad faith.”); see also Juno Online Servs., Inc. v. Nelson, FA 241972 (Forum Mar. 29, 2004) (“The domain name <billing-juno.com> was registered and used in bad faith by using the name for fraudulent purposes.”). Complainant provides an automatic payment authorization agreement and verification letter from its bank showing an attempt to initiate deposits to an account not associated with Complainant. See Compl. Exs. 7 & 8. Complainant claims that Respondent used deceptive email addresses associated with the disputed domain name or otherwise impersonated Complainant’s personnel to fraudulently redirect funds. The Panel agrees and finds that Respondent registered or used the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
DECISION
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dewberry.us> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: December 29, 2020
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page