iZotope, Inc. v. Troung Jonathan / Ader gaming
Claim Number: FA2104001940915
Complainant is iZotope, Inc. (“Complainant”), represented by John L. Strand of Wolf, Greenfield & Sacks, P.C., Massachusetts, USA. Respondent is Troung Jonathan / Ader gaming (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <izotope.us>, 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 9, 2021; the Forum received payment on April 9, 2021.
On April 9, 2021, NameCheap, Inc. confirmed by e-mail to the Forum that the <izotope.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 April 15, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 5, 2021 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@izotope.us. Also on April 15, 2021, 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 May 11, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 Dispute Resolution Policy ("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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant is a known audio technology company which develops professional audio software and hardware for audio recording, mixing, broadcast, sound design, and mastering.
Complainant has rights in the IZOTOPE mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <izotope.us> is identical to Complainant’s IZOTOPE mark as it contains the entire mark and merely adds the top-level domain (“TLD”) “.us.”
Respondent lacks rights or legitimate interests in the <izotope.us> domain name. Respondent (as an individual, business, or other organization) has not been commonly known by the at-issue domain name. Respondent is also not employed by the Complainant or licensed by the Complainant to use the IZOTOPE mark. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services as Respondent uses the domain name to send emails pretending to be from Complainant in furtherance of a financial scam. Additionally, the domain name resolves to an inactive website.
Respondent registered and uses the <izotope.us> domain name in bad faith. Respondent uses the disputed domain name to send emails mimicking Complainant’s employees in furtherance of a financial scam. Furthermore, the at-issue domain name resolves to an inactive website. Respondent also registered the at-issue domain name using false WHOIS information. Finally, Respondent had knowledge of Complainant’s IZOTOPE mark evidenced by Complainant’s registrations with the USPTO.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the IZOTOPE trademark.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in IZOTOPE trademark.
Respondent uses the <izotope.us> domain name to facilitate an email phishing scheme.
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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The at-issue domain name is confusingly similar or identical to a trademark in which Complainant has rights.
Complainant’s ownership of a USPTO trademark registration for IZOTOPE demonstrates Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(I). See Microsoft Corp. v. Burkes, FA 652743 (Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
The at-issue domain name consists of Complainant’s IZOTOPE trademark followed by the top level domain name “.us” to complete the domain name. The differences between the <izotope.us> domain name and Complainant’s IZOTOPE trademark are insufficient to distinguish the domain name from Complainant’s trademark for the purposes of the Policy. Therefore, the Panel finds that pursuant to Policy ¶ 4(a)(i) Respondent’s <izotope.us> domain name is confusingly similar or identical to Complainant’s IZOTOPE trademark. See MIGROS-GENOSSENSCHAFTS-BUND v. Tayfun yalcin, FA 1621184 (Forum July 8, 2015) (“In light of the fact that Respondent’s disputed domain name incorporates Complainant’s whole mark and merely adds the ccTLD “.us,” the Panel here finds that the disputed domain name is identical to Complainant’s MIGROS mark.”).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the confusingly similar (or identical) <izotope.us> domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
The WHOIS information for the at-issue domain name identifies the domain name’s registrant as “TROUNG JONATHAN” and the record before the Panel contains no evidence that otherwise tends to show that Respondent is commonly known by the <izotope.us> domain name. The Panel therefore concludes that Respondent is not commonly known by the at-issue domain name for the purposes of Policy ¶ 4(c)(iii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Next, while Respondent’s at-issue domain name fails to address any web content the domain name is nevertheless used to host email in support of a phishing scheme. In such scheme, Respondent uses the <izotope.us> domain name to host emails pretending to be from Complainant to third-parties. Respondent, via the email address “careers@izotope.us,” sends emails using the IZOTOPE name, logo, and the name of an iZotope employee within the email to deliver the illusion that the phony email is being sent by Complainant, when it is not. The substance of Respondent’s email is designed to deceive its recipient into believing that such recipient is being considered for employment with Complainant, when they are actually being scammed by Respondent. Respondent’s scheme further entails that the prospective employee engage with “Complainant “ (as played by Respondent or an associate of Respondent) as part of the process of securing a position with Complainant’s company. Respondent thereby lulls third parties into giving up private information and/or funds under the false pretext of securing a job with Complainant. Clearly, Respondent’s duplicitous use of the at-issue domain name as discussed above supports neither a bona fide offering of goods or services under Policy ¶ 4(c)(ii), nor a non-commercial or fair use of the domain name under Policy ¶ 4(c)(iv). See Emerson Electric Co. v. Adilcon Rocha, FA 1735949 (Forum July 11, 2017) (finding that respondent’s attempt to pass off as complainant through emails does not constitute a bona fide offering of goods or services and, as such, respondent lacked rights or legitimate interests in the disputed domain name); see also, Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018) (“both Domain Names resolve to a web site that shows the words, ‘Not Found, The requested URL / was not found on this server.’ Inactive holding of a domain name does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii).”).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶ 4(a)(ii).
Respondent’s <izotope.us> domain name was registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First and as discussed in greater detail above regarding rights and legitimate interest, Respondent’s confusingly similar or identical domain name is used to facilitate an email phishing scheme whereby Respondent impersonates Complainant via deceptive email in furtherance of fraud. Respondent’s use of the <izotope.us> domain name to steal Complainant’s identity and pass itself off as Complainant to defraud third parties disrupts Complainant’s business and demonstrates Respondent’s bad faith registration and use of the <izotope.us> domain name pursuant to Policy ¶ 4(b)(iii) and (iv). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the <abbuie.com> 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), and/or Policy ¶ 4(b)(iv)”).
Additionally, Respondent had actual knowledge of Complainant’s rights in the IZOTOPE mark when it registered and used the at-issue domain name. Respondent’s actual knowledge is evident from the notoriety of Complainant’s IZOTOPE trademark and from Respondent’s use of the <izotope.us> domain name to attempt to impersonate Complainant through fraudulent email. Respondent’s registration and use of the confusingly similar domain name with knowledge of Complainant’s trademark rights in such domain name further shows Respondent’s bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); 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).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <izotope.us> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: May 12, 2021
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