Blackhawk Network, Inc. v. Richard White
Claim Number: FA2106001950678
Complainant is Blackhawk Network, Inc. (“Complainant”), represented by Jonathan Matkowsky of RiskIQ, Inc., California, USA. Respondent is Richard White (“Respondent”), North Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <myprepaidcenter.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.
Charles A. Kuechenmeister, Panelist.
Complainant submitted a Complaint to the Forum electronically on June 11, 2021; the Forum received payment on June 11, 2021.
On June 14, 2021, NameCheap, Inc. confirmed by e-mail to the Forum that the <myprepaidcenter.us> domain name (the 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 June 14, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of July 6, 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@myprepaidcenter.us. Also on June 14, 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 July 8, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister 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 to the usTLD Dispute Resolution Policy (“Rules”). 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 a Response from Respondent.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
A. Complainant
Complainant sells gift cards and provides information such as prepaid card balances, transaction histories, alerts, etc. It has rights in the MY PREPAID CENTER mark based on its registration of that mark with the United States Patent and Trademark Office (“USPTO”). Respondent’s <myprepaidcenter.us> domain name is confusingly similar to Complainant’s mark since it incorporates Complainant’s entire mark, merely adding the country code top level domain (“ccTLD”) “.us.”
Respondent has no rights or legitimate interests in the Domain Name. It does not use the Domain Name for a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Instead, Respondent uses the Domain Name to divert users to Respondent’s own website where it harvests their personal information.
Respondent registered or uses the Domain Name in bad faith. By its use of Complainant’s mark, Respondent created a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website in an attempt to collect personal information about at Internet users potentially to perpetrate fraud or distribute malware.
B. Respondent
Respondent did not submit a Response in this proceeding.
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 a complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:
(1) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) the 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, except where differences in the two policies require a different analysis.
In view of Respondent's failure to submit a Response, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations 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. Nevertheless, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. 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”), WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), at ¶ 4.3 (“In cases involving wholly unsupported and conclusory allegations advanced by the complainant, . . . panels may find that—despite a respondent’s default—a complainant has failed to prove its case.”).
The Panel finds as follows with respect to the matters at issue in this proceeding:
The MY PREPAID CENTER mark was registered to Complainant with the USPTO (Reg. No. 4,733,817) on May 12, 2015 (Complaint Annex 6). Complainant’s registration of this mark with a national trademark authority such as the USPTO establishes its rights in that mark for the purposes of Policy ¶ 4(a)(i). Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).”
Respondent’s <myprepaidcenter.us> Domain Name is identical or confusingly similar to Complainant’s MY PREPAID CENTER mark because it incorporates that mark in its entirety, merely adding the “.us” ccTLD. This change does not distinguish the Domain Name from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). 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.”), Lifetouch, Inc. v. Fox Photographics, FA 414667 (Forum Mar. 21, 2005) (finding the respondent’s <lifetouch.us> domain name to be identical to the complainant’s LIFETOUCH mark because “[t]he addition of “.us” to a mark fails to distinguish the domain name from the mark pursuant to the [usTLD] Policy”). The WIPO Overview 3.0, at ¶ 1.7, states that the test for confusing similarity ”typically involves a side-by-side comparison of the domain name and the relevant trademark to assess whether the mark is recognizable within the domain name.” Notwithstanding the change described above, Complainant’s mark is clearly recognizable within the Domain Name.
For the reasons set forth above, the Panel finds that the Domain Name is identical or confusingly similar to the MY PREPAID CENTER mark, in which Complainant has substantial and demonstrated rights.
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. 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”). If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0, at ¶ 2.1.
Policy ¶ 4(c) lists the following four nonexclusive circumstances, any one of which if proven can demonstrate a respondent’s rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) The respondent is the owner or beneficiary of a trade or service mark that is identical to the domain name;
(ii) Before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;
(iii) The respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iv) The respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name because Respondent is using it for a web site which harvests personal information from Internet users under false pretenses using search engine optimization poisoning. The Panel addresses these allegations as follows:
First, however, the Panel notes that Complainant does not mention or discuss any of the indicia of rights or legitimate interests listed in Policy ¶ 4(c). While the evidence of harvesting personal information under false pretenses, discussed more fully below, certainly tends to indicate a lack of rights or legitimate interests, Complainant’s failure explicitly to address the Policy ¶ 4(c) factors raises concern about whether it has made the required prima facie case. If, for instance, Respondent were the owner or beneficiary of a trademark identical to the Domain Name, or if it were commonly known by the Domain Name, its apparently unlawful use of the Domain Name might or might not be overcome by this evidence. In any event it is incumbent upon a complainant to make out a prima facie case that the respondent does not qualify for rights or legitimate interests under any of those factors, and this Complainant has utterly failed to address any of them.
Nevertheless, the evidence in the record does enable the Panel to make findings bearing on the Policy ¶ 4(c) factors. As to Policy ¶ 4(c)(i), complainants in usTLD cases typically search one or more governmental trademark authorities and report negative results to establish a prima facie case as to Policy ¶ 4(c)(i). Complainant here offered no such evidence. The evidence presented here is still sufficient, however, to establish an inference that Respondent is not the owner or beneficiary of a trade or service mark identical to the Domain Name. The USPTO registration certificate issued to Complainant evidences its rights in the MY PREPAID CENTER mark dating from 2012 when its trademark application was filed with the USPTO (Complaint Annex 6). There is no evidence of any legitimate use of that name by Respondent. This being the case, it is extremely unlikely that the USPTO or any other governmental trademark authority would have registered a trademark identical to <myprepaidcenter.us> in the name of any person other than Complainant or one of its affiliates. Respondent registered the Domain Name in August 2017 (Complaint Annex 3), but again there is no evidence of any use of this name by Respondent other than its registration of the Domain Name and it is highly unlikely that it could have developed common law rights in that name. On this evidence, the Panel finds there is a prima facie case that Respondent is not the owner or beneficiary of a valid common law trade or service mark identical to the Domain Name.
The WHOIS information furnished to the Forum by the registrar and given in the WHOIS report submitted as Complaint Annex 3 lists “Richard White” as the registrant of the Domain Name. This name bears no resemblance to the Domain Name. Evidence could, of course, in a given case demonstrate that the respondent is commonly known by a domain name different from the name in which it registered the domain name, e.g., the case of a domain name incorporating the brand name of a specific product offered by and associated with the respondent. In the absence of any such evidence, however, and in cases where no response has been filed, UDRP panels have consistently held that WHOIS evidence of a registrant name which does not correspond with the domain name is sufficient to prove that the respondent is not commonly known by the domain name. 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), 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 Panel is satisfied that Respondent has not been commonly known by the Domain Name for the purposes of Policy ¶ 4(c)(iii).
Complaint Annex 8 contains screenshots of pages on the web site resolving from the Domain Name. Although these pages do not copy or mimic the style or general appearance of pages on the Complainant’s web site (Complaint Annex 5), they do feature the name “My Prepaid Center” prominently, and they unambiguously represent that the site is sponsored by Complainant. There are banners for “Login” and “Get Support.” There are also login boxes inviting the visitor to submit his or her card and code numbers, presumably for their accounts with Complainant, and other places inviting the visitor to submit comments. Respondent is thus passing off as Complainant and under those false pretenses seeking to harvest sensitive personal information about visitors to the site. This qualifies as phishing. Using a confusingly similar domain name to pass off as a complainant and engage in phishing is neither a bona fide offering of goods or services for the purposes of Policy ¶ 4(c)(ii) nor a legitimate noncommercial or fair use for the purposes of Policy ¶ 4(c)(iv). Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”), Enterprise Holdings, Inc. v. I S / Internet Consulting Services Inc., FA 1785242 (Forum June 5, 2018) (“On its face, the use of a domain name that is confusingly similar to the mark of another in order to facilitate a phishing scheme cannot be described as either a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). [i]
The evidence furnished by Complainant establishes the required prima facie case. On that evidence, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
(i) circumstances indicating that the respondent has registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the respondent’s web site or location or of a product of service on the respondent’s web site or location.
The evidence of Respondent’s use of the Domain Name discussed above in connection with the rights or legitimate interests analysis also supports a finding of bad faith use and registration. As discussed above, Respondent registered and is using the Domain Name to phish for the login information of Complainant’s customers to enable it to login to their accounts with Complainant. This fraudulent phishing scheme qualifies as evidence of bad faith registration and use, even though it does not fit within any of the circumstances listed in Policy ¶ 4(b). That paragraph acknowledges that mischief can manifest in many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldwcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (January 5, 2005). The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and passing oneself off as a complainant to phish for sensitive private information from others has often been held to evidence bad faith registration and use. Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA1506001625750 (Forum July 17, 2015) (“Respondent uses the <klabzuba-oilgas.com> domain to engage in phishing, which means Respondent registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii).”), McKinsey & Company, Inc., and McKinsey Holdings, Inc. v. Privacy Protection, report abuse to / Registrar: DELTA-X Ltd., FA1409001580883 (Forum Oct. 25, 2014) (holding that the respondent had engaged in phishing, which is further evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii), when the respondent used the disputed domain name in an attempt to obtain Internet users’ personal information including their driver’s license number and name).
Finally, although Complainant did not assert the argument, it is evident that Respondent had actual knowledge of Complainant’s mark in August 2017, when it registered the Domain Name (Complaint Annex 3 shows the creation date). Respondent’s web site copies Complainant’s name exactly and affirmatively poses as that of Complainant to solicit customers’ login information to gain access to their accounts with Complainant. In light of the open ended, non-exclusive nature of Policy ¶ 4(b), registering an identical or confusingly similar domain name with actual knowledge of a complainant’s rights in a mark has often been held to be evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii). 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).
For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Name in bad faith within the meaning of Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <myprepaidcenter.us> Domain Name be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
July 9, 2021
[i] The cases cited in this section were decided under the Uniform Dispute Resolution Policy (UDRP), which does not include usTLD Policy ¶ 4(c)(i). The usTLD Policy ¶¶ 4(c)(ii), (iii) and (iv) are identical to UDRP Policy ¶¶ 4(c)(i)(ii) and (iii).
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