Leidos, Inc. v. Chris Moore / JCI Group
Claim Number: FA2107001955151
Complainant is Leidos, Inc. (“Complainant”), represented by Kandis M. Koustenis of Bean, Kinney & Korman, P.C., Virginia, USA. Respondent is Chris Moore / JCI Group (“Respondent”), Wisconsin, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <leidosglobal.com>, 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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 14, 2021; the Forum received payment on July 14, 2021.
On July 14, 2021, NameCheap, Inc. confirmed by e-mail to the Forum that the <leidosglobal.com> 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 ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 15, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 4, 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@leidosglobal.com. Also on July 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 August 6, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the LEIDOS trademark and service mark acquired by its ownership of the USPTO trademark and service mark registrations described below and at common law by its use of the mark in the provision of services in the field of science, technology and engineering including on its website to which its domain name <leidos.com> resolves.
Complainant submits that the disputed domain name <leidosglobal.com> is confusingly similar to Complainant’s LEIDOS mark arguing that it is a complete and exact reproduction of the mark, adding only the generic term “global.”
Complainant contends that the addition of the generic term “global” does not serve to distinguish the disputed domain name from Complainant’s mark and domain names. See United States Postal Service v. Domain Administrator / Fundacion Privacy Services LTD, FA 1805001788546 (Forum June 21, 2018) (finding that a domain name that uses the complaint’s mark and simply adds the generic term “global” and the “.com” gTLD is confusing similar.)
Complainant adds that Respondent has no rights or legitimate interests in the disputed domain name arguing that LEIDOS is an arbitrary term that has no meaning except to identify Complainant as a source of certain products and services and that the disputed domain name that incorporates Complainant’s mark was registered on July 1, 2021, long after Complainant registered and began using the LEIDOS mark.
Complainant submits that upon information and belief, Respondent is not a licensee of Complainant nor is Respondent otherwise authorized to use Complainant’s LEIDOS mark for any purpose.
Complainant adds that upon information and belief, Respondent also is not commonly known as “LEIDOS.” Thus, Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).
Complainant further alleges that upon information and belief, Respondent is using the disputed domain name to establish e-mail addresses similar to Complainant’s in order to “phish” for information and defraud Complainant, its business partners, and the general public.
In this regard, Complainant refers to a copy of an e-mail submitted in evidence in an annex to the Complaint. The email is dated July 7, 2021, only six days after the registration of the disputed domain name, and purports to be sent by an individual at the e-mail address “****@leidosglobal.com” (full details of the email address is supplied in the Complaint but redacted by the Panel) masquerading as named employee of Complainant and sent to a third party requesting a proposal for goods.
Complainant submits that use of the disputed domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See Leidos, Inc. v. Lary Desmond / xyz Inc., FA 1903001832572 (Forum Apr. 15, 2019) (“Using a confusingly similar domain name to phish for personal/ financial information by passing off as a complainant in emails can evince a lack of rights and legitimate interests under Policy ¶¶ 4(c)(i) and (iii)”) (citing Caterpillar Inc. v. ruth weinstein, FA 1770352 (Forum Mar. 7, 2018)).
Complainant further alleges that upon information and belief, Respondent does not use and has made no preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
Referring to a screen capture of the webpage to which the disputed domain name resolves, submitted in an annex to the Complaint, Complainant submits that the disputed domain name currently resolves to a parked web page which contains no content other than a list of “related links” that diverts Internet traffic to web pages related to random categories of goods and services. The exhibited screen capture shows the parked web page and examples of the redirected traffic results accessible at the location to which the disputed domain name resolves.
Complainant then alleges that the disputed domain name has been registered and is being used in bad faith, arguing that upon information and belief, Respondent registered and is using the disputed domain name in bad faith to profit from and exploit Complainant’s LEIDOS mark, and to perpetuate a phishing scheme by intentionally passing itself off as one of Complainant employees by email sent from an account established using the disputed domain names.
Complainant contends that Respondent had actual knowledge of Complainant’s rights in the LEIDOS mark when it registered the disputed domain name, arguing that Respondent’s actual knowledge is evident from the notoriety of Complainant’s trademark and from Respondent’s use of the disputed domain name to impersonate Complainant’s employee as shown by the aforementioned copy email that has been submitted in the annex to the Complaint.
Additionally, Complainant argues that the designation LEIDOS is unique and arbitrary such that it is unlikely that the Respondent devised the disputed domain name <leidosglobal.com> on his own. This factor alone weighs in favor of finding bad faith against Respondent. See Neuberger Berman Inc. v. Alfred Jacobsen WIPO Case No. D2000-0323 (Nov. 2, 2000) (weighing the uniqueness of the trademark, and the likelihood of Respondent coming up with the domain name independently, in finding bad faith).
Complainant submits that the registration and use of the confusingly similar disputed domain name, with knowledge of Complainant’s rights in the LEIDOS mark shows bad faith registration and use pursuant to 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).
Complainant adds that prior panels have found the use of an e-mail address to pass off as a complainant constitutes registration and use of a domain name in bad faith under UDRP Policy ¶¶ 4(a)(iii) and 4(b). See Leidos, Inc. v. Larry Desmond / xyz Inc., supra (finding bad faith in attempts to pass off as Complainant through an e-mail address associated with the domain name).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant provides science, technology and engineering services using the LEIDOS mark for which it owns of the following registered trademarks and service marks:
· United States registered service mark LEIDOS, registration number 4937101 registered on the Principal Register on April 12, 2016, for services in international classes 37, 38 and 41
· United States registered trademark LEIDOS registration number 5476704, registered on the Principal Register on May 22, 2018 for goods in international class 9;
· United States registered service mark LEIDOS, registration number 5277665, registered on the Principal Register on August 1, 2017 for services in international classes 37, 38 and 41.
Complainant has an established Internet presence and maintains a website to which its domain name <leisos.com> resolves.
The disputed domain name was registered on July 1, 2021 and has been used to create an email account which Respondent is using to send messages purporting to come from an employee of Complainant.
There is no information available about Respondent, except for that provided in the Complaint, the Registrar’s WhoIs and the information provided by the Registrar in response to the request by the Forum for details of the registration of the disputed domain name. The Registrar has confirmed that Respondent, who availed of a privacy service to conceal his identity on the published WhoIs is the registrant of the disputed domain name.
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”).
Complainant has provided clear and convincing evidence that it has rights in the LEIDOS trademark and service mark acquired by its ownership of the trademark and service mark registrations described above and at common law by the goodwill that it has established in the mark by its use in the provision of services in the field of science, technology and engineering including on its website to which domain name <leidos.com> resolves.
The disputed domain name consists of Complainant’s LEIDOS mark, the descriptive word “global” and the generic Top Level Domain (“gTLD”) extension <.com>
Complainant’s LEIDOS mark is the initial and only distinctive element in the disputed domain name.
The term “global” is descriptive, having no distinguishing character in context, and in the circumstances of this Complaint, the gTLD <.com> extension would be perceived as a necessary technical requirement for the domain name.
This Panel finds therefore that the disputed domain name is confusingly similar to the LEIDOS mark in which Complainant has rights. Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out an uncontested prima facie case that Respondent has no rights or legitimate interests in the disputed domain name arguing that
· the disputed domain name is confusingly similar to the LEIDOS mark which is an arbitrary term that has no meaning outside of its use as a means to identify Complainant as a source of certain products and services;
· the disputed domain name was registered on July 1, 2021 long after Complainant registered and commenced use of the LEIDOS mark;
· Respondent is not a licensee of Complainant nor is Respondent otherwise authorized to use Complainant’s LEIDOS mark for any purpose;
· Respondent is not commonly known as “LEIDOS” and therefore not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii);
· the copy email which has been adduced in evidence in an annex to the Complaint shows that Respondent is using the disputed domain name to establish e-mail addresses similar to Complainant’s in order to “phish” for information and defraud Complainant, its business partners, and the general public;
· there is no evidence that Respondent uses or has made any preparations to use the disputed domain name in connection with a bona fide offering of goods or services;
· the screen capture of the webpage to which the disputed domain name resolves, submitted in an annex to the Complaint, shows that the disputed domain name currently resolves to a parked web page which contains no content other than a list of “related links” that diverts the internet traffic to web pages related to random categories of goods and services.
It is well established that, as in this case, once a complainant makes out a prima facie case that the respondent has no rights or legitimate interests in the domain names at issue, the burden of production shifts the respondent to prove such rights or interests.
Respondent has failed to discharge that burden and therefore this Panel must find that on the balance of probabilities, Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
Complainant has satisfied this Panel that on the balance of probabilities the disputed domain name was registered in bad faith because it is composed of Complainant’s distinctive trademark in its entirety, in combination with the descriptive term “global”. Furthermore, Complainant has an extensive international business and reputation which predates the registration of the disputed domain name. Also it is improbable that the registrant of the disputed domain name was unaware of Complainant’s <leidos.com> domain name and the website to which it resolves when the disputed domain name was chosen and registered.
This Panel finds therefore that on the balance of probabilities the disputed domain name was chosen and registered, with Complainant’s mark in mind, to take predatory advantage of Complainant’s name, mark, domain name, reputation and goodwill.
Additionally Complainant has satisfied this Panel that on the balance of probabilities the disputed domain name is being used in bad faith because the uncontested evidence indicates that it is being misleadingly used as an email address to send emails to unsuspecting third parties, from an account established by Respondent impersonating a named employee of Complainant.
The email states inter alia “Leidos Inc is requesting proposal from vendors to provide computer components. The purpose for seeking these computer component is to improve and update our systems” Complainant has asserted that the email was not sent from its employee.
This Panel finds that on the balance of probabilities by sending this email Respondent is engaged in a phishing attempt as alleged by Complainant.
As this Panel has found that on the balance of probabilities the disputed domain name was registered and is being used in bad faith, Complainant has therefore succeeded in the third and final element of the test in Policy ¶ 4(a)(iii) and is entitled to succeed in its application for transfer of the disputed 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 <leidosglobal.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: August 9, 2021
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