MP Mine Operations LLC v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA2109001963907
Complainant is MP Mine Operations LLC (“Complainant”), represented by Pamela N. Hirschman of Sheridan Ross P.C., Colorado, USA. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mpmaterial.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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 15, 2021; the Forum received payment on September 15, 2021.
On September 16, 2021, Godaddy.Com, Llc confirmed by e-mail to the Forum that the <mpmaterial.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 September 17, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 7, 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@mpmaterial.com. Also on September 17, 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 October 12, 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 submits that it is a mining company engaged in the mining, milling, separations and finishing of rare earth elements and claims rights in the MP MATERIALS and MP MATERIALS & Design marks established through its ownership of the trademark registrations described below.
Complainant submits that it has used these marks since it acquired the Mountain Pass rare earth mine in California and restarted mining operations in Q4 of 2017.
The scope of Complainant’s operations includes mining, milling, separations and finishing of rare earth elements and its Mountain Pass mine is the sole rare earth mining and processing site in North America. Its first sales of rare earth concentrate under the mark MP MATERIALS occurred in U.S. commerce at least as early as January 4, 2018.
Complainant alleges that the disputed domain name <mpmaterial.com>, is confusingly similar and virtually identical to its MP MATERIALS and MP MATERIALS & Design marks, arguing that the minor differences in the <mpmaterial.com> do not distinguish the disputed domain name from Complainant's marks.
Complainant specifically argues that the mere omission of the letter “s” from the registered trademark does not diminish the similarity between the disputed domain name and Complainant’s MP MATERIALS registered trademark. See Morgan Stanley v. Domain Admin, FA 1783121 (Forum June 1, 2018) (“Respondent’s … domain name [morganstanle.com] is confusingly similar to Complainant’s … mark as it wholly incorporates the mark, but for the omission of the letter ‘y’ and . . . appends the ‘.com’ gTLD.”).
Complainant adds that the lack of existence of the design element in the disputed domain name does not differentiate the disputed domain name from Complainant's MP MATERIALS & Design mark because logos cannot be represented in domain names. See PersonalizationMall.com v. Compania Swanson/Hector Valdera, FA 1483905 (Forum Apr. 8, 2013) (design elements of a mark are irrelevant to a Policy ¶ 4 analysis).
Complainant further submits that the generic Top-Level Domain (“gTLD”) extension <.com> is not sufficient to negate the confusingly similar nature of the disputed domain name to Complainant’s registered marks. See Univar Solutions, Inc. v. David, FA 1881903 (Forum Feb. 27, 2020) (The addition of a generic term and a gTLD does not negate confusing similarity between a domain name and a trademark contained within it.)
Complainant then alleges that Respondent has no rights or legitimate interests in the disputed domain name as there is nothing in the record to show that Respondent is commonly known by the disputed domain name or Complainant’s mark and adds that since she has availed of a privacy service to conceal her identity it can be assumed that Respondent is not commonly known as “mpmaterial.com” or “MP MATERIAL”. See Kohler Co. v. Privacy Service, FA1621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name under Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant in the WHOIS record for the disputed domain name).
Furthermore, Respondent’s true identity has since been divulged by the Registrar as required by UDRP Rule 4(b) as Carolina Rodrigues of the organization Fundacion Comercio Electronico, showing that Respondent is clearly not commonly known by MP MATERIAL or any variation thereof.
Complainant adds that there is no relationship between the Parties giving rise to any license, authorization, permission, or other right by which the Respondent could own or use any domain name incorporating Complainant's marks. See Nasdaq, Inc. v. Domain Administrator, FA 1900328 (Forum July 11, 2020) ("Complainant's lack of authorization for Respondent to use its trademark also suggests that Respondent lacks rights and legitimate interests in respect of the <nasdaq853.com>.")
Complainant refers to screen captures of the website to which the disputed domain name resolves attached as an annex to the Complaint. Complainant argues that the screen captures show that Respondent is using the disputed domain name to perpetuate fraud, by redirecting users to what is presumable as malware download page in order to obtain personal information from Internet users. See La-Z-Boy Chair Company v. ReachLocal Hostmaster, FA 2103001935231 (Forum Apr. 1, 2021) (Using an infringing domain name to obtain personal and financial information from Internet users is not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).).
Complainant adds that once past the redirect notice that appears on the website, the disputed domain name resolves to a webpage that prominently features multiple links redirecting Internet users visiting the website to third-party websites unrelated to Complainant’s marks and submits that it can be presumed that Respondent is collecting referral fees each time a user is rerouted to a third-party site.
Complainant submits that such use of a domain name does not qualify as a bona fide offering of goods or service pursuant to Policy ¶ 4(c)(i)). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Complainant then alleges that the disputed domain name was registered and is being used in bad faith arguing that there is no bona fide reason to conceal the identity of an actor in the commercial marketplace and in a commercial context the use of a privacy service to conceal the identity of the registrant raises a rebuttable presumption of bad faith registration and use. See Pentair, Inc. v. Vietnam Domain Privacy Services / Pham Dinh Nhut, D2014-2161 (WIPO Feb. 9, 2015) (the use of a privacy service by Respondent further supports the Panel's finding of bad faith).
Complainant contends that the registration and use of the disputed domain name which is identical or confusingly similar to Complainant’s trademark constitutes bad faith for the purposes of the Policy.
The evidence shows that Complainant’s rights predate the registration of the disputed domain name on April 16, 2021.
Complainant adds that the disputed domain name <mpmaterial.com> is essentially identical to Complainant’s MP MATERIALS marks merely omitting the letter “s” in the registered trademark. Complainant submits that this indicates that the registrant knew of Complainant and its rights when the disputed domain name was registered and that the registration is an example of typosquatting which is in itself grounds for finding bad faith registration and use. See Cost Plus Management Services, Inc. v. xushuaiwei, FA 1800036 (Forum Sept. 7, 2018) (“Typosquatting itself is evidence of relevant bad faith registration and use.”).
Complainant again refers to the screen captures of the websites to which the disputed domain name resolves and argues that they illustrate that Respondent is using the disputed domain name in bad faith to attract and divert Internet users to a website that in the first instance is phishing for personal information and then links to a web page with links to third party websites from which presumably Respondent is receiving pay-per-click income.
Complaint argues that the record shows that by such registration and use of the disputed domain name Respondent has intentionally attempted to attract Internet users to Respondent’s own website and to other websites unrelated to Complainant for commercial gain, by creating a likelihood of confusion with Complainant's marks and redirecting consumers to potential malware downloads and third-party webpages.
B. Respondent
Respondent failed to submit a Response in this proceeding.
· United States Federal trademark MP MATERIALS (Design), registration number 5535707 registered on the Principal Register on August 7, 2018 for goods in international class 1.
· United States Federal trademark MP MATERIALS, registration number 5535709, registered on the Principal Register on August 7, 2018 for goods in international class 1.
Complainant has an established Internet presence and maintains a website to which its own domain name <mpmateials.com> resolves. Complainant’s <mpmaterials.com> domain name was registered on August 31, 2017.
The disputed domain name was registered on April 16, 2021 and resolves to a website that on the balance of probabilities is being used to either to distribute malware of for the purposes of phishing and is linked to webpages with pay-per-click links to third party websites.
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 verification of the registration details of the disputed domain name in the course of 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 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, uncontested evidence of its rights in the MP MATERIALS trademark established through its ownership of the above trademark registrations and its use of the mark in its mining business in North America since January 4, 2018.
The disputed domain name <mpmaterial.com> consists of the letters “mp” and the word “material” in combination with the gTLD extension <.com>.
Notwithstanding the omissions of the space between the letters “mp” and the word “material” and the letter “s”, Complainant’s MP MATERIALS trademark is clearly identifiable as the dominant and distinctive element in the disputed domain name.
The omission of the space between the letters “mp” and “materials” and the letter “s” do not add any distinguishing character to the disputed domain name and would not avoid inevitable confusion with Complainant’s mark among Internet users. In the context of this Complaint, the gTLD extension <.com> may be ignored as it would be perceived as a necessary technical element for a domain name.
This Panel finds therefore that the disputed domain name is confusingly similar to the MP MATERIALS 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 a prima facie case that Respondent has no rights or interests in the disputed domain name submitting that
· there is nothing in the record to show that Respondent is commonly known by the disputed domain name or Complainant’s mark;
· since Respondent availed of a privacy service to conceal her identity it can be assumed that she is not commonly known as “mpmaterial.com” or “MP MATERIAL”;
· since Respondent’s true identity has been divulged by the Registrar as Carolina Rodrigues;
· there is no relationship between the Parties giving rise to any license, authorization, permission, or other right by which the Respondent could own or use any domain name incorporating Complainant's marks;
· the screen captures of the website to which the disputed domain name resolves show that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, but instead it is being used to perpetuate fraud, by redirecting users to what is presumably a malware download page in order to obtain personal information from Internet users;
· the screen captures also show that once past the landing page on the website, the <mpmaterial.com> users are brought to a website prominently featuring multiple links redirecting users to third-party websites unrelated to Complainant’s marks and this is presumably to collect referral fees each time a user is rerouted to the third-party sites;
· such use of a domain name does not qualify as a bona fide offering of goods or service pursuant to Policy ¶ 4(c)(i).
It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in a domain name at issue the burden of production shifts to the respondent to prove her rights.
Respondent has failed to discharge the burden and therefore this Panel must find that Complainant has proven on the balance of probabilities that 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).
The evidence adduced shows that the disputed domain name was registered after Complainant had registered its MP MATERIALS and MP MATERIALS & Design marks and its <mpmaterials.com> domain name.
Complainant’s marks consist of very distinctive combinations of letters and words. It is improbable that the disputed domain name was chosen and registered with no knowledge of, or reference to, Complainant’s name and marks and pre-existing <mpmaterials.com> domain name
On the contrary, on the balance of probabilities the disputed domain name was chosen specifically for the purpose of creating a false impression of a relationship between the disputed domain name and Complainant.
This Panel finds therefore that on the balance of probabilities the disputed domain name was chosen and registered in bad faith in order to take predatory advantage of Complaint’s rights and goodwill in the MP MATERIALS mark.
The screen captures of the websites to which the disputed domain name resolves, provided as evidence by Complainant, are of grave concern.
They show that the Internet user reaching Respondent’s website is met with a notice “Before you continue to mpmaterial.com By clicking the button below you’ll go through a standard security check, after which you will start the downloading process of this Firefox add-on. This add-on will offer you a safer web search experience by changing your default search provider. “ There is a button to click to continue the download procedure and a statement “Compatible with your browser.”
This proves that Complainant’s uncontested allegations that the disputed domain name is being used to distribute malware and phishing for personal information are well founded.
The screen captures also show that Respondent’s website contains links to third party websites which on the balance of probabilities are being monetized as pay-per-click links by Respondent.
In these circumstances this Panel must find that the disputed domain name was registered and is being used in bad faith. Complainant has therefore succeeded in the third element of the test in Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mpmaterial.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: October 13, 2021
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