The TJX Companies, Inc. v. Mike jay
Claim Number: FA2110001969435
Complainant is The TJX Companies, Inc. (“Complainant”), represented by Steven M. Levy, District of Columbia, USA. Respondent is Mike jay (“Respondent”), Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tjxincorporation.com>, registered with Porkbun 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 18, 2021; the Forum received payment on October 18, 2021.
On October 18, 2021, Porkbun LLC confirmed by e-mail to the Forum that the <tjxincorporation.com> domain name is registered with Porkbun LLC and that Respondent is the current registrant of the name. Porkbun LLC has verified that Respondent is bound by the Porkbun 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 October 19, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 8, 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@tjxincorporation.com. Also on October 19, 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 November 10, 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 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 domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant, The TJX Companies, Inc., is the parent company of a collection of leading off-price apparel and home fashion retailers in the United States, Canada, United Kingdom, Europe, and Australia.
Complainant maintains registration in the TJX mark with the United States Patent and Trademark Office (USPTO) and with authorities in the European Union.
The at-issue domain name, <tjxincorporation.com>, is identical or confusingly similar to Complainant’s TJX mark because it wholly incorporates Complainant’s TJX mark while adding in the term “incorporation” and the “.com” generic top-level domain (“gTLD”) to form a domain name.
Respondent does not have any rights or legitimate interests in the <tjxincorporation.com> domain name because Respondent is not commonly known by the <tjxincorporation.com> domain name nor has Respondent been authorized to use Complainant’s TJX mark. Respondent is not using the <tjxincorporation.com> domain name in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use because Respondent uses the domain name in furtherance of a phishing scheme by using email to pose as Complainant. The <tjxincorporation.com> domain name redirects users to Complainant’s own website.
Respondent registered and uses the <tjxincorporation.com> domain name in bad faith because Respondent is a known cybersquatter who has been found to have engaged in bad faith in previous disputes. Respondent’s further bad faith actions are found through Respondent impersonating Complainant’s employees using email and by redirecting users to Complainant’s own website. Respondent also used a privacy shield to conceal its identity.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the TJX 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 the TJX trademark.
Respondent’s domain name redirects to Complainant’s genuine website. Respondent uses email associated with the at-issue domain name to impersonate Complainant and perpetrate fraud on third parties.
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”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant shows that it has USPTO and European Union trademark registrations for its TJX mark. A relevant national trademark registration is sufficient to demonstrate Complainant’s rights in a mark under Policy ¶ 4(a)(i). See Red Hat, Inc. v. Muhammad Shahzad, FA 1787738 (Forum June 19, 2018) (“Registration of a mark with multiple trademark agencies is sufficient to demonstrate rights to a mark per Policy ¶ 4(a)(i).”).
Respondent’s <tjxincorporation.com> domain name contains Complainant’s TJX trademark followed by the term “incorporation.” Respondent concludes the at-issue domain name with a domain name-necessary top-level, here “.com.” Notably, the differences between Respondent’s domain name and Complainant’s trademark are insufficient to distinguish the <tjxincorporation.com> domain name from Complainant’s TJX mark for the purposes of Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent’s <tjxincorporation.com> domain name is confusingly similar to Complainant’s TJX trademark. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”).
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 the 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 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”).
Respondent lacks both rights and legitimate interests in respect of the at-issue 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. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”).
The WHOIS information for the at-issue domain name identifies the domain name’s registrant as “Mike jay” and the record before the Panel contains no evidence tending to prove that Respondent is commonly known by the at-issue domain name or by Complainant’s mark. The Panel therefore concludes that Respondent is not commonly known by <tjxincorporation.com> for the purposes of Policy ¶ 4(c)(ii). See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”).
Respondent uses the confusingly similar <tjxincorporation.com> domain name to host email wherein Respondent poses as an employee of Complainant. In furtherance of Respondent’s deception, the domain name redirects internet traffic to Complainant’s genuine website. Respondent thereby endeavors to mislead internet users as to the sponsorship of the at-issue domain name and thus the origin of email from such domain. Respondent uses its deceptive email to defraud Complainant’s suppliers into providing products to Respondent which will never be paid for. Respondent’s deceptive email requests a price quote from the target supplier to furnish valuable products (e.g. computer hardware) to Respondent, who the supplier mistakenly believes is Complainant. Respondent then delivers a responsive purchase order to the targeted supplier’s quote giving the false impression that it is coming from Complainant. The purchase order’s terms make it easy for Respondent to misappropriate merchandise without ever having to pay for it. Respondent’s use of the confusingly similar domain name to pass itself off as Complainant to defraud third party suppliers indicates 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 Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the at-issue domain name to pose as Complainant’s CEO by means of email addresses at the confusingly similar domain name in an attempt to determine Complainant’s ability to process a transfer. Using the domain name in this manner is neither a bona fide offering of goods and services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)”); see, also, Rockwell Automation v. Thomas John / None, FA 1735949 (Forum July 11, 2017) (“Respondent has sent emails impersonating Complainant’s Finance Manager in the UK region to fool unsuspecting email recipients into believing they are corresponding with Complainant through the sending of fraudulent purchase inquiry emails from the disputed domain name. * * * Therefore, the Panel finds that Respondent has not made a bona fide offering of goods or services or legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) or (iii).”).
Likewise, Respondent’s use of the domain name to redirect internet users to Complainant’s genuine website 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 Direct Line Ins. plc v. Low-cost-domain, FA 1337658 (Forum Sept. 8, 2010) (“The Panel finds that using Complainant’s mark in a domain name over which Complainant has no control, even if the domain name redirects to Complainant’s actual site, is not consistent with the requirements of Policy ¶ 4(c)(i) or ¶ 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 under Policy ¶ 4(a)(ii).
Respondent’s <tjxincorporation.com> domain name was registered and used in bad faith. As discussed below without limitation, several circumstances are present which urge the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First and as discussed above regarding rights and legitimate interest, Respondent uses the <tjxincorporation.com> domain name to facilitate an email based phishing scheme aimed at defrauding third parties out of valuable products. Respondent’s use of <tjxincorporation.com> to perpetrate theft-by-fraud unequivocally shows Respondent’s bad faith under 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)”); see also Qatalyst Partners LP v. Devimore, FA 1393436 (Forum July 13, 2011) (finding that using the disputed domain name as an e-mail address to pass itself off as the complainant in a phishing scheme is evidence of bad faith registration and use).
Next and as also mentioned above regarding rights and legitimate interests, Respondent’s <tjxincorporation.com> domain name redirects internet users to Complainant’s own website. Doing so indicates Respondent’s bad faith registration and use under Policy ¶ 4(a)(iii). See Verizon Trademark Servs. LLC v. Boyiko, FA 1382148 (Forum May 12, 2011) (“The Panel finds that Respondent’s registration and use of the confusingly similar disputed domain name, even where it resolves to Complainant’s own site, is still registration and use in bad faith pursuant to Policy ¶ 4(a)(iii).”).
Additionally, Respondent registered <tjxincorporation.com> knowing that Complainant had trademark rights in the TJX mark. Respondent’s prior knowledge is evident from the worldwide notoriety of Complainant’s trademark and from Respondent’s scheme to host email pretending to be from Complainant as elaborated elsewhere herein. See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <tjxincorporation.com> domain name in bad faith 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").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tjxincorporation.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: November 11, 2021
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