Polaris Industries Inc. v. sultan works
Claim Number: FA2205001995845
Complainant is Polaris Industries Inc. (“Complainant”), represented by William Schultz of Merchant & Gould, P.C., Minnesota, USA. Respondent is sultan works (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <p0laris.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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 May 10, 2022; the Forum received payment on May 10, 2022.
On May 11, 2022, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <p0laris.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 May 11, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 31, 2022 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@p0laris.com. Also on May 11, 2022, 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 June 4, 2022, 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 domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the POLARIS trademark based on its ownership of the United States trademark registrations described below and its long and extensive use of the mark in its business as a manufacturer of recreational sport vehicles, including all-terrain vehicles (ATVs), snowmobiles, and motorcycles.
Complainant submits that it commenced manufacturing and selling ATVs in 1985 under the POLARIS mark and has sold millions of dollars of POLARIS brand sport vehicles and other products over the past twenty-two years. Its products are now distributed throughout the world by more than 3,000 independent dealers and as a result consumers across the United States are aware of its POLARIS mark.
Complainant asserts that it has an established online presence and refers to a screen capture of its website located at <www.polaris.com>, annexed to the Complaint, which provides information to consumers about its goods with links to online brochures and catalogs.
Complainant alleges that the disputed domain name is confusingly similar to the POLARIS mark in which it has the abovementioned rights, arguing that the disputed domain name is a typo of the entirety of the POLARIS mark merely replacing the letter “o” with the number “0”.
Complainant submits that the substitution of the number for the letter only serves to confuse and does not as a differentiate the disputed domain name and the POLARIS mark. Citing Bank of America Corporation v. Above.com Domain Privacy, FA 1629452 (Forum Aug. 18, 2015) (finding that the <blankofamerica.com> domain name contains the entire BANK OF AMERICA mark and merely adds the gTLD ‘.com’ and the letter ‘l’ to create a common misspelling of the word ‘bank.’)
Complainant further contends that the addition of a Top-Level Domain extension to a mark is not a distinguishing feature. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”)
Complainant next alleges that Respondent has no rights or legitimate interests in the disputed domain name arguing that Respondent is not commonly known by the POLARIS mark and the initial WHOIS record did not depict Respondent as Polaris in any way because of privacy services, obfuscated the true identity of the registrant.
Because Respondent is not commonly known by the name “Polaris”, there was no legitimate right to register or use the disputed domain name.
Complainant adds that Respondent has not received Complainant’s permission to use the POLARIS mark; Respondent is not a licensee of Complainant; and Complainant’s prior rights in the disputed domain name precede Respondent’s registration. See Gallup, Inc. v. Amish Country Store, FA96209 (Forum Jan. 23, 2001) (holding that Respondent does not have rights in a domain name when Respondent is not known by the mark).
Complainant adds that the evidence shows that before any notice to Respondent of the dispute, Respondent did not put the mark to any legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
In this regard, Complainant refers to a screen capture of the web page to which the disputed domain name resolves, which has been adduced in evidence in an annex to the Complaint, which shows that the website associated with disputed domain name has no content and Complainant contends that such failure to use the disputed domain name for a bona fide purpose constitutes a lack of legitimate interest pursuant to Policy ¶ 4(c)(i). See State Fair of Texas v. State Fair Guides, FA 95066 (Forum July 25, 2000) (finding that the respondent’s failure to develop the site demonstrates a lack of legitimate interest in the domain name).
Complainant also refers to email correspondence which has been adduced in evidence in an annex to the Complaint. The correspondence shows that Respondent has used the disputed domain name in an email, sent to one of Complainant’s customers, purporting to come from one of Complainant’s employees, stating that there is an outstanding pending payment due, providing details including an IBAN number of a bank account purporting to belong to Complainant and requesting payment of the outstanding amount.
Complaint submits that the correspondence shows that rather than using the disputed domain name for a legitimate noncommercial purpose, Respondent has used the disputed domain name to perpetrate a phishing scheme by passing itself off as Complainant.
Complainant submits that panels established under the Policy have decided that a respondent’s use of a domain name for the purpose of phishing for Internet users’ personal and/or financial information does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Juno Online Servs., Inc. v. Nelson, FA 241972 (Forum Mar. 29, 2004) (finding that using a domain name in a fraudulent scheme to deceive Internet users into providing their credit card and personal information is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use).
Complainant furthermore exhibits correspondence between its legal representative and the company that hosted the email account associated with the disputed domain name. The correspondence shows that Complainant complained about the use to which Respondent had put the disputed domain name as the address of the email account, which Complainant alleged was being used by Respondent for a phishing scheme, and requested that the email account be suspended. The hosting company replied that the account was suspended.
Furthermore, citing the decision in Wilson v. Whois Privacy Protection Service, Inc., FA0502000417186 (Forum Mar. 29, 2005), Complainant furthermore contends that it is “incumbent upon respondents to advance concrete evidence pursuant to Policy ¶ 4(a)(ii) rebutting the latter assertion because this information is uniquely within the knowledge and control of the respondent.”
Complainant next alleges that the disputed domain name has been registered and is being used in bad faith arguing that Respondent does not have a bona fide interest or legitimate or fair use in the disputed domain name pursuant to Policy ¶¶ 4(c)(i) and 4(c)(iii) and that its intent in registering the disputed domain name was to use it to engage in fraud by communicating with Complainant’s vendors, ultimately to obtain information and money as evidenced by the abovementioned email correspondence which has been adduced in evidence in an annex to the Complaint.
Complainant adds that Respondent has used the disputed domain name to divert email traffic away from Complainant and to commercially benefit from the confusion by having vendors respond to those emails, thinking they were communicating with Complainant. The fact that Respondent associated the disputed domain name with Complainant’s employees further establishes that Respondent’s intent was to cause confusion and to use Complainant’s goodwill to perpetuate its scheme
Complainant alleges that Respondent had actual knowledge of Complainant’s rights in the POLARIS mark when the disputed domain name was registered. In this regard, Complainant refers to evidence annexed to the Complaint that shows two other examples of how Respondent has engaged in a pattern of registering domain names that incorporate third party trademarks while replacing the letter “o” in the mark with the number “0”, as Respondent has done in this case.
Complainant adds that by registering the disputed domain name, which is a misspelling of Complainant’s POLARIS mark, Respondent is engaged in typosquatting which in itself shows bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Zone Labs, Inc. v. Zuccarini, FA190613 (Forum Oct. 15, 2003) (“Respondent’s registration and use of a domain name that capitalizes on the typographical error of an Internet user is considered typo squatting. Typo squatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant carries on a wide range of businesses among which it manufactures of recreational sport vehicles, including ATVs, snowmobiles, and motorcycles upon which it uses the POLARIS trademark. Claiming use in commerce continuously since 1985, Complainant owns the following registrations:
· United States registered trademark POLARIS, registration number 1,403,054, registered on July 29, 1986 for goods in international class 12;
· United States registered trademark POLARIS, registration number 2,976,391, registered on July 26, 2005 for goods in international class 28;
· United States registered trademark POLARIS, registration number 3,343,562, registered on November 27, 2007 for goods in international class 12;
· United States registered trademark POLARIS, registration number 3,481,931, registered on August 5, 2008 for goods in international class 12;
· United States registered trademark POLARIS, registration number 4,699,454, registered on March 10, 2015 for goods in international class 12.
Complainant has an established Internet presence and maintains a website providing information about its products and services at <www.polaris.com>.
The disputed domain name was registered on April 1, 2022 and resolves to an inactive parking page but has been used to create an email account from which emails purporting to emanate from Complainant have been sent to Complainant’s vendors.
There is no information available about Complainant except for that provided in the Complaint, the Registrar’s WhoIs and the information provided by the Registrar in response to the enquiry from 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 convincing evidence that rights in the POLARIS mark, established by its ownership of the United States trademark registrations described above and extensive use of the mark on its range of ATMs and motorcycles for over 20 years including on its website which is aimed at providing product information to consumers.
The disputed domain name <p0laris.com> consists of a misspelling of Complainant’s mark in its entirety, with the number “0” substituted for the letter “o”, together with the generic Top Level Domain “(gTLD”) extension <.net>.
Complainant’s POLARIS mark is clearly recognizable within the disputed domain name. The misspelling of the mark by substituting the number “0” for the letter “o” is likely to go unnoticed in many instances and there is no other distinguishing character.
Neither does the gTLD extension <.com> add any distinguishing character as it would be considered by Internet users as a necessary technical requirement for a domain name.
This Panel finds therefore that the disputed domain name <p0laris.com> is confusingly similar to the POLARIS mark in which Complainant has rights and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
· Respondent is not commonly known by the mark;
· the initial WHOIS record did not depict Respondent as “Polaris” in any way;
· the WhoIs shows that Respondent has availed of privacy services to register the disputed domain name and has thereby obfuscated the true identity;
· Respondent has not been given Complainant’s permission to use the POLARIS mark;
· Respondent is not a licensee of Complainant;
· Complainant’s rights in the POLARIS mark, long precede Respondent’s registration of the disputed domain name;
· the screen capture of the web page to which the disputed domain name resolves shows that there is no content offered on the website associated with disputed domain name, which shows that before any notice to Respondent of the dispute, Respondent did not use the mark for legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii), and Respondent’s failure to use the disputed domain name for a bona fide purpose constitutes a lack of legitimate interest pursuant to Policy ¶ 4(c)(i);
· the email correspondence which has been adduced in evidence in an annex to the Complaint, shows that Respondent used the disputed domain name to perpetuate a phishing scheme by purporting to pass itself off as Complainant and such use does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use.
As Complainant has submitted, it is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests.
Respondent has failed to discharge that burden and therefore this Panel must find 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 word “polaris” is not a coined word and is not uncommon in the English language, as it is the name of perhaps the best known star in the night sky in the northern hemisphere. It is therefore plausible that the word could have been chosen as a domain name in good faith.
However, the combination of features surrounding the choice and registration of the disputed domain name <p0laris.com> leads this Panel to find on the balance of probabilities that the disputed domain name was registered in bad faith.
The relevant factors are that during the registration process, the registrant must have become aware of Complainant’s eponymous domain name and website providing information about its products and services at <www.polaris.com>; Complainant had at the time of registration of the disputed domain name, a long-established reputation and goodwill in the POLARIS mark; very soon after the disputed domain name was registered it was used, on the balance of probabilities to establish an email account which has been used to impersonate Complainant and to engage in phishing scam.
Furthermore, while there is no obvious bona fide reason for the registrant to choose to register a misspelling of the word “polaris”, Complainant has provided details of two other instances where Respondent has registered domain names which are misspellings of third party trademarks with the letter “o” replaced by the number “0”.
Taken together these factors lead this Panel to find that on the balance of probabilities therefore, the disputed domain name was registered in bad faith with Complainant’s POLARIS mark in mind the intention of targeting and taking predatory advantage of Complainant’s reputation and goodwill in the POLARIS mark.
Complainant has alleged that the disputed domain name was registered using a privacy service to conceal the identity of Respondent. The original WhoIs has not been adduced in evidence and while the allegation has not been denied, the Panel has not relied on this assertion in making this decision.
The uncontested evidence shows that Respondent has not established any active website with the disputed domain name. This is further evidence that the disputed domain name in the hands of Respondent is not associated with any bona fide business.
The uncontested evidence instead shows however that the disputed domain name has been used to establish an email account which on the balance of probabilities has been used in an endeavor to perpetrate a phishing scam impersonating Complainant in an intentional attempt to defraud one of Complainant’s customers by requesting payment of a fictitious outstanding account.
This finding is supported by the fact that Responded availed of a privacy service to conceal his identity on the published WhoIs, has not responded to the Complaint, and had not contested Complainant’s allegations that the disputed domain name is being used to perpetrate a phishing scheme.
Furthermore the evidence shows that on the balance of probabilities by choosing to register and use within the disputed domain name a misspelling of Complainant’s mark, Respondent has engaged in typosquatting which itself constitutes bad faith registration and use for the purposes of the Policy.
As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has 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 <p0laris.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: June 6, 2022
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