Addepar, Inc. v. Bad Boy, envestnett
Claim Number: FA2205001997018
Complainant is Addepar, Inc. (“Complainant”), represented by Charles Crane of Knobbe Martens Olson & Bear LLP, California, USA. Respondent is Bad Boy, envestnett (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <addeparr.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.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 19, 2022; the Forum received payment on May 19, 2022.
On May 19, 2022, NameCheap, Inc. confirmed by e-mail to the Forum that the <addeparr.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 May 20, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 9, 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@addeparr.com. Also on May 20, 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 16, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho-Hyun Nahm, Esq. 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
i) Complainant offers products and services in the wealth and asset management industry. Complainant has rights in the ADDEPAR marks through its registration with the United States Patent and Trademark Office (“USPTO”)(e.g., Reg. No. 4, 244, 422, registered November 20, 2012) and other national and international trademark authorities. The disputed domain name is identical or confusingly similar to Complainant’s ADDEPAR mark because it incorporates the mark in whole, with the addition of both the letter “r” and the “.com” generic top-level domain (“gTLD”) to form the disputed domain name.
ii) Respondent lacks rights and legitimate interests in the disputed domain name. Complainant has not authorized or licensed Respondent to use its ADDEPAR mark in the disputed domain. Respondent does not use the domain name in connection with any bona fide offering of goods or services, nor a legitimate non-commercial or fair use. Rather, Respondent sends emails associated with the domain name to divert Complainant’s email traffic and effectuate a phishing scheme. Additionally, Respondent has failed to make active use of the disputed domain name.
iii) Respondent registered and uses the disputed domain name in bad faith. Respondent uses the disputed domain name in association with phishing emails impersonating Complainant. Further, Respondent does not maintain an active website at the disputed domain name.
B. Respondent
Respondent did not submit a response in this proceeding.
1. The disputed domain name was registered on February 14, 2022.
2. Complainant has established rights in the ADDEPAR marks through its registration with the United States Patent and Trademark Office (“USPTO”)(e.g., Reg. No. 4, 244, 422, registered November 20, 2012) and other national and international trademark authorities.
3. Respondent uses emails to phish for personal information through fake employment contracts that include Complainant’s name, address, and logo.
4. The disputed domain name resolves to a parked page.
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 claims rights in the ADDEPAR mark through its registration with the United States Patent and Trademark Office (“USPTO”)(e.g., Reg. No. 4,244,422, registered November 20, 2012) and other national and international trademark authorities. Complainant has provided evidence of trademark registrations. Therefore, the Panel finds Complainant has established rights in the ADDEPAR mark under Policy ¶ 4(a)(i).
Complainant argues that the disputed domain name is identical or confusingly similar to Complainant’s ADDEPAR mark. Incorporating a mark in its entirety with the addition of a letter is generally not sufficient in distinguishing a domain name from the mark. Further, the addition of the gTLD “.com” is generally insufficient in distinguishing a disputed domain name from another’s trademark. The disputed domain name <addeparr.com> incorporates the ADDEPAR mark in whole, with the addition of both the letter “r” and the “.com” gTLD. Therefore, the Panel finds the disputed domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also 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”).
Complainant contends Respondent lacks rights or legitimate interests in the disputed domain name because Complainant has not authorized or licensed to Respondent any rights in the ADDEPAR mark. Respondent used a privacy service to protect its identity in the WHOIS information; however, the registrar revealed the Respondent and registrant of the disputed domain name as “Bad Boy, envestnett.” Additionally, there is no evidence to suggest that Respondent was authorized to use Complainant’s ADDEPAR mark. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent uses the disputed domain name to pose as Complainant through emails associated with the disputed domain name, which may not qualify as a bona fide offering of goods or services, nor a legitimate non-commercial or fair use. Use of a disputed domain name to send fraudulent emails posing as an agent of complainant has been found by past panels to be 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)). See Microsoft Corporation v. Terrence Green / Whois Agent / Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr. 4, 2016) (finding the respondent’s use of the disputed domain names to send fraudulent emails purportedly from agents of complainant to be 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)). The Panel notes that Respondent uses the confusingly similar nature of the disputed domain name in association with email’s posing as an agent of Complainant to phish for valuable personal information from users. The Panel finds Respondent is not using the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Complainant also contends that Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor for any legitimate non-commercial or fair use, since the resolving website is inactive. Failure to make active use a domain name generally does not qualify as either a bona fide offer, nor is it a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). Dell Inc. v. link growth / Digital Marketing, FA 1785283 (Forum June 7, 2018) (“Respondent’s domain names currently display template websites lacking any substantive content. The Panel finds that Respondent does not have rights or legitimate interests with respect of the domain name per Policy ¶¶ 4(c)(i) or (iii).”). Complainant provided screenshots of the resolving website for the disputed domain name, which does not resolve to an active website. The Panel therefore finds Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use within the meaning of Policy ¶¶ 4(c)(i) and (iii).
Complainant also argues that Respondent uses the disputed domain name in furtherance of a phishing scheme, which may not qualify as a bona fide offering of goods or services, nor a legitimate non-commercial or fair use. Phishing has been defined by past panels as a practice that defrauds Internet users into sharing valuable personal information through the use of emails, pop-ups, or other methods. See Juno Online Servs., Inc. v. Iza, FA 245960 (Forum May 3, 2004) (defining “phishing” as “the use of e-mails, pop-ups or other methods to trick Internet users into revealing credit card numbers, passwords, social security numbers and other personal information that may be used for fraudulent purposes”); see also Cubist Pharmaceuticals, Inc. v. Gregory Stea, FA1403001550388 (Forum May 5, 2014) (“Respondent is using the domain name in emails to various IT hardware suppliers in an attempt to impersonate Complainant and defraud its customers. The domain name also resolved to a website similar to Complainant's website. The Panel found that such actions precluded a bona fide offer or fair use.”). Respondent uses the emails to phish for valuable personal information through fake employment contracts that include Complainant’s name, address, and logo. The Panel finds Respondent is not using the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant contends that Respondent registered and uses the disputed domain name for commercial gain in bad faith, as Respondent uses the domain name to pass off as Complainant. Using email accounts associated with the disputed domain name to pass off as a complainant in order to perpetuate a phishing scheme and obtain financial information from users supports a finding of bad faith. See 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). As previously noted, Complainant provides evidence that Respondent uses an email account associated with the disputed domain name to pass itself off as Complainant in order to facilitate a phishing scheme. The Panel finds that Respondent registered and used the domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant also argues that Respondent’s inactive holding of the disputed domain name is evidence of bad faith registration and use. The Panel agrees that the passive holding of a domain name does not necessarily circumvent a finding that the domain name is being used in bad faith within the requirements of paragraph 4(a)(iii) of the Policy. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (finding that in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the panel must give close attention to all the circumstances of the respondent’s behavior, and a remedy can be obtained under the Policy only if those circumstances show that the respondent’s passive holding amounts to acting in bad faith.)
The particular circumstances of this case that the Panel has considered are:
i) Complainant has used one or more of the ADDEPAR marks in connection with its goods and services since at least as early as 2010. In 2018 Complainant’s assets had exceeded US$ 1 trillion. Complainant’s ADDEPAR mark has been recognized in publications such as Forbes, Bloomberg, The New York Times, The Huffington Post, and The Wall Street Journal. As such, Complainant’s mark is considered as having been well-known at the time of registering the disputed domain name; and
ii) Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name.
Taking into account all of the above, the Panel concludes that Respondent’s inactive use of the disputed domain name constitutes bad faith under Policy, paragraph 4(a)(iii) and that Respondent is using the disputed domain name in bad faith.
Finally, Complainant asserts that Respondent uses and registered the disputed domain name in a bad faith attempt to perpetuate a phishing scheme. Generally, using a disputed domain name to fraudulently phish for information is evidence of bad faith pursuant to Policy ¶ 4(a)(iii). See Morgan Stanley v. Bruce Pu, FA 1764120 (Forum Feb. 2, 2018) (“[T]he screenshot of the resolving webpage allows users to input their name and email address, which Complainant claims Respondent uses that to fraudulently phish for information. Thus, the Panel agrees that Respondent phishes for information and finds that Respondent does so in bad faith under Policy ¶ 4(a)(iii).”). The Panel references that Complainant has provided screenshots of emails associated with the disputed domain name, which shows Respondent uses the emails to phish for personal information through fake employment contracts that include Complainant’s name, address, and logo. The Panel finds that Respondent registered and used the disputed domain name in bad faith in order to facilitate a phishing scheme under 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 <addeparr.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: June 20, 2022
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