Carahsoft Technology Corp. v. Alon Garay Garay
Claim Number: FA2209002013048
Complainant is Carahsoft Technology Corp. (“Complainant”), represented by Adam D. Mandell of Millen, White, Zelano & Branigan, P.C., Virginia, USA. Respondent is Alon Garay Garay (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <caraihsofts.com>, registered with Realtime Register B.V..
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to Forum electronically on September 21, 2022; Forum received payment on September 21, 2022.
On September 23, 2022, Realtime Register B.V. confirmed by e-mail to Forum that the <caraihsofts.com> domain name is registered with Realtime Register B.V. and that Respondent is the current registrant of the name. Realtime Register B.V. has verified that Respondent is bound by the Realtime Register B.V. 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 27, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 17, 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@caraihsofts.com. Also on September 27, 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, Forum transmitted to the parties a Notification of Respondent Default.
On October 26, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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 asserts trademark rights in CARAHSOFT. Complainant holds a national registration for that trademark. Complainant submits that the disputed domain name is confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant owns, inter alia, United States Patent & Trademark Office (“USPTO”) Reg. No. 3,685,627, registered September 22, 2009, for the trademark CARAHSOFT;
2. the disputed domain name was registered on August 24, 2022 and is not in use; and
3. there is no relationship between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating the trademark.
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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights (see, for example, Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003)). Complainant therefore has rights as it provides proof of its registration of the trademark CARAHSOFT with the USPTO, a national trademark authority.
For the purposes of comparison of the disputed domain name with the trademark the gTLD, “.com”, can be disregarded (see, for example, Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Forum Dec. 31, 2007)). What remains is a trivial misspelling of the trademark. The Panel finds the domain name to be confusingly similar to the trademark (see, for example, Oxygen Media, LLC v. Primary Source, D2000-0362 (WIPO June 19, 2000) finding the domain name <0xygen.com> calculated to trade on Complainant’s name by exploiting a likely mistake by users; PathAdvantage Associated v. VistaPrint Technologies Ltd, FA 1625731 (Forum July 23, 2015) finding <pathadvantages.com> confusingly similar to the PATHADVANTAGE trademark).
The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see, for example, Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000‑0624).
The domain name registrant is “Alon Garay Garay”. There is no suggestion that Respondent might be commonly known by the disputed domain name, or that Respondent has any trademark rights. Complainant provides evidence that the disputed domain name is not in use and merely resolves to a page stating: “This site can’t be reached.” As such, there is no evidence of either a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor of a non-commercial or fair use under Policy ¶ 4(c)(iii).
The Panel finds that Complainant has made a prima facie case that Respondent lacks a right or interest in the disputed domain name (see, for example, CrossFirst Bankshares, Inc. v. Yu-Hsien Huang, FA 1785415 (Forum June 6, 2018); Hertza L.L.C. v. Rowland O'Connor / Email Hippo Limited, FA 1851151 (Forum Aug. 7, 2019)).
The onus shifts to Respondent. Absent a Response, that onus is not met and so the Panel finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and used in bad faith.
The Panel appreciates that the Complainant is confronted by the lack of use of the disputed domain name and thus partly frustrated in proving ‘use’ in bad faith to satisfy the Policy. This is not uncommon. Nonetheless, the Panel has difficulties with the Complaint as presented.
The Complaint asserts that “this is a clear case of typosquatting” from which it then concludes that the domain name was registered in bad faith, reasoning which the Panel finds to put “the cart before the horse”. The Complaint then states that:
“Complainant believes that the domain name was registered, and is being used, to impersonate the Complainant, by sending emails to technology vendors, prime contractors, systems integrators, value-added resellers and channel partners. The purpose of these emails is to trick victims into providing to the fraudsters personal information and payments.”
In support of the Complaint is the Declaration of Complainant’s Chief Information Security Officer who states that he is:
“… familiar with the registration of fraudulent domain names confusingly similar to the Carahsoft Mark which are used by others to engage in phishing scams.”
He continues, stating that the Complainant:
“… is aware that bad actors have registered domain names confusingly similar to Carahsoft Technology’s Carahsoft Mark in order to engage in phishing scams. These domains are used to send emails to technology vendors, prime contractors, systems integrators, value-added resellers and channel partners. In some cases, these emails trick victims into providing to the fraudsters personal information and payments. It is critical that Carahsoft Technology prevent these phishing scams.”
Thus, the foundation for Complainant’s apprehension that the domain name was registered, and is being used, to impersonate the Complainant is premised on the Declarant’s past, undocumented and unparticularised, experience. There is a reference to a case earlier this year involving Complainant, Carahsoft Technology Corp. v. Thomas Harris / Mid America Mortgage, Inc., FA1984617 (Forum Mar. 28, 2022) concerning the disputed name, <carahs0fts.com>, but the Panel observes that Complainant made the same speculative claims there. Notably, the panel in that case stated:
“Complainant argues that Respondent registered and uses the disputed domain name in bad faith since Respondent may use the disputed domain name to pass off as Complainant and engage in phishing. The Panel notes that Complainant provides no evidence regarding this contention, and thus the Panel does not consider Complainant’s contention.” (added emphasis)
Furthermore, Complainant states that since Respondent holds the domain name passively, “[t]his too demonstrates Respondent’s bad faith, citing Phat Fashions, LLC v. Kruger, FA 96193 (Forum Dec. 29, 2000) as authority for the proposition that “it makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy”. Phat Fashions, LLC v. Kruger is more than 20 years old and does not appear online. The quotation above is regularly cited but it is clear enough that what is “inevitable” will depend on the facts and so the case is of little assistance to the Panel.
Approaching the matter another way, the Panel notes that the seminal authority on so-called passive holding in bad faith is the case of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Amongst the factors it lays out, proven repute of the at-issue trademark is imperative. In that regard, the Complainant’s Declarant states that the trademark has been used since 1999 in connection with reseller services of information technology products. He declares that Complainant employs a team of 2,000 sales, marketing and customer service operators and that in 2020 “sales of IT hardware, software and consulting services under the Carahsoft Mark were in excess of USD8,000,000,000. He states that Complainant spends in excess of USD10,000,000.00 pa on marketing and promoting the goods and services offered under the trademark.
As the panel did in the Carahsoft Technology Corp. v. Thomas Harris / Mid America Mortgage, Inc. case, this Panel has restructured the Complaint in line with accepted authority on passive holding in bad faith (‘use’ in bad faith) and takes account of the following circumstances:
· Complainant has used in trademark extensively since 1999;
· the sheer magnitude of its claimed sales and advertising expenditure raises a rebuttable presumption that it enjoys a substantial reputation in the trademark, at least in the United States;
· Respondent has provided no evidence of any actual or contemplated good faith use of the disputed domain name;
· Respondent has hidden its identity behind a privacy shield; and
· there is no apparent reason for Respondent to register the name in good faith since the trademark appears to only refer to Complainant’s business and has no other shown meaning.
In the absence of another explanation, the Panel finds that Respondent targeted Complainant’s trademark and business. Further, the Panel finds passive holding and therefore use in bad faith. The Panel finds registration in bad faith. Accordingly, the Panel finds that the third and final element of the Policy is satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <caraihsofts.com> domain name be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: October 31, 2022
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