Patricio Carrera v. faris almaliki
Claim Number: FA2210002014514
Complainant is Patricio Carrera (“Complainant”), California, USA. Respondent is faris almaliki (“Respondent”), Saudi Arabia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tusclicks.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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to Forum electronically on October 3, 2022; Forum received payment on October 3, 2022.
On October 5, 2022, NameCheap, Inc. confirmed by e-mail to Forum that the <tusclicks.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 October 7, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 27, 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@tusclicks.com. Also on October 7, 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 November 4, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Steven M. Levy, Esq. 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, Patricio Carrera, offers online advertising, marketing, and management of commercial business services in Chile. Complainant has rights in the TUSCLICKS mark through its registration of the mark with the Chile Instituto Nacional de Propiedad Industrial (e.g., Reg. No. 871,179 registered October 9, 2009) and its former ownership of the disputed <tusclicks.com> domain name. The disputed domain name, which Respondent acquired on or after July 28, 2022, is virtually identical and confusingly similar to Complainant’s mark because it incorporates the TUSCLICKS mark in its entirety and adds the “.com” generic top-level domain (“gTLD”).
Respondent has no legitimate interests in the <tusclicks.com> domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services and it does not make a legitimate noncommercial or fair use of the name. Instead, Respondent stole the disputed domain name from Complainant and resolves it to content that is identical to and was stolen from Complainant’s website.
Respondent registered and uses the <tusclicks.com> domain name in bad faith. Respondent acquired the disputed domain name through hacking and theft and has reached out to Complainant with a request for payment in exchange for a return of the domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
- Complainant has demonstrated its ownership of rights in the TUSCLICKS trademark by registration of the same and the <tusclicks.com> domain name is confusingly similar to the mark;
- Respondent has no rights or legitimate interests in the disputed domain name where it has obtained the disputed domain name through fraudulent means (i.e., hacking Complainant’s Registrar account) and copied the content of Complainant’s legitimate website; and
- The disputed domain name was registered and used in bad faith where it was obtained through hacking and where Respondent sent a ransom note to Complainant.
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”).
Procedural Issue: Concurrent Court Proceedings
With reference to Rule 18(a), the Panel notes that Complainant has filed a police report detailing the alleged theft and transfer of the <tusclicks.com> domain name. In situations where “any legal proceedings” are pending, including police reports for theft of a domain name, Panels have typically chosen to nevertheless move ahead with the UDRP case. See Gryphon Internet, LLC v. thank you corp. / Jon Shakur, FA 1405610 (Forum Oct. 11, 2011) (Panel issued its transfer decision despite Complainant having filed a report with the police where “a hacker broke into the Complainant's registration account and fraudulently transferred the Domain Name to its current registrar.”) See also Ontel Products Corporation v. Robert Anderson, FA 2011910 (Forum Oct. 19, 2022) (deciding to proceed under the UDRP despite concurrent court proceedings because “[i]t is apparent to the Panel that the Court proceeding is about much wider issues than the UDRP claim.”) In the present case, while Complainant’s filing of a police report concerning the theft of its domain name may tangentially address the ownership of the same. However, it is of a fundamentally different nature and focus involving legal issues such as the possibility of criminal prosecution for theft rather than an assessment of intellectual property rights. As such, the Panel determines that it is permissible to proceed with the current UDRP case.
Complainant asserts rights in the TUSCLICKS mark based upon the registration of the mark with the Chile Instituto Nacional de Propiedad Industrial. Registration of a mark with an appropriate government entity is a valid showing of rights in a mark under Policy ¶ 4(a)(i). See Teleflex Incorporated v. Leisa Idalski, FA 1794131 (Forum July 31, 2018) (“Registration of a mark with governmental trademark agencies is sufficient to establish rights in that mark for the purposes of Policy ¶ 4(a)(i).”) Complainant provides screenshots from the Chile Instituto Nacional de Propiedad Industrial evidencing its registration of the TUSCLICKS mark and so the Panel finds that the Complainant has rights in the mark under Policy 4(a)(i).
Next, Complainant argues Respondent’s <tusclicks.com> domain name is identical or confusingly similar to Complainant’s TUSCLICKS mark. The addition of a gTLD fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Udemy, Inc. v. ghita moubchir / ghita, FA 2014114 (Forum Nov. 2, 2022) (“The disputed domain name [<udemy.lol>] merely adds to [sic] gTLD, ‘.lol’, to the trademark and so the Panel finds the domain name to be legally identical to the trademark for the purposes of paragraph 4(a)(i) of the Policy.”) Here, the disputed domain name contains the TUSCLICKS mark in its entirety while adding the “.com” gTLD. Therefore, the Panel finds that the disputed domain name is identical or confusingly similar to Complainant’s mark per 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). Should it succeed in this effort, the burden then shifts to Respondent to show that 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 argues that Respondent lacks rights and legitimate interests in the disputed domain name as Respondent obtained the disputed domain name through fraudulent means and seeks to pass itself off as Complainant under false pretenses. An attempt by a respondent to pass itself off as a complainant under false pretenses may support a finding of failure to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”) Here, Complainant has provided screenshots of the <tusclicks.com> website as well as those if its own site at the domain name <tuskclicks.cl> and the Panel notes that the content is virtually identical. Respondent uses Complainant’s mark, logo, text, and graphics and appears to be offering the same services as those offered by Complainant. The only noticable difference between the sites is the contact information listed at the bottom of Respondent’s page. As Respondent has not filed a response or made any other submission in this case, it has not sought to challenge Complainant’s assertions or provide any alternate explanation for its actions. Therefore, the Complainant has made a prima facie case which has not been rebutted by Respondent. Based on the available evidence, the Panel finds that Respondent fails to use the disputed domain name for a bona fide offering of goods or services and that it does not make a legitimate noncommercial or fair use thereof under Policy ¶ 4(c)(i) or (iii).
Finally, while the Complaint makes no assertion under Policy ¶ 4(c)(ii), in the interest of providing a full analysis of the case, the Panel notes that Respondent’s name, as revealed by the concerned Registrar, is “faris almaliki” and there is no evidence that it is known otherwise. There is also nothing to indicate that Respondent is operating a legitimate business at the <tusclicks.com> website. As such, the Panel finds no ground upon which to conclude that Respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant argues that, because Respondent obtained the disputed domain name by hacking its registrar account and is holding it hostage, Respondent has demonstrated bad faith registration and use. The Panel notes that, while this may not fit neatly into one of the examples of bad faith set out in Policy ¶ 4(b), it is widely accepted that the provisions of this sub-section of the Policy are meant to be merely illustrative and that a respondent’s bad faith may be demonstrated by ancillary allegations considered under the totality of the circumstances. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith). Obtaining a domain name through illicit means, such has hacking, has been considered evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Global Village Publishing, Inc. v. chenwen, FA 1489761 (Forum May 6, 2013) (bad faith found where “Respondent hacked into Complainant’s GoDaddy.com account and fraudulently transferred the <gvp.com> domain name to Respondent.”); EZQUEST, INC. v. BAORUI, FA 1445631 (Forum July 3, 2012) (holding that hacking a complainant’s registration account is evidence of bad faith pursuant to Policy ¶ 4(a)(iii)). Here, Complainant provides claims that Respondent hacked Complainant’s registrar account and transferred the disputed domain name, which previously belonged to Complainant, to another registrar. In support, Complainant provides a copy of correspondence with its Registrar in which an investigation into the theft was requested and the Registrar states that “[i]t is evident that this domain was removed without your consent, and at this point our Domains team is working with or other registrar partners in attempts to get this back.” Despite the efforts of Complainant’s Registrar, return of the disputed domain name was not achieved. Based on the evidence that the <tusclicks.com> domain name was obtained by Respondent through hacking and theft, the Panel finds that Respondent registered the domain name bad faith, pursuant to Policy ¶ 4(a)(iii).
Next, Complainant claims that Respondent sent messages that amount to a ransom note. Offering to transfer a disputed domain name to a trademark owner for a price that exceeds a respondent’s out-of-pocket registration costs is evidence of bad faith registration and use under Policy ¶ 4(b)(i). See Freddy Adu v. Frank Fushille, D2004-0682 (WIPO Oct. 17, 2004) (“The most offensive act of a cybersquatter is to hold another’s mark for ransom. Such conduct has earned its own subsection in Paragraph 4(b) of the Policy.”); Rainbow Play Systems, Inc. v. Freeplay Pty. Ltd., DAU2015-0035 (WIPO Nov. 27, 2015) (bad faith registration and use found where “Respondent is, in effect, holding the disputed domain name ‘hostage’ and is seeking the payment of a ‘ransom’ from the Complainant”). Here, in addition to the above-referenced correspondence with its Registrar concerning the unauthorized transfer of the <tusclicks.com> domain name from its account, Complainant provides a screenshot of a series of WhatsApp messages sent to it by Respondent. Although, the messages appear in the Spanish language, they may be translated as “I am a hacker. Your servers are in my hands. Are you in your account or did you delete all your servers and sites? If I don't get any response from you within the next few hours, all sites will be removed. I'll scan all the sites on the server and you'll see this.” While Respondent does not mention a specific request for payment, it is apparent that its objective is to withhold the stolen domain name from Complainant pending some action on the part of the latter, most likely a ransom payment. The Panel finds this to be a reasonable characterization of events, especially in light of all of the circumstances of this case involving theft of the disputed domain name from Complainant’s Registrar account. Respondent has not participated in this case and so it provides no countervailing evidence or explanation. Based on a preponderance of the available evidence, the Panel finds that Respondent has sought to transfer the disputed domain name to Complainant for a price that exceeds its out-of-pocket registration costs and is thus in violation of Policy ¶ 4(b)(i) and ¶ 4(a)(iii).
Finally, the evidence demonstrates that Respondent’s website copies the content of Complainant’s own legitimate site and this further supports a conclusion that bad faith registration and use has occurred. The appearance of copyrighted material can indicate bad faith registration and use of a disputed domain name. Cengage Learning, Inc. v Tran Dinh Dong, FA 1923509 (Forum Dec. 29, 2020) (“The activity is also copyright infringement which also demonstrates bad faith.”); Golden Goose S.p.A. v. 邹亮亮 (Zou Liang Liang), D2020-2529 (WIPO Dec. 23, 2020) (bad faith found where “Respondent used the Complainant’s registered trademarks and copyrighted photos without authorization”). As the <tusclicks.com> website appears to be identical in every respect to Complainant’s own <tusclicks.cl> website, except for the contact information listed at the bottom, the Panel finds that this copying provides additional support for its finding that Respondent registered and uses the disputed domain name in bad faith 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 <tusclicks.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: November 7, 2022
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