Leidos, Inc. v. Office Rolls
Claim Number: FA2210002017072
Complainant is Leidos, Inc. (“Complainant”), represented by Kandis M. Koustenis of Bean Kinney & Korman, PC, US. Respondent is Office Rolls (“Respondent”), US.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <leidos-inc.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.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to Forum electronically on October 21, 2022; Forum received payment on October 21, 2022.
On October 22, 2022, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to Forum that the <leidos-inc.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 October 24, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 14, 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@leidos-inc.com. Also on October 24, 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 16, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Ho-Hyun Nahm, 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
i) Complainant has rights in the LEIDOS mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,937,101, registered April 12, 2016). The LEIDOS mark has become well recognized by consumers as exclusively designating Complainant as the source of the goods and services offered under the LEIDOS mark. The disputed domain name is confusingly similar to Complainant’s mark since it merely adds the generic term “inc,” a hyphen and the “.com” generic top-level domain (“gTLD”) to the LEIDOS mark.
ii) Respondent does not have rights or legitimate interests in the disputed domain name because Respondent is not commonly known by the disputed domain name. Additionally, Respondent fails to use the disputed domain name in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to impersonate Complainant in furtherance of a fraudulent email scheme.
iii) Respondent registered and uses the disputed domain name in bad faith. Respondent disrupts Complainant’s business and commercially benefits by impersonating Complainant in an email phishing scheme. Further, Respondent had actual knowledge of Complainant’s rights in the LEIDOS mark.
B. Respondent
Respondent did not submit a Response in this proceeding.
1. The disputed domain name was registered on September 27, 2022.
2. Complainant has established rights in the LEIDOS mark based upon registration with the USPTO (e.g., Reg. No. 4,937,101, registered April 12, 2016).
3. Respondent disrupts Complainant’s business and commercially benefits by impersonating Complainant in an email phishing scheme.
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 asserts rights in the LEIDOS mark based upon registration with the USPTO. Registration with the USPTO is generally sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Complainant provides evidence of its registration with the USPTO (e.g., Reg. No. 4,937,101, registered April 12, 2016). Therefore, the Panel finds that Complainant has rights in the LEIDOS mark under Policy ¶ 4(a)(i).
Complainant argues that the disputed domain name is confusingly similar to Complainant’s mark since it merely adds the generic term “inc,” a hyphen and the “.com” gTLD to the LEIDOS mark. The addition of a generic term and a gTLD to a mark is insufficient to distinguish a disputed domain name from that mark under Policy ¶ 4(a)(i). See Dell Inc. v. pushpender chauhan, FA 1784548 (Forum June 11, 2018) (“Respondent merely adds the term ‘supports’ and a ‘.org’ gTLD to the DELL mark. Thus, the Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s DELL mark per Policy ¶ 4(a)(i).”). The addition of a hyphen similarly does nothing to distinguish the disputed domain name from Complainant’s mark. See Health Devices Corp. v. Aspen STC, FA158254 (Forum July 1, 2003) (addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy 4(a)(i)); Central Source LLC v. annualcreditreport-com.us, No. 1:14CV305, 2014 WL 3767071, at *7 (E.D. Va. 2014) (use of a hyphen deemed insufficient to distinguish the marks and constituted “typosquatting”). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark under 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 argues that Respondent does not have rights or legitimate interests in the disputed domain name because Respondent is not commonly known by the disputed domain name. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). The WHOIS information of record lists the registrant as “Office Rolls” and no other information of record suggests that Respondent is commonly known by the domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant also argues that Respondent fails to use the disputed domain name in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use and instead impersonates Complainant in furtherance of a fraudulent email scheme. The Panel notes that phishing is not indicative of rights or legitimate interests. See Emerson Electric Co. v. Adilcon Rocha, FA 1735949 (Forum July 11, 2017) (finding that respondent’s attempt to pass off as complainant through emails does not constitute a bona fide offering of goods or services and, as such, respondent lacked rights or legitimate interests in the disputed domain name). Complainant provides a printout of an email dated September 27, 2022 – the very same day Respondent created the disputed domain name registration – from an individual using the email address <***@leidos-inc.com> requesting a price quote for 29 Lenovo ThinkPads and signing off as the “Chief Technology Officer” of “Leidos Inc.” This email did not come from Complainant’s actual Chief Technology Officer or from any other authorized source of Complainant. The Panel finds that using the disputed domain name in this manner 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 Leidos, Inc. v Larry Desmond / xyz Inc., FA1903001832572 (Forum Apr. 15, 2019) (“Using a confusingly similar domain name to phish for personal/ financial information by passing off as a complainant in emails can evince a lack of rights and legitimate interests 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 argues that Respondent registered and uses the disputed domain name in bad faith since Respondent disrupts
Complainant’s business and commercially benefits by impersonating Complainant in an email phishing scheme. Use of a disputed domain name to impersonate a complainant in furtherance of a fraudulent scheme may constitute bad faith through disruption of a complainant’s business under Policy ¶ 4(b)(iii) and/or an attempt to attract users for commercial gain under Policy ¶ 4(b)(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)”).
Complainant contends that the very same day Respondent created the disputed domain name registration – from an individual using the email address <***@leidos-inc.com> requesting a price quote for 29 Lenovo ThinkPads and signing off as the “Chief Technology Officer” of “Leidos Inc.” This email did not come from Complainant’s actual Chief Technology Officer or from any other authorized source of Complainant. Therefore, the Panel agrees with Complainant and finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iii), and/or Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <leidos-inc.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: November 22, 2022
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