Tyco Fire & Security GmbH v. ABDUL REHMAN Rehman / Johnson Control
Claim Number: FA2212002023561
Complainant is Tyco Fire & Security GmbH (“Complainant”), represented by Jason J. Mazur of ArentFox Schiff LLP, District of Columbia. Respondent is ABDUL REHMAN Rehman / Johnson Control (“Respondent”), US.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <johnsoncontrol.info>, registered with Hostinger, UAB.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to Forum electronically on December 11, 2022; Forum received payment on December 11, 2022.
On December 13, 2022, Hostinger, UAB confirmed by e-mail to Forum that the <johnsoncontrol.info> domain name is registered with Hostinger, UAB and that Respondent is the current registrant of the name. Hostinger, UAB has verified that Respondent is bound by the Hostinger, UAB 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 December 14, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 3, 2023 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@johnsoncontrol.info. Also on December 14, 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 January 5, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant, Tyco Fire & Security GmbH provides fire suppression systems, HVAC systems, security systems and more.
Complainant asserts rights in the JOHNSON CONTROLS mark based upon registration with the United States Patent and Trademark Office (“USPTO”) and other government registrars worldwide.
Complainant owns various domain names containing the JOHNSON CONTROLS trademark including <johnsoncontrols.info>.
Respondent’s <johnsoncontrol.info> is confusingly similar to Complainant’s JOHNSON CONTROLS trademark because it includes the mark in its entirety and deletes the letter “s” and adds the generic top-level domain name (“gTLD”) “.info”.
Respondent does not have rights or legitimate interests in the <johnsoncontrol.info> domain name. Respondent is not licensed or authorized to use Complainant’s JOHNSON CONTROLS mark and is not commonly known by the at-issue domain name. Respondent also does not use the at-issue domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent attempts passing off as Complainant.
Respondent registered and uses the <johnsoncontrol.info>
domain name in bad faith. Respondent
creates a likelihood of confusion as an attraction for commercial gain.
Respondent provided incomplete and false WHOIS information. Respondent had
actual knowledge of Complainant’s rights in the JOHNSON CONTROLS mark.
Respondent registered and uses the disputed domain name in furtherance of a
phishing scheme. Respondent engages in typosquatting.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the JOHNSON CONTROLS mark.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in the JOHNSON CONTROLS trademark.
Respondent uses the domain name to pass itself off as Complainant in furtherance of a 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”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of the JOHNSON CONTROLS mark with the USPTO, as well as its other trademark registrations worldwide, demonstrates Complainant’s rights in a mark under 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)); see also, Red Hat, Inc. v. Muhammad Shahzad, FA 1787738 (Forum June 19, 2018) (“Registration of a mark with multiple trademark agencies is sufficient to demonstrate rights to a mark per Policy ¶ 4(a)(i).”).
Respondent’s <johnsoncontrol.info> domain name consists of Complainant’s JOHNSON CONTROLS trademark less its final “s” with all followed by the “.info” top-level domain name. The differences between Respondent’s domain name and Complainant’s trademark do nothing to distinguish the <johnsoncontrol.info> domain name from Complainant’s TYCO mark. Therefore, the Panel concludes that Respondent’s <johnsoncontrol.info> domain name is confusingly similar to Complainant’s JOHNSON CONTROLS trademark pursuant to Policy ¶ 4(a)(i). See Lockheed Martin Corporation v. toyosei maruyama, FA 1620489 (Forum July 7, 2015) (“Simply removing the letter ‘s’ from a mark in the creation of a domain name still creates a confusingly similar domain name.”); see also Lorillard Technologies, Inc. v Elite Domains, FA 1499685 (Forum June 14, 2013) (holding, in reference to respondent’s <blu-cigs.info> domain name, that “Respondent’s addition of a gTLD does not negate identity or confusing similarity pursuant to Policy ¶ 4(a)(i)”).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶ 4(c) circumstances Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name. See Charter Communications Holding Company, LLC v. Taha Shaikh / Tskdesigners, FA 1814475 (Forum Nov. 25, 2018) (finding no rights or legitimate interests in <spectrumfeature.com> because complainant never gave respondent permission to use the mark in any manner and “Panels may use these assertions as evidence that no rights or legitimate interests exist in a disputed domain name.”).
The WHOIS information for <johnsoncontrol.info> ultimately indicates that “ABDUL REHMAN Rehman / Johnson Control” is the domain name’s registrant and there is nothing in the record before the Panel that tends to prove that Respondent is known by the <johnsoncontrol.info> domain name. As such, the Panel finds that Respondent is not commonly known by the at-issue domain name under Policy ¶ 4(c)(iii). See Moneytree, Inc. v. Matt Sims / MoneyTreeNow, FA1501001602721 (Forum Mar. 3, 2015) (finding that even though the respondent had listed “Matt Sims” of “MoneyTreeNow” as registrant of the <moneytreenow.com> domain name, the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii), because he had failed to list any additional affirmative evidence beyond the WHOIS information).
Respondent uses the confusingly similar <johnsoncontrol.info> domain name to pass itself off as Complainant. Respondent’s confusingly similar domain name addresses a website that mimics Complainant’s genuine website and is used to host email pretending to be from Complainant. Respondent’s bogus emails concern Complainant’s alleged campus hiring activities and associated scholarship, grants, and funding campaigns, all in an unlawful effort to cause the recipients to falsely believe that the individuals sending the communications are employed by or otherwise connected or affiliated with Complainant. Respondent’s use of the <johnsoncontrol.info> domain name in this manner is not indicative of 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). See MO Media LLC v. NeXt Age Technologies LTD, FA 220031 (Forum Feb. 18, 2004) (finding the respondent lacked rights and legitimate interests in the disputed domain name when the respondent copied the complainant’s websites in their entirety at the disputed domain names); see also 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).
Given the forgoing, Complainant satisfies its initial burden under Policy ¶ 4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name.
Respondent’s <johnsoncontrol.info> domain name was registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present that permit the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First, Respondent uses the at-issue domain name to facilitate an email phishing scheme. The domain name addresses a website that mimics Complainant’s genuine website while Respondent uses deceptive email from <johnsoncontrol.info> to impersonate Complainant so that Respondent may fraudulently extract private information and other consideration from third-parties that it duped into believing that they were dealing with Complainant. Such activity indicates Respondent’s bad faith under the Policy ¶ 4(b)(iv) and otherwise. See Emdeon Business Services, LLC v. HR Emdeon Careers, FA1507001629459 (Forum Aug. 14, 2015) (finding that the respondent had engaged in an email phishing scheme indicating bad faith under Policy ¶ 4(a)(iii), where respondent was coordinating the disputed domain name to send emails to Internet users and advising them that they had been selected for a job interview with the complainant and was persuading the users to disclose personal information in the process); see also, Hess Corp. v. GR, FA 770909 (Forum Sept. 19, 2006) (determining that the respondent demonstrated bad faith registration and use because it was attempting to acquire the personal and financial information of internet users through a confusingly similar domain name); see also, Perot Sys. Corp. v. Perot.net, FA 95312 (Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
Next, Respondent engages in typosquatting. Typosquatting is a practice whereby a domain name registrant deliberately introduces typographical errors or misspellings into a trademark and then uses the resulting string in a domain name. The registrant hopes that internet users will inadvertently type the malformed string when searching for content related to the domain name’s target trademark and/or upon reading the domain name will overlook the misspelling and subsequently believe the domain name is related to, or sponsored by, the target trademark. In the instant case, <johnsoncontrols.info> is a domain name owned by Complainant and Respondent removes the final “s” from Complainant’s mark before incorporating the misspelling into the at-issue domain name. Typosquatting, in itself, indicates bad faith under Policy ¶ 4(a)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).
Moreover, Respondent had actual knowledge of Complainant’s rights in the JOHNSON CONTROLS mark at the time it registered <johnsoncontrol.info> as a domain name. Respondent’s actual knowledge is evident from the notoriety of Complainant’s JOHNSON CONTROLS trademark; from Respondent’s overt misspelling of the Complainant’s mark in the at-issue domain name; from Respondent’s mimicking the look and feel of Respondent’s genuine website on Respondent’s <johnsoncontrol.info> website; and from Respondent’s use of the domain name to perpetrate an email phishing scheme as discussed elsewhere herein. Respondent’s registration and use of <johnsoncontrol.info> with knowledge of Complainant’s rights in JOHNSON CONTROLS further shows Respondent’s bad faith pursuant to Policy ¶ 4(a)(iii). See Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum Jan. 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.”); see also, Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); see also, Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <johnsoncontrol.info> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: January 5, 2023
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