The Investment Counsel Company v. Stephen Taraschi
Claim Number: FA2212002024675
Complainant is The Investment Counsel Company (“Complainant”), represented by John L Krieger of Dickinson Wright PLLC, USA. Respondent is Stephen Taraschi (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <iccnvs.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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to Forum electronically on December 19, 2022; Forum received payment on December 19, 2022.
On Dec 20, 2022, NameCheap, Inc. confirmed by e-mail to Forum that the <iccnvs.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 December 21, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 10, 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@iccnvs.com. Also on December 21, 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 11, 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, The Investment Counsel Company, provides professional investment and wealth management services.
Complainant has rights in various iterations of THE INVESTMENT COUNSEL COMPANY mark through trademark registrations with the United States Patent and Trademark Office (“USPTO”), including ICC THE INVESTMENT COUNSEL COMPANY.
Complainant uses <iccnv.com> to address its official website.
Respondent’s <iccnvs.com> domain name is identical or confusingly similar to the ICC marks because it wholly incorporates the dominant portion of the mark, the “ICC” acronym. The at-issue domain name then merely appends the Nevada geographic postal code “nv”, the letter “s”, and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <iccnvs.com> domain name since Respondent is not licensed or authorized to use Complainant’s ICC marks and is not commonly known by the at-issue domain name. Additionally, Respondent does not use the at-issue domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent is not actively using the domain name except to impersonate Complainant in an email phishing scheme to defraud Complainant and its clients.
Respondent registered and uses the <iccnvs.com> domain name in bad faith by impersonating Complainant through fraudulent emails to effectuate a phishing scheme. Respondent also fails to make active use of the domain name. Further, Respondent registered the <iccnvs.com> domain name by concealing their identity and with actual knowledge of Complainant’s rights in the ICC marks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the ICC THE INVESTMENT COUNSEL COMPANY 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 ICC THE INVESTMENT COUNSEL COMPANY trademark.
Respondent uses the domain name to pass itself off as Complainant in furtherance of an email phishing scheme to defraud Complainant and its associates for monetary gain.
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 ICC THE INVESTMENT COUNSEL COMPANY mark with the USPTO, as well as its other ICC related trademark registrations, 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 <iccnvs.com> domain name consists of a recognizable abbreviation and dominant portion of Complainant’s ICC THE INVESTMENT COUNSEL COMPANY trademark; followed by “nvs” ‑which may be characterized as the common abbreviation for Nevada, “NV”, with an “s” appended thereto‑; and with all followed by the “.com”” top-level domain name. The differences between Respondent’s domain name and Complainant’s trademark do nothing to distinguish the <iccnvs.com> domain name from Complainant’s ICC THE INVESTMENT COUNSEL COMPANY mark. Therefore, the Panel concludes that Respondent’s <iccnvs.com> domain name is confusingly similar to Complainant’s ICC THE INVESTMENT COUNSEL COMPANY trademark pursuant to Policy ¶ 4(a)(i). See Sainato's Restaurant and Catering Limited v. chen xue ming, FA 1781748 (Forum June 4, 2018) (finding the <sainatos.com> domain name is confusingly similar to the SAINATO’S RESTAURANT mark as it “appends the gTLD “.com” to an abbreviated version of the mark.”); see also Universal Protein Supplements Corporation d/b/a Universal Nutrition v. Universal Nutrition, FA 1510186 (Forum Aug. 28, 2013) (concluding that the “<uniprotein.com> domain name is, as alleged in the Complaint, an amalgamation of a common abbreviation of Complainant’s UNIVERSAL trademark and the term ‘protein,’ which describes an aspect of Complainant’s business, plus the generic Top Level Domain (‘gTLD’) ‘.com.’”); see also, Twentieth Century Fox Film Corporation v Domain Admin / PrivacyProtect.org / Denis Ferulev, FA 1652313 (Forum Jan. 19, 2016) (“Complainant notes that the domain name contains the recognized acronym for its FAMILY GUY mark, along with the number ‘24’ … the Panel finds that the <fg24.biz> domain name is confusingly similar to the FAMILY GUY mark under 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 <iccnvs.com> ultimately indicates that “Stephen Taraschi” 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 <iccnvs.com> 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 Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent uses the confusingly similar <iccnvs.com> domain name to pass itself off as Complainant via email originating from the at-issue domain name in an effort to divert or direct payments intended for Complainant to Respondent. Respondent’s bogus emails impersonate various employees of Complainant, some fake and some real, and were sent to Complainant’s associates as part of an elaborate effort to defraud the emails’ recipients, including banks and Complainant’s clients, out of hundreds of thousands of dollars. Respondent’s use of <iccnvs.com> 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 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); see also Agilent Techs.,Inc. v. Ahmed / My Company, FA 1791549 (Forum Jul. 12, 2018) (“Complainant provide[d] a copy of a redacted email showing a phishing scheme wherein Respondent impersonates Complainant’s employees in an attempt to have customers transfer large sums of money into Respondent’s bank accounts. The Panel finds that this use is not a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) and (iii).”)
Given the forgoing, Complainant satisfies its initial burden under Policy ¶ 4(a)(ii) and demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name.
Respondent’s <iccnvs.com> 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 and as also discussed above regarding rights and legitimate interests, Respondent uses the at-issue domain name to facilitate an email phishing scheme. Respondent sends deceptive email from <iccnvs.com> to impersonate Complainant so that Respondent may fraudulently extract payments from duped third-parties. Such criminal activity indicates Respondent’s bad faith under the Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv). 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 at-issue 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, 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 supported a finding of bad faith registration and use under Policy ¶ 4(b)(iii)); see also 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)”).
Next, Respondent engages in typosquatting. Typosquatting is a practice whereby a domain name registrant deliberately introduces typographical errors or misspellings into another’s trademark or related mark. 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 mark. In the instant case, <iccnv.com> is a domain name owned by Complainant and Respondent merely adds an “s” to Complainant’s official domain name to form 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 ICC THE INVESTMENT COUNSEL COMPANY mark at the time it registered <iccnvs.com> as a domain name. Respondent’s actual knowledge is evident from the notoriety of Complainant’s ICC THE INVESTMENT COUNSEL COMPANY trademark; from Respondent’s overt trivial misspelling of the Complainant’s genuine domain name in forming the at-issue domain name; 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 <iccnvs.com> with knowledge of Complainant’s rights in ICC THE INVESTMENT COUNSEL COMPANY further shows Respondent’s bad faith pursuant to Policy ¶4(a)(iii). See Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum January 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 <iccnvs.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: January 12, 2023
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