HRB Innovations, Inc. v. Unique Me
Claim Number: FA2301002027950
Complainant is HRB Innovations, Inc. (“Complainant”), represented by Timothy J. Feathers of Stinson LLP, Missouri. Respondent is Unique Me (“Respondent”), BD.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <emeraldcard.net>, (‘the Domain Name’) registered with NameSilo, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to Forum electronically on January 17, 2023; Forum received payment on January 17, 2023.
On January 18, 2023, NameSilo, LLC confirmed by e-mail to Forum that the <emeraldcard.net> Domain Name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, LLC 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 January 19, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 8, 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@emeraldcard.net. Also on January 19, 2023, 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 February 13, 2023 pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Dawn Osborne 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
The Complainant’s contentions can be summarised as follows:
The Complainant owns the trade mark EMERALD CARD registered, inter alia, in the USA for financial services with first use recorded as 2006. It also owns the registered trade mark H & R BLOCK in relation to the preparation of tax returns.
The Domain Name registered in 2022 is identical to the Complainant’s EMERALD CARD Mark for the purposes of the Policy because it wholly incorporates it and is differentiated from it only by the addition of the gTLD .net.
Respondent is not commonly known by the Domain Name and is not authorised by the Complainant.
The web site connected with the Domain Name uses the Complainant’s trade marks in its masthead and bears material copied from the Complainant without permission. It is also collecting information from users. This is registration and use in opportunistic bad faith impersonating the Complainant for likely phishing. Rather oddly there is a disclaimer at the bottom of the web site where it states that it is not associated with the Domain Name, when the Domain Name actually points to this site which must be an error of some kind, but which is irrelevant to the Complainant or this Complaint.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant owns the trade mark EMERALD CARD registered, inter alia, in the USA for financial services with first use recorded as 2006. It also owns the registered trade mark H & R BLOCK.
The Domain Name registered in 2022 uses the Complainant’s trade marks in its masthead and could easily be mistaken for an official site of the 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”).
The Domain Name consists of the Complainant's EMERALD CARD mark (which is registered, inter alia, in the USA for financial services and has been used since 2006) and the gTLD .net.
The gTLD .net does not serve to distinguish the Domain Name from the Complainant’s mark. See Red Hat Inc v Haecke FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Name is identical for the purposes of the Policy to a mark in which the Complainant has rights.
As such the Panel holds that Paragraph 4 (a) (i) of the Policy has been satisfied.
Rights or Legitimate Interests
The Complainant has not authorised the use of its marks. There is no evidence or reason to suggest the Respondent is, in fact, commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The use is commercial and so cannot be non commercial legitimate fair use.
The web site attached to the Domain Name uses the Complainant's marks in its masthead and material copied from the Complainant to suggest that it is an official site of the Complainant when it is not. The Panel finds this use is deceptive and confusing and agrees with the Complainant that the disclaimer used on the Respondent’s site is irrelevant as it erroneously states the Respondent’s site is not associated with the Domain Name when it clearly is. This use is not a bona fide offering of goods and services. (See Am. Intl Group Inc v Benjamin FA 944242 (Forum May 11, 2007) finding that the Respondent's use of a confusingly similar domain name to compete with the Complainant's business did not constitute a bona fide use of goods and services.)
Given that the deceptive site relates to financial services and is collecting information from users it is also more likely than not that the purpose of the site is phishing which cannot amount to a bona fide offering of goods and services or a legitimate non commercial or fair use. See DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (“a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”).
The Respondent has not answered the Complaint or rebutted the prima facie case evidenced by the Complainant as set out herein.
As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
In the opinion of the panelist the use made of the Domain Name in relation to the Respondent’s site is confusing and disruptive in that visitors to the site might reasonably believe it is connected to or approved by the Complainant. It offers services under the Complainant’s marks used as a masthead with material copied from the Complainant that discusses the Complainant’s credit/debit card to give the impression that the site attached to the Domain Name is an official site of the Complainant. The copying of the Complainant’s material on the Respondent’s site and discussion of the Complainant’s credit/debit card also shows that the Respondent has actual knowledge of the Complainant and its business, products and rights.
Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant's trade mark as to the source, sponsorship, affiliation or endorsement of the web site or services on it likely to disrupt the business of the Complainant. (See Asbury Auto Group Inc v Tex. Int'l Prop Assocs FA 958542 (Forum May 29, 2007) finding that the respondent's use of the disputed domain name to compete with the complainant's business would likely lead to confusion amongst Internet users as to the sponsorship or affiliation of a competing business and was therefore evidence of bad faith and use).
Also likely phishing is evidence of bad faith registration and use within the Policy 4 (a)(iii). See Klabzuba Oil & Gas, Inc v LAKHPAT SINGH BHANDARI, FA 1506001625750 (Forum July 17, 2015).
As such, the Panelist believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under para 4(b)(iii) and (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 <emeraldcard.net> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: February 13, 2023
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