Sheriff Kelly A. Martinez v. Cameron Cox
Claim Number: FA2302002030545
Complainant is Sheriff Kelly A. Martinez (“Complainant”), represented by Ashish Kakkad, US. Respondent is Cameron Cox (“Respondent”), US.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <sdsheriff.us> and <sdcountyca.us>, 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.
Charles A. Kuechenmeister, Panelist.
Complainant submitted a Complaint to Forum electronically on February 3, 2023; Forum received payment on February 3, 2023.
On February 6, 2023, NameCheap, Inc. confirmed by e-mail to Forum that the <sdsheriff.us> and <sdcountyca.us> domain names (the Domain Names) are registered with NameCheap, Inc. and that Respondent is the current registrant of the names. 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 the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On February 9, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of March 1, 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@sdsheriff.us, and postmaster@sdcountyca.us. Also on February 9, 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 March 9, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Charles A. Kuechenmeister as Panelist.
On March 13, 2023, in response to a Request by the Panel, Complainant submitted an Additional Submission.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of a Response from Respondent.
Complainant requests that the Domain Names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE:
Multiple Domain Names
The Complaint relates to two Domain Names. Paragraph 3(c) of the Rules provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant does not address this issue, but it is evident that both Domain Names are effectively controlled by the same person or entity. They were both registered with the same registrar, to the same person (the named Respondent), at the same mailing and email addresses, on the same day (WHOIS printouts submitted as Complaint Exhibits B and C). On this evidence, the Panel finds that both Domain Names are registered to the same person or entity or are under common control and will proceed as to both of them. Caterpillar v. Arendt, FA1805001789701 (Forum July 2, 2018), (“The Panel finds that the domain names are under common control because the three domain names are constructed in the same manner, were registered on the same date with the same registrar, have been used in the same way, and use Cloudfare servers. Also, the registrant used the same privacy service for all three domain names. These elements are sufficient to find that the domain names were registered by the same domain name holder.”)
A. Complainant
Complainant, Kelly A. Martinez, Sheriff of the County of San Diego, provides law enforcement services throughout San Diego County, California. Complainant has common-law rights to the SDSHERIFF and SDCOUNTY.CA marks. Respondent’s <sdsheriff.us> and <sdcountyca.us> Domain Names are confusingly similar to Complainant’s marks as they fully incorporate the marks, merely adding the country code top-level domain (“ccTLD”) “.us” to form the Domain Names.
Respondent has no rights or legitimate interests in the Domain Names. Respondent is not authorized to use Complainant’s SDSHERIFF and SDCOUNTY.CA marks and is using them for email accounts with which it attempts to pass off as and defraud Complainant.
Respondent registered or uses the Domain Names in bad faith. Respondent uses the Domain Names to pass off as and defraud Complainant.
B. Respondent
Respondent did not submit a Response in this proceeding.
C. Additional Submissions
Complainant furnished copies of emails demonstrating Respondent’s passing off as and attempting to defraud 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 a complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:
(1) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) the respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
In view of Respondent's failure to submit a Response, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. Nevertheless, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. 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”), WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), at ¶ 4.3 (“In cases involving wholly unsupported and conclusory allegations advanced by the complainant, . . . panels may find that—despite a respondent’s default—a complainant has failed to prove its case.”).
The Panel finds as follows with respect to the matters at issue in this proceeding:
Complainant asserts common-law rights to the SDSHERIFF and SDCOUNTY.CA marks based upon their widespread use and recognition. Registration of a mark with a trademark agency is not required by Policy ¶ 4(a)(i) if a complainant can establish secondary meaning, giving rise to common-law rights in the mark prior to a respondent’s registration of the disputed domain name. Psyonix Inc. v. robert gray / notpsyonix, FA 1759780 (Forum Jan. 3, 2018) (“Policy ¶ 4(a)(i) does not require a complainant to own a trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”), Oculus VR, LLC v. Ivan Smirnov, FA 1625898 (Forum July 27, 2015) (holding, “A Complainant does not need to hold registered trademark rights in order to have rights in a mark under Policy ¶ 4(a)(i) and it is well established that a Complainant may rely on common law or unregistered trademarks that it can make out.”).
Secondary meaning in a mark can be established through geographical terms. Steamboat Chamber Resort Assoc., Inc. v. Mooney, FA 96662 (Forum Mar. 30, 2001) (finding the chamber of commerce of Steamboat Springs, Colorado established common law rights in the name STEAMBOAT-CHAMBER). To support common-law rights in the SDCOUNTY.CA mark, Complainant submitted a letter from Jonathan Yu, legal advisor to the Sheriff, stating that the County of San Diego owns the sdcounty.ca.gov domain name and uses it for employee and county services email addresses. Mr. Yu also states that Complainant uses the SDSHERIFF mark for the sheriff’s office website at www.sdsheriff.com website, and “sdsheriff” is its handle for its Twitter, Instagram/Facebook and TikTok platforms. Attached to Mr. Yu’s letter is documentation supporting its application for the <sdsheriff.gov> domain name and consisting of evidence of extensive use of the SDSHERIFF mark and recognition of that mark by the public. On this evidence, the Panel finds that Complainant has common law rights in the SDSHERIFF and SDCOUNTY.CA marks.
Respondent’s <sdsheriff.us> and <sdcountyca.us> Domain Names are identical or confusingly similar to Complainant’s marks. They fully incorporate the marks, merely omitting the dot in SDCOUNTY.CA and adding the country code top-level domain (“ccTLD”) “.us.” These changes do not distinguish the Domain Names from Complainant’s marks for the purposes of Policy ¶ 4(a)(i). Farouk Systems, Inc. v. Jack King / SLB, FA 1618704 (Forum June 19, 2015) (finding, “The ccTLD “.us” designation is inconsequential to a Policy ¶ 4(a)(i) analysis.”), MELISSA & DOUG, LLC v. Xinyi Wang, FA2021654 (Forum Jan. 3, 2023 (“Respondent’s <shopmelissadoug.com> Domain Name is confusingly similar to Complainant’s MELISSA & DOUG mark. It fully incorporates the mark, merely omitting spaces and the ampersand, and adding a generic term and a gTLD. These changes do not distinguish the Domain Name from Complainant’s mark for the purposes of Policy ¶ 4(a)(i).”). The WIPO Overview 3.0, at ¶ 1.7, states that the test for confusing similarity “typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name.” Notwithstanding the changes described above, Complainant’s marks are clearly recognizable within the Domain Names.
For the reasons set forth above, the Panel finds that the Domain Names are identical or confusingly similar to the SDSHERIFF and SDCOUNTY.CA marks, in which Complainant has substantial and demonstrated rights.
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. 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”). If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0, at ¶ 2.1.
Policy ¶ 4(c) lists the following four nonexclusive circumstances, any one of which if proven can demonstrate a respondent’s rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) The respondent is the owner or beneficiary of a trade or service mark that is identical to the domain name;
(ii) Before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;
(iii) The respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iv) The respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name because (i) Respondent is not authorized to use Complainant’s SDSHERIFF and SDCOUNTY.CA marks and (ii) it is using them for email accounts with which it attempts to pass off as and defraud Complainant. These allegations are addressed as follows:
Complainant neither argues nor offers any evidence that Respondent has no rights in a trade or service mark that is identical to the Domain Names, as described in Policy ¶ 4(c)(i). Complainants in usTLD cases can search one or more governmental trademark authorities and report negative results to establish a prima facie case as to Policy ¶ 4(c)(i). Complainant here offered no such evidence. Nevertheless, while Complainant should have offered evidence bearing specifically upon this element, the evidence that is available is sufficient to establish that Respondent is not the owner or beneficiary of a trade or service mark identical to the Domain Name. Complainant is a public official who or whose office owns or has the exclusive right to use the SDSHERIFF and SDCOUNTY.CA marks. Both marks, and both Domain Names, are clearly associated with a well-known public entity and this makes it extremely unlikely that the USPTO or any other governmental trademark authority would register a trademark identical to <sdsheriff.us>, <sdcountyca.us> or any other mark identical or similar to either Domain Name in the name of any person other than a legitimate public entity, which Respondent is not. Nor is it plausible to imagine that Respondent could be the owner or beneficiary of a valid common law trade or service mark identical to either Domain Name. On this evidence, and in the absence of any evidence to the contrary, the Panel finds that Respondent is not the owner or beneficiary of a valid trade or service mark identical to the Domain Names.
Complaint Exhibits D, E and F are copies of emails, most of which are internal communications within a firm by the name of Insight, which appears to be an IT consultant for Complainant and other governmental entities in the State of California. Included in these Exhibits, however, are copies of emails from the email address ashish.kakkad@sdsheriff.us and internal communications about an email order of Apple MacBooks emanating from the email address ivan.cruz@sdcountyca.us. The email from ashish.kakkad@sdsheriff.us contained in Complaint Exhibit E seeks, purportedly on behalf of Complainant, to order 100 iPhones from ATT. None of the Exhibits contains the actual email from the ivan.cruz@sdcountyca.us address but the content and scope of emails within the Insight organization referring to this attempted order are persuasive that one or more such emails were in fact sent. The Insight emails even reflect that part of the order was shipped and Insight was attempting to stop it from being actually delivered to Respondent. The Panel finds that the fraudulent order was in fact placed from the ivan.cruz@sdcountyca.us email address. It is clear from this evidence that Respondent is impersonating Complainant for fraudulent purposes, ordering equipment which would likely be shipped to Respondent, with the invoices going to Complainant. Using a confusingly similar domain name to send fraudulent emails is neither a bona fide offering of goods or services under Policy ¶ 4(c)(ii) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv). Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the at-issue domain name to pose as Complainant’s CEO by means of email addresses at the confusingly similar domain name in an attempt to determine Complainant’s ability to process a transfer. Using the domain name in this manner is neither a bona fide offering of goods and services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)”), 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 purportedly from agents of complainant to be neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).[i]
While Complainant did not address the Policy ¶ 4(c)(iii) factor, the WHOIS printouts submitted as Complaint Exhibits B and C and the information submitted to Forum by the registrar list “Cameron Cox” as the registrant of both Domain Names. This name bears no resemblance to either Domain Name. Evidence could, of course, in a given case demonstrate that the respondent is commonly known by a domain name different from the name in which it registered the domain name, e.g., the case of a domain name incorporating the brand name of a specific product offered by and associated with the respondent. In the absence of any such evidence, however, and in cases where no Response has been filed, UDRP panels have consistently held that WHOIS evidence of a registrant name which does not correspond with the domain name is sufficient to prove that the respondent is not commonly known by the domain name. Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same), Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 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 Panel is satisfied that the Respondent has not been commonly known by the Domain Names for the purposes of Policy ¶ 4(c)(iii).
The evidence furnished by Complainant establishes the required prima facie case. On that evidence, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the Domain Names.
Policy ¶ 4(b) sets forth a nonexclusive list of four circumstances, any one of which if proven would be evidence of bad faith use and registration of a domain name. They are as follows:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the respondent’s web site or location or of a product of service on the respondent‘s web site or location.
The evidence of Respondent’s conduct discussed above in the rights or legitimate interests analysis also supports a finding of bad faith registration and use of the Domain Names. First, Respondent is using the confusingly similar Domain Names for email accounts which it uses to pass off as Complainant and order equipment, which would be shipped to Respondent with the invoices going to Complainant. This may not fit within any of the circumstances described in Policy ¶ 4(b) but that paragraph recognizes that mischief can assume many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (January 5, 2005), Bloomberg Finance L.P. v. Domain Admin - This Domain is For Sale on GoDaddy.com / Trnames Premium Name Services, FA 1714157 (Forum Mar. 8, 2017) (determining that Policy ¶ 4(b) provisions are merely illustrative of bad faith, and that the respondent’s bad faith may be demonstrated by other allegations of bad faith under the totality of the circumstances). The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and passing off as and attempting to defraud a complainant, in and of itself, is evidence of bad faith. Hewlett-Packard Development Company, L.P. v. Hyatt, FA1811001818756 (Forum Dec. 28, 2018) (“using a domain name to pose as a complainant to promote a fraudulent scheme has often been held to constitute bad faith”) (citations omitted); Am. Univ. v. Cook, FA 208629 (Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”).
Next, although not argued by Complainant, it is evident that Respondent had actual knowledge of Complainant and its marks when it registered the Domain Names in December of 2022 (WHOIS printouts submitted as Complaint Exhibits B and C show creation dates). Complainant’s SDSHERIFF and SDCOUNTY.CA marks are coined terms normally associated with a public entity, which would not normally be chosen for use in a domain name except to target Complainant. More importantly, Respondent used Domain Names incorporating the marks to impersonate Complainant in its emails, even to the extent of naming an actual employee of Complainant. In light of the non-exclusive nature of Policy ¶ 4(b), registering a confusingly similar domain name with actual knowledge of a complainant’s rights in an incorporated mark is evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii). 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 name).
For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Names in bad faith within the meaning of Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sdsheriff.us> and <sdcountyca.us> Domain Names be TRANSFERRED TO COMPLAINANT.
Charles A. Kuechenmeister, Panelist
March 15, 2023
[i] The cases cited in this section were decided under the Uniform Dispute Resolution Policy (UDRP), which does not include usTLD Policy ¶ 4(c)(i). The usTLD Policy ¶¶ 4(c)(ii), (iii) and (iv) are identical to UDRP Policy ¶¶ 4(c)(i)(ii) and (iii).
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