Kreg Enterprises, Inc. v. Maria Balog
Claim Number: FA2303002034797
Complainant is Kreg Enterprises, Inc. (“Complainant”), represented by Chris Proskey, Iowa, USA. Respondent is Maria Balog (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kregtool-us.com>, registered with Key-Systems GmbH.
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.
The Honorable Neil Anthony Brown KC as Panelist.
Complainant submitted a Complaint to Forum electronically on March 7, 2023; Forum received payment on March 7, 2023.
On March 8, 2023, Key-Systems GmbH confirmed by e-mail to Forum that the <kregtool-us.com> domain name is registered with Key-Systems GmbH and that Respondent is the current registrant of the name. Key-Systems GmbH has verified that Respondent is bound by the Key-Systems GmbH 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 March 8, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 28, 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@kregtool-us.com. Also on March 8, 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 30, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC 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 made the following contentions.
Complainant deals in goods such as woodworking machines, woodworking tools, videos, and instruction manuals. Complainant asserts rights in the KREG mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,155,530, registered October 17, 2006). See Compl. Ex. 3. The <kregtool-us.com> domain name is confusingly similar to Complainant’s KREG mark because it incorporates the entirety of the KREG mark with the addition of a hyphen, the descriptive term “tool” and the geographic identifier “us”. The disputed domain name also adds the generic top level domain (“gTLD”) “.com”.
Complainant asserts Respondent has no rights or legitimate interests in the <kregtool-us.com> domain name. Respondent is not commonly known by the disputed domain name. Respondent is not using the disputed domain name in connection with any bona fide offering of goods and services or for any legitimate or fair use. Rather, the disputed domain name leads to a parked webpage. Respondent uses an email address incorporating the disputed domain name to pass off as affiliated with Complainant in furtherance of a phishing scheme.
Respondent registered and uses the <kregtool-us.com> domain name in bad faith. Respondent attempts to pass itself off as Complainant for commercial gain. Respondent is engaging in a phishing scheme by impersonating Complainant’s employees. Respondent registered the disputed domain name with actual knowledge of the KREG mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the provision of goods such as woodworking machines, woodworking tools, videos, and instruction manuals.
2. Complainant has established its rights in the KREG mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,155,530, registered October 17, 2006). See Compl. Ex. 3.
3. Respondent registered the <kregtool-us.com> domain name on February 13, 2023
4.Respondent has caused the disputed domain name to resolve to a parked webpage and uses an email address incorporating the disputed domain name to pass itself off as being affiliated with 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 first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the KREG mark (e.g. Reg. No. 3,155,530, registered October 17, 2006) based upon registration with the USPTO. See Compl. Ex. 3. Registration with a governmental trademark authority is sufficient to demonstrate rights in a mark per Policy 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Therefore, the Panel finds that Complainant has rights in the KREG Mark per Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s KREG mark. Complainant contends that the <kregtool-us.com> domain name is confusingly similar to Complainant’s KREG mark. The addition of a geographic identifier, hyphen, and gTLD may not defeat an argument of confusing similarity per Policy ¶ 4(a)(i). See Doosan Corporation v. philippe champain, FA 1636675 (Forum Oct. 13, 2015) (finding that geographic designations or terms descriptive of a complainant’s business operations do not remove a domain name from the realm of confusing similarity.). Here, the disputed domain name incorporates the entirety of the KREG mark with the addition of a hyphen, the descriptive term “tool”, and the geographic identifier “us” as well as the “.com” gTLD. As the Panel agrees, it finds that the <kregtool-us.com> domain name is confusingly similar to Complainant’s KREG mark per Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
Rights or Legitimate Interests
It is now well established that 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”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s KREG mark and to use it in its domain name, adding a hyphen, the descriptive term “tool” and the geographic identifier “us”;
(b) Respondent registered the <kregtool-us.com> domain name on February 13, 2023;
(c) Respondent has caused the disputed domain name to resolve to a parked webpage and uses an email address incorporating the disputed domain name to pass itself off as being affiliated with Complainant in furtherance of a phishing scheme.;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e)Complainant submits that Respondent is not commonly known by the <kregtool-us.com> domain name. Where there is no response, WHOIS information can substantiate a finding that a respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See 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). In addition, a lack of authorization to use a complainant’s mark may also indicate that a respondent is not commonly known by the disputed domain name. The WHOIS information for the disputed domain name lists the registrant as “Maria Balog”. See Registrar Verification Email. Complainant further submits that it has not licensed or otherwise authorized Respondent to use Complainant’s KREG mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent fails to use the <kregtool-us.com> domain name in connection with a bona fide offering of goods and services or for any legitimate or fair use. Instead, the disputed domain name leads to a parked domain and a substantively blank website. Failure to make an active use of a webpage does not represent a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii). See CrossFirst Bankshares, Inc. v. Yu-Hsien Huang, FA 1785415 (Forum June 6, 2018) (“Complainant demonstrates that Respondent fails to actively use the disputed domain name as it resolves to an inactive website. Therefore, the Panel finds that Respondent fails to actively use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).”). Here, Complainant provides screenshot evidence of the resolving parked website. See Compl. Ex. 7. Thus, the Panel finds that Respondent failed to use the disputed domain name in connection with a bona fide offering of goods and services or a legitimate or fair use per Policy ¶ 4(c)(i) and (iii);
(g) Complainant argues that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent purports to be Complainant through its use of emails incorporating the disputed domain name to solicit money and sensitive information on false pretenses. A respondent’s use of an email address incorporating a disputed domain name to pass itself off as an affiliate of the complainant under false pretenses may support a finding of failure to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See 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)). Here, Complainant has provided evidence of emails incorporating the disputed domain name that were used to impersonate actual employees of Complainant under false pretenses in order to misappropriate payments intended for Complainant. See Compl. Ex. 8. As the Panel agrees, it finds that Respondent fails to use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a formal Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent has registered and used <kregtool-us.com> in bad faith because the disputed domain name incorporates the KREG mark in an attempt to pass Respondent off as Complainant through the use of fraudulent emails. Use of a disputed domain name to impersonate a Complainant can be evidence of an attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See Qatalyst Partners LP v. Devimore, FA 1393436 (Forum July 13, 2011) (finding that using the disputed domain name as an e-mail address to pass itself off as the complainant in a phishing scheme is evidence of bad faith registration and use). As previously noted, Complainant provides evidence of emails incorporating the disputed domain name that were used to impersonate actual employees of Complainant under false pretenses in order to misappropriate payments intended for Complainant. See Compl. Ex. 8. Therefore, the Panel agrees and finds that Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Secondly, Complainant submits that Respondent registered and uses the <kregtool-us.com> domain name in bad faith because Respondent is using the disputed domain name intentionally to confuse Complainant’s customers into believing its website and related emails are authorized by Complainant for the purpose of fraudulently misappropriating payments on Complainant’s invoices. Respondent’s fraudulent collections and impersonation of Complainant in furtherance of a phishing scheme are evidence of bad faith under Policy ¶ 4(a)(iii). See Zoetis Inc. and Zoetis Services LLC v. VistaPrint Technologies Ltd, FA1506001623601 (Forum July 14, 2015) (“Respondent’s attempt to use the <zoietis.com> domain name to phish for personal information in fraudulent emails also constitutes bad faith pursuant to Policy ¶ 4(a)(iii).”). Here, Complainant provides screenshot evidence of the Respondent’s Phishing Emails. See Compl. Ex. 8. As the Panel agrees, it finds Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Thirdly, Complainant argues that Respondent had actual and/or constructive knowledge of Complainant's rights in the KREG mark. It is open to a panel to find that Respondent had actual knowledge of Complainant's mark and rights and therefore determine that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See 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 "actual knowledge of Complainant's mark when registering the disputed domain name"). Here, Complainant argues that the notoriety of Complainant’s mark and Respondent’s impersonation of Complainant’s actual employees indicates that Respondent had actual knowledge of Complainant's mark and rights. As the Panel agrees, it finds bad faith per Policy ¶ 4(a)(iii).
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <kregtool-us.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown KC
Panelist
Dated: March 31, 2023
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