DECISION

 

Granite Gear, LLC v. [REDACTED] / granitegears

Claim Number: FA2308002059611

 

PARTIES

Complainant is Granite Gear, LLC ("Complainant"), represented by Jennifer M. Mikulina of McDermott Will & Emery LLP, Illinois, USA. Respondent is [REDACTED] / granitegears ("Respondent"), Minnesota, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <granitegears.com>, registered with Key-Systems GmbH.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Richard Hill as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on August 29, 2023; Forum received payment on August 29, 2023.

 

On August 30, 2023, Key-Systems GmbH confirmed by e-mail to Forum that the <granitegears.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 August 31, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 20, 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@granitegears.com. Also on August 31, 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 September 21, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Richard Hill 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

Preliminary Issue:  Identity Theft

Complainant requests that the Registrant name be redacted from the public decision as the WHOIS information listed for the disputed domain name is false. The named Registrant is listed as one of Complainant's employees, [NAME REDACTED]. Complainant's employee neither registered nor has an association with the disputed domain name. Further, the registrant of the disputed domain name used it to send email messages that request money from third parties, thus fraudulently trying to divert payments to be made to Complainant to its own account. Complainant requests the name [NAME REDACTED] of the named Respondent be redacted from Forum's decision.

 

Since Forum did not receive any response from the named Respondent, it proceeded with the Panel appointment.  The Panel has taken the following rules and precedent into account in making a determination on not redacting Respondent's identity.

 

According to Policy ¶ 4(j), "[a]ll decisions under this Policy will be published in full over the Internet, except when an Administrative Panel determines in an exceptional case to redact portions of its decision." In Wells Fargo & Co. v. John Doe as Holder of Domain Name <wellzfargo.com>, FA 362108 (Forum Dec. 30, 2004) and Wells Fargo & Co. v. John Doe as Holder of Domain Name <wellsfargossl>, FA 453727 (Forum May 19, 2005), the panels omitted the respondents' personal information from the decisions, pursuant to Policy ¶ 4(j), in an attempt to protect the respondents who claimed to be victims of identity theft from becoming aligned with acts the actual registrants appeared to have sought to impute to the respondents.

 

According to Forum Supplemental Rule 15(b), "All requests pursuant to Policy paragraph 4(j) and Rule 16(b) to have a portion of the decision redacted, must be made in the Complaint, the Response, or an Additional Submission that is submitted before the Panel's decision is published." (emphasis added).  Rule 1 defines "respondent" as "the holder of a domain-name registration against which a complaint is initiated;" and Forum Supplemental Rule 1(d) further defines "the holder of a domain-name registration" as "the single person or entity listed in the WHOIS registration information at the time of commencement." 

 

In the instant case, there has been a request in the Complaint to redact Respondent's name and there has not been a Response or an Additional Submission. On the basis of the evidence presented to it, the Panel finds that the WHOIS information is false, so it has decided to redact Respondent's name. See KitelyTech, Inc. v. [unknown holder] / Kitelytech, FA2038220 (Forum May 4, 2023) ("To avoid the association of an adverse UDRP decision with Complainant's executive, the Panel orders that the named individual Respondent be redacted from the case caption of this Decision…and replaced with "unknown holder."); see also Mediacom Communications Corporation v. [unknown holder], FA 1942213 (Forum May 28, 2021) (finding the Respondent provided false name information where the name was that of Complainant's CEO, who did not register the domain name, and redacted the name from the Forum decision).

 

PARTIES' CONTENTIONS

A. Complainant

Complainant states that, for over thirty years, it has brought cutting-edge products to the outdoor marketplace under the GRANITE GEAR mark. Complainant's desire is for all outdoor enthusiasts and travelers to experience the incredible durability and comfort of their products. Complainant's award-winning backpacks, adventure travel gear, extensive variety of storage sacks, lifestyle accessories, and canoe gear offer excellence in design and construction. Although the company had humble beginnings, Complainant has grown into an internationally respected brand with products that match purpose with weight, comfort and durability. Complainant's products have gained a cultish following and have proven their mettle in the earth's harshest environments, from Mount Everest to the North and South Poles, and to thousands of miles of everyday wear and tear. Complainant owns the domain name <granitegear.com>, where it sells its products and provides information regarding the company, including prominently displaying its mark. Complainant asserts rights in the GRANITE GEAR mark through its registration in the United States in 2011. The mark is registered elsewhere around the world and it is well known.

 

Complainant alleges that the disputed domain name is confusingly similar to its GRANITE GEAR mark because it consists of a misspelling of the mark (a letter "s" is added), merely adding the ".com" generic top-level domain ("gTLD"). Complainant cites UDRP precedents to support its position.

 

According to Complainant, Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent's use of the mark. Respondent is not making a bona fide offering of goods or services, nor a legitimate noncommercial or fair use through the disputed domain name. Rather, the domain name resolves to an inactive website and Respondent uses the disputed domain name to conduct a fraudulent email phishing scheme. Specifically, Respondent used the disputed domain name to send email messages that request money from third parties, thus fraudulently trying to divert payments to be made to Complainant to its own account. Complainant cites UDRP precedents to support its position.

 

Further, says Complainant, Respondent is using the disputed domain name in bad faith. Respondent has engaged in a fraudulent phishing scheme, attempting to pass itself off as Complainant. Respondent had actual knowledge of the mark and Complainant's rights therein. The WHOIS information is false. Respondent engaged in typosquatting. Complainant cites UDRP precedents to support its position.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant has registered trademark rights in the GRANITE GEAR mark, dating back to 2011, and uses it to market outdoor products.

 

The disputed domain name was registered in 2023.

 

Complainant has not licensed or otherwise authorized Respondent to use its mark.

 

Respondent is using the disputed domain name to send fraudulent emails and to conduct a phishing scheme. The signature block of the fraudulent emails displays Complainant's mark, and the actual physical address of one of Complainant's offices. The WHOIS information is false.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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").

 

Identical and/or Confusingly Similar

The disputed domain name consists of a misspelling of Complainant's GRANITE GEAR mark (a letter "s" is added), merely adding the ".com" generic top-level domain ("gTLD"). Including a trademark, even if misspelled, in a domain name does not distinguish the domain name from the mark under Policy ¶ 4(a)(i). See Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018) ("The [<morganstonley.com> and <morganstainley.com>] Domain Names are confusingly similar to Complainant's marks, as they fully incorporate the MORGAN STANLEY mark, varying it only by subtle misspellings, omitting a space between the words, and adding the generic top-level domain ("gTLD") '.com.'"); see also Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) ("Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element."); see also Home Depot Product Authority, LLC v. Angelo Kioussis, FA 1784554 (Forum June 4, 2018) ("The domain name contains the mark in its entirety, with only the addition of the generic letters 'sb' and the digits '2018,' plus the generic Top Level Domain ("gTLD") '.com.' These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy."). Therefore the Panel finds that the disputed domain name is confusingly similar to Complainant's mark under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant has not licensed or otherwise authorized Respondent to use its mark. Respondent is not commonly known by the disputed domain name: under Policy ¶ 4(c)(ii), WHOIS information may be used to determine whether a respondent is commonly known by a domain name. See Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant's assertion that it did not authorize or license the respondent's use of its mark in a domain name). Where the WHOIS is related to the disputed domain name, the Panel may still find the respondent lacks rights or legitimate interest in the disputed domain name if the respondent lacks authorization to use the complainant's mark and the respondent fails to provide affirmative evidence in support of its identity. See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding that, although the respondent listed itself as "Jessie McKoy / Ripple Reserve Fund" in the WHOIS contact information, it did not provide any affirmative evidence to support this identity; combined with the fact that the complainant claimed it did not authorize the respondent to use the mark, the respondent is not commonly known by the domain name). Here, the WHOIS information regarding the disputed domain name is false, listing "[REDACTED] / granitegear" as registrant of record: [REDACTED] is the name of one of Complainant's employees, who did not register the disputed domain name. Respondent provides no affirmative evidence in support of this identity and no evidence in the record suggests Respondent is authorized to use the GRANITE GEAR mark. Therefore the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).

 

Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the disputed domain name. Rather, the domain name resolves to an inactive website and Respondent uses the disputed domain name to conduct a fraudulent email phishing scheme. Specifically, Respondent used the disputed domain name to send email messages that request money from third parties, thus fraudulently trying to divert payments to be made to Complainant to its own account. Panels have found such use by a respondent consists of neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Morgan Stanley v. Zhange Sheng Xu / Zhang Sheng Xu, FA 1600534 (Forum Feb. 26, 2015) ("The Panel agrees that the respondent's apparent phishing attempt provides further indication that the respondent lacks any rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii)."); see also Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Forum Apr. 30, 2010) ("The Panel finds that Respondent's attempt to "phish" for users' personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)."). Therefore, the Panel finds that Respondent's use of the disputed domain name constitutes neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). And the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.

 

Registration and Use in Bad Faith

Respondent (who did not reply to Complainant's contentions) has not presented any plausible explanation for its use of Complainant's mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent's failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.

 

Indeed, as noted above, Respondent uses the disputed domain name in furtherance of a fraudulent email phishing scheme. This behavior is evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Kalra, FA 1650447 (Forum Dec. 31, 2015); 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.); see also National Oilwell Varco, L.P. v. Craig Wood/NOV, FA 1575951 (Forum Sept. 22, 2014) (finding bad faith where respondent fraudulently attempted to induce wire transfers by sending e-mails purporting to be from complainant's President and CEO); see also Capital One Financial Corporation and Capital One Bank v. Austin Howel, FA 289304 (Forum Aug. 11, 2004) (finding bad faith where respondent used complainant's mark to fraudulently induce transfer of credit and personal identification information). Consequently, the Panel finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii).

 

Further, Respondent registered the disputed domain name with actual knowledge of Complainant's mark: the signature block of the fraudulent emails displays the name of one of Complainant's employees, Complainant's mark, and the actual physical address of one of Complainant's offices. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant's rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) ("There is no place for constructive notice under the Policy."); see also Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) ("The Panel notes that although the UDRP does not recognize 'constructive notice' as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it."); 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 name). The Panel finds that Respondent had actual knowledge of Complainant's rights in the mark prior to Respondent's registration of the disputed domain name and that this constitutes bad faith under Policy ¶ 4(a)(iii).

 

In addition, Respondent registered the disputed domain name using false WHOIS contact information, and this can evince bad faith registration and use under Policy ¶ 4(a)(iii). See CNU ONLINE Holdings, LLC v. Domain Admin / Whois Privacy Corp., FA 1614972 (Forum May 29, 2015) ("As the Panel sees that Respondent has provided false or misleading WHOIS information, the Panel finds bad faith in Respondent's registration of the disputed domain name per Policy ¶ 4(a)(iii)."); see also ABB Asea Brown Boveri Ltd v. Global Mgr, FA 1716963 (Forum Mar. 30, 2017) ("Complainant contends that Respondent provided false contact information while registering the disputed domain. Registering a confusingly similar domain name using false contact information can evince bad faith registration."); see also j2 Global Canada, Inc. and Landslide Technologies, Inc. v. Vijay S Kumar/Strategic Outsourcing Services Pvt Ltd, FA 1411001647718 (Forum Jan. 4, 2016) ("False or misleading contact information indicates bad faith registration and use."); see also Chevron Intellectual Property LLC v. Phillip Thomas/Chevron Pacific, FA 1504001615524 (Forum May 29, 2015) ("Complainant's use of false registration data and its unexplained redirection of the disputed domain name to Complainant's own website are further indications of such bad faith."); see also McDonald's Corp. v. Holy See, FA 155458 (Forum June 27, 2003) ("The Panel finds that Respondent provided false contact information in the registration certificates and that such actions, even though not specifically enumerated in the Policy, may form the basis for a finding of bad faith registration and use."); see also Mars, Incorporated v. RaveClub Berlin, FA 97361 (Forum July 16, 2001) (providing false registration and contact information for infringing domain names evidenced Respondent's bad faith). Accordingly, the Panel finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii) on this ground also.

 

Finally, by merely adding an "s" to Complainant's mark, Respondent engages in typosquatting. A finding of typosquatting can evince bad faith under Policy ¶ 4(a)(iii). See Webster Financial Corporation and Webster Bank, National Association v. Zhichao Yang, FA 1970133 (Forum Nov. 24, 2021) ("Typosquatting is a practice whereby a domain name registrant deliberately introduces typographical errors or misspellings into a domain name hoping that internet users will inadvertently type the malformed string when searching for products or services associated with the target trademark, or will otherwise confuse the misspelled trademark laden domain name with its target trademark, a web address, an email address, or some other reference to the mark holder."); see also 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)); see also Sports Auth. Mich., Inc. v. Skander, FA 135598 (Forum Jan. 7, 2002) (stating that "[b]y registering the 'typosquatted' domain name in [Complainant's] affiliate program, Respondent profits on the goodwill of [Complainant's] protected marks and primary Internet domain names," which is evidence of bad faith registration and use). As such, the Panel finds bad faith typosquatting under Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <granitegears.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Richard Hill, Panelist

Dated: September 21, 2023