DECISION

 

Hendrickson USA, L.L.C. v. Newlife

Claim Number: FA2309002062823

 

PARTIES

Complainant is Hendrickson USA, L.L.C. ("Complainant"), represented by Jason A. PIttman of Dority & Manning, P.A., South Carolina, USA. Respondent is Newlife ("Respondent"), Texas, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <hendrickson-lnt.com>, registered with NameCheap, Inc.

 

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.

 

Sandra J. Franklin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on September 21, 2023; Forum received payment on September 21, 2023.

 

On September 21, 2023, NameCheap, Inc. confirmed by e-mail to Forum that the <hendrickson-lnt.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 September 22, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 12, 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@hendrickson-lnt.com. Also on September 22, 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 October 13, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Sandra J. Franklin 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.

 

PARTIES' CONTENTIONS

A. Complainant

1.       Respondent's <hendrickson-lnt.com> domain name is confusingly similar to Complainant's HENDRICKSON mark.

 

2.       Respondent does not have any rights or legitimate interests in the <hendrickson-lnt.com> domain name.

 

3.       Respondent registered and uses the <hendrickson-lnt.com> domain name in bad faith.

 

B. Respondent did not file a Response.

 

FINDINGS

Complainant offers Commercial Vehicle Systems and holds a registration for the HENDRICKSON mark with the United States Patent and Trademark Office ("USPTO") (Reg. No. 697,383, registered May 10, 1960).

 

Respondent registered the <hendrickson-lnt.com> domain name September 13, 2023, and uses it to conduct a phishing scheme.

 

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 Panel finds that Complainant has rights in the HENDRICKSON mark through registration with the USPTO. 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).").

 

Respondent's <hendrickson-lnt.com> domain name uses Complainant's entire HENDRICKSON mark and adds a hyphen, a misspelled generic word and the ".com" gTLD. These changes do not sufficiently distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). See Vanguard Trademark Holdings USA LLC v. Shuai Wei Xu / Xu Shuai Wei, FA 1784238 (Forum June 1, 2018) ("Respondent arrives at each of the disputed domain names by merely misspelling each of the disputed domain names and adding the gTLD '.com.'  This is insufficient to distinguish the disputed domain names from Complainant's trademark."); see also United States Postal Service v. Zhengkun Li, FA 1464661 (Forum Nov. 5, 2012) (finding the <ems-tracking.net> domain name confusingly similar to Complainant's EMS mark and noting that "tracking" was merely descriptive of Complainant's business).   Therefore, the Panel finds that Respondent's <hendrickson-lnt.com> domain name is confusingly similar to Complainant's HENDRICKSON mark.

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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.").

 

Complainant contends that Respondent has no rights or legitimate interests in the <hendrickson-lnt.com> domain name, as Respondent is not commonly known by the domain name. Complainant has not given Respondent permission to use its HENDRICKSON mark. The WHOIS identifies "Newlife" as the registrant.  Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name and thus has no rights under Policy ¶ 4(c)(ii). See Navistar International Corporation v. N Rahmany, FA 1620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). 

 

Complainant argues that Respondent does not use the <hendrickson-lnt.com> domain name for a bona fide offering of goods or service or a legitimate noncommercial or fair use as Respondent uses it for a phishing scheme. Using a disputed domain name to conduct a phishing scheme is not a bona fide offering of goods or service or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or Policy ¶ 4(c)(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)). Complainant provides screenshots of emails using the disputed domain name showing that Respondent uses the domain name to solicit payments. The Panel finds that this is not a bona fide offering of goods or services or a legitimate noncommercial or fair use, and thus Respondent has no rights under Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

Complainant contends that Respondent registered and uses the disputed domain name in bad faith to conduct a phishing scheme. Registering a disputed domain name with the intent to pass off as a complainant and solicit payments disrupts Complainant's business and evinces bad faith registration and use under Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv). See UBS AG v. SMS Vice/Ubs, FA 1866179 (Forum Nov. 4, 2019) (finding bad faith where respondent registered and used the domain <ubscash.com> to disrupt the complainant's business and commercially benefit from the disputed domain name by attempting to impersonate complainant in order to conduct a fraudulent phishing scheme for commercial gain). Accordingly, the Panel finds bad faith under Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv).

 

Complainant also claims that Respondent registered the disputed domain name with knowledge of Complainant and its rights in the HENDRICKSON mark, based on the phishing scheme perpetrated by Respondent. The Panel agrees, noting that a fraudulent email was issued within hours of the creation of the disputed domain to Complainant's customer, and finds further bad faith under Policy ¶ 4(a)(iii). See Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum Jan. 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.").

 

The Panel finds that Complainant has satisfied 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 <hendrickson-lnt.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Sandra J. Franklin, Panelist

Dated: October 15, 2023