DECISION

 

Les Studios Moment Factory v. Antonio Lopez / DHL Logistics

Claim Number: FA2311002071258

 

PARTIES

Complainant is Les Studios Moment Factory ("Complainant"), represented by Julie Larouche of St. Lawrence Law Firm LLP, Canada. Respondent is Antonio Lopez / DHL Logistics ("Respondent"), California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <momentfactory.us>, 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.

 

Steven M. Levy, Esq. as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on November 15, 2023; Forum received payment on November 15, 2023.

 

On November 15, 2023, NameCheap, Inc. confirmed by e-mail to Forum that the <momentfactory.us> 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 the U.S. Department of Commerce's usTLD Dispute Resolution Policy (the "Policy").

 

On November 22, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 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@momentfactory.us. Also on November 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 December 13, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Steven M. Levy, Esq. 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 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

Complainant is an entertainment company, more specifically, a multimedia entertainment studio specializing in the design and production of immersive environments, combining video, lighting, architecture, sound, and special effects into various shows. It has used the MOMENT FACTORY trademark for these services since 2001 and has obtained registrations of the mark in multiple countries such as Canada, Hong Kong, Japan, Korea, and Singapore. The earliest of these is Canada Intellectual Property Office Reg. No. TMA674225 which was registered on October 5, 2006. Respondent's <momentfactory.us> domain name, registered on February 5, 2023, is identical or confusingly similar to the MOMENT FACTORY mark as it incorporates the entirety of the mark and only adds the ".us" TLD.

 

Respondent has no rights or legitimate interests in the disputed domain name where it does not resolve to any website but has been used to impersonate Complainant in a job offer scam. Similarly, such illicit activity demonstrates Respondent's bad faith registration and use of the domain name as it seeks commercial gain based on confusion with Complainant's trademark.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

-       Complainant has demonstrated its rights in the MOMENT FACTORY trademark and the <momentfactory.us> domain name is identical or confusingly similar to the mark;

-       Respondent has no rights or legitimate interests in the disputed domain name where there is no evidence that it owns any relevant trademark of its own, it is not commonly known by the domain name, and its use of the domain name, for a job offer scam, is not a bona fide offering of goods or services and is also not a legitimate noncommercial or fair use; and

-       The above-mentioned use of the domain name demonstrates that it was registered and is used in bad faith.

 

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 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, 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

Complainant claims rights in the MOMENT FACTORY mark through registration with various trademark offices. Registration of a mark in this manner is a valid showing of rights in a mark under Policy ¶ 4(a)(i). See Red Hat, Inc. v. Muhammad Shahzad, FA 1787738 (Forum June 19, 2018) ("Registration of a mark with multiple trademark agencies is sufficient to demonstrate rights to a mark per Policy ¶ 4(a)(i).") Complainant provides copies of some of its registration certificates and screenshots from various other trademark offices and, based on this evidence, the Panel finds that Complainant has demonstrated rights in the mark under Policy ¶ 4(a)(i).

 

Next, Complainant asserts that the disputed domain name is identical to its mark but for the addition of the ".us," ccTLD which fails to distinguish the domain name from the mark. The Panel agrees and finds that the <momentfactory.us> domain name is identical or confusingly similar to the MOMENT FACTORY mark. 

 

Rights or Legitimate Interests

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). Should it succeed in this effort, the burden then shifts to Respondent to show that 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 there is nothing in the available evidence which indicates that Respondent has rights in a mark identical to the disputed domain name, which would serve to satisfy Policy ¶ 4(c)(i). See Pepsico, Inc. v. Becky, FA 117014 (Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)). Therefore, the Panel concludes that Respondent has failed to support Policy ¶ 4(c)(i).

 

Next, Complainant asserts that Respondent has no rights or legitimate interests in the <momentfactory.us> domain name because Respondent is not commonly known by the disputed domain name and is not affiliated with Complainant's business. In considering this issue WHOIS information can be used to support a finding that a respondent is or is not commonly known by the disputed domain name under Policy ¶ 4(c)(iii). See Instron Corp. v. Kaner, FA 768859 (Forum Sep. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed "Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't" as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute). Additionally, lack of authorization to use a mark can be further evidence that a respondent is not commonly known by the mark. See Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug, 3, 2017) ("Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant's trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.") Here, the WHOIS information revealed by the concerned Registrar identifies "Antonio Lopez / DHL Logistics" as the registrant of the disputed domain name. Additionally, Complainant asserts that it "has not granted the Registrant any licence, consent, or authorization, whether express or implied, permitting the Registrant to use the MOMENT FACTORY Marks". Respondent has not filed a Response or made any other submission in this case. Thus, the Panel finds no evidence upon which to conclude that Respondent is commonly known by the domain name under Policy ¶ 4(c)(iii).

 

Complainant further argues that Respondent does not have rights or legitimate interests in the <momentfactory.us> domain name because Respondent does not use the domain name for any bona fide offering of goods or services nor does it make a legitimate noncommercial or fair use thereof. Instead, Respondent is using the disputed domain name to impersonate Complainant and fraudulently seek personal information and funds from individuals by falsely offering employment with Complainant. Use of a disputed domain name to send emails impersonating a complainant for fraudulent or phishing purposes clearly does not qualify as a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(ii) and (iv). See Elevance Health, Inc. and Carelon Holdings, Inc., Carelon Global Solutions U.S., Inc., Carelon Global Solutions Puerto Rico, L.L.C., Carelon Rx, Inc., and Carelon Behavioral Health Holdings, L.L.C. v. Robert Wilson, FA 2065230 (Forum Nov. 1, 2023) (no rights or legitimate interests found where "Respondent has caused the disputed domain name to be used for a phishing scheme to send fraudulent emails to potential applicants for employment with the Complainant that personated the Complainant, its CARELON trademark, brand and human resources employees, purporting falsely to offer them authentic job opportunities and to induce the applicants to provide personal information…"); see also Enterprise Holdings, Inc. v. I S / Internet Consulting Services Inc., FA 1785242 (Forum June 5, 2018) ("On its face, the use of a domain name that is confusingly similar to the mark of another in order to facilitate a phishing scheme cannot be described as either a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(iii).") Here, Complainant provides screenshots of various emails showing that Respondent uses the email address "careers@momentfactory.us" and a signature block showing the name of an individual seeming to be an employee of Complainant's followed by the "Moment Factory" name. Attached to these emails, is a .pdf document titled "Join Us Today" which encourages the reader to consider employment with Complainant and describes job responsibilities, benefits, and other elements of working as a "UI/UX Designer". In particular, this document states that "You will be advised on how to receive the following" after which it lists a laptop computer and accessories as well as certain software. It concludes by urging the reader to schedule an interview with a named manager. Finally, submitted into evidence are emails from individuals to Complainant expressing "concerns that there may be someone committing recruitment fraud under Moment Factory's name" and stating "I am a little bit suspicious about the job offer, since I cannot find them on LinkedIn and they require me to purchase devices for remote work. I'm afraid that it could possibly be a job scam, so I am writing to ask for a verification for this job offer." This evidence shows that Respondent has contacted individuals and attempted to obtain their personal information under the pretense of setting up an interview for employment with Complainant. The mention of obtaining a laptop and certain software is also typical of job offer scams in which the applicant is asked to send funds to the perpetrator. Respondent has not submitted any argument or evidence to explain its actions as anything other than a phishing attempt. As Complainant has made out a prima facie case that has not been rebutted by Respondent, upon a preponderance of the available evidence, the Panel finds that Respondent is not using the domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(ii) nor is it making a legitimate noncommercial or fair use thereof under Policy ¶ 4(c)(iv).

 

Registration or Use in Bad Faith

Complainant asserts that Respondent registered the <momentfactory.us> domain name with actual knowledge of Complainant's rights in the MOMENT FACTORY mark based on Respondent's use of the disputed domain name to impersonate Complainant. Actual knowledge of a complainant's trademark rights may form a solid foundation upon which to establish bad faith and may be inferred when a respondent uses an identical disputed domain name to pass itself off as a complainant. 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.") Complainant provides screenshots of the email chain that shows Respondent impersonating Complainant in a fraudulent job offer in order to collect personal information and funds from an individual job applicant. The email uses an address incorporating the disputed domain name and a signature block that names one of Complainant's actual employees. From this, the Panel finds sufficient evidence that Respondent had actual knowledge of Complainant's rights in the MOMENT FACTORY mark at the time that it registered the disputed domain name.

 

Complainant further argues that Respondent registered or uses the <momentfactory.us> domain name in bad faith because Respondent impersonates Complainant as a part of a phishing scheme via email. Use of a disputed domain name to impersonate a complainant in fraudulent emails for the purpose of phishing can be evidence of bad faith disruption of a complainant's business under Policy ¶ 4(b)(iii) and an attempt to attract users for commercial gain based on trademark confusion under Policy ¶ 4(b)(iv). See Zoetis Inc. and Zoetis Services LLC v. VistaPrint Technologies Ltd, FA 1623601 (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)."); see also Chevron Intellectual Property, LLC v. Jack Brooks, FA 1635967 (Forum Oct. 6, 2015) (finding that Respondent's use of <chevron-corps.com> to impersonate an executive of Complainant in emails is in opposition to Complainant and is therefore in bad faith under Policy ¶ 4(b)(iii). The Panel notes that Complainant has provided screenshots of an email chain, which shows Respondent using the address "careers@momentfactory.us" and pretending to offer an interview for employment with Complainant and seeking to have them obtain certain computer equipment and software. Each of the emails end with a signature block mentioning the name of an actual employee of Complainant's and the phrase "Moment Factory". From this, the Panel finds sufficient evidence to hold that bad faith under Policy ¶ 4(b)(iii) and/or (iv) has been established through Respondent's impersonation and phishing activity. 

 

Finally, Complainant argues that Respondent has provided false WHOIS information when it registered the disputed domain name and that this further demonstrates bad faith. Prior decisions have noted that using false contact information may demonstrate a bad faith attempt to hide one's identity and hinder a trademark owner from attempting to assert its rights. See FIL Limited v. Domain Admin, WhoIs IDCPrivacy Service / Leonard Kitimbo, D2019-1374 (WIPO Aug. 15, 2019) ("Respondent's submission of inaccurate, incomplete, or falsified contact information to the Registrar, without a street name, postcode, or valid telephone number, further supports a finding of Respondent's bad faith.") The Panel notes that Respondent has listed the Registrant Organization as DHL Logistics. While there is no proof that Respondent is not associated with this entity, against the backdrop of the job offer scam use to which the disputed domain name has been put, the Panel finds it highly likely that Respondent has used false WHOIS information and that this further demonstrates its bad faith in this case under Policy ¶ 4(a)(iii).

        

DECISION

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

 

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

 

 

 

Steven M. Levy, Esq., Panelist

Dated: December 15, 2023