DECISION

 

Pendo.io, Inc. v. NameSilo, LLC / Domain Administrator

Claim Number: FA2311002071561

 

PARTIES

Complainant is Pendo.io, Inc. ("Complainant"), represented by William B. Cannon of Parker Poe Adams & Bernstein LLP, North Carolina, USA. Respondent is NameSilo, LLC / Domain Administrator ("Respondent"), Arizona, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <pendo-growi.com> ("Disputed Domain Name"), registered with NameSilo, LLC.

 

PANEL

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.

 

James Bridgeman SC as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on November 17, 2023; Forum received payment on November 17, 2023.

 

On November 17, 2023, NameSilo, LLC confirmed by e-mail to Forum that the <pendo-growi.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, LLC 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 November 20, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 11, 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@pendo-growi.com.

 

Also on November 20, 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 12, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed James Bridgeman SC 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 Disputed Domain Name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant claims rights in the PENDO, PENDOVOX and PENDOMONIUM marks which are established by its ownership of the service mark registrations described below, and at common law by the goodwill arising from its extensive and longstanding use of the marks providing its cloud-based computer software services. See Western Heights Water Co. v Patrick Kelly et al., FA 1559657 (Forum June 28, 2014) (complainant's common law rights sufficient to establish complainant's rights in its mark under Policy ¶ 4(a)(i)).

 

Complainant alleges that the Disputed Domain Name is confusingly similar to its PENDO, PENDOVOX and PENDOMONIUM marks because it incorporates Complainant's PENDO mark in its entirety, and merely adds a hyphen, the misspelled generic term "grow" (appearing as "growi"), and the generic Top Level Domain ("gTLD") extension <.com>.

 

It is contended that the differences are insufficient to adequately distinguish the Disputed Domain Name from Complainant's marks.

 

Specifically, Complainant argues that the neither the addition of the hyphen, nor the misspelled generic term "growi" distinguish the Disputed Domain Name from Complainant's mark per Policy ¶ 4(a)(i)." See Blizzard Entertainment, Inc. v. XINXIU ZENG /haimin liang, FA 1736365 (Forum July 19, 2017) (finding that the addition of punctuation—specifically, a hyphen—did not sufficiently distinguish the disputed Disputed Domain Name from complainant's registered mark); see also E*Trade Financial Holdings, LLC v. hello world, FA 2031276 (Forum Mar. 13, 2023) (finding that the addition of the generic term "growth" fails to distinguish the Disputed Domain Name from the marks in which Complainant has rights).

 

Complainant next alleges that Respondent has no rights or legitimate interests in the Disputed Domain Name, arguing that its U.S. service mark registrations for PENDO, PENDOVOX, and PENDOMONIUM described below, were issued on April 10, 2018, January 29, 2019, and December 26, 2017, respectively, which precede the date on which Respondent registered the Disputed Domain Name, namely November 3, 2023.

 

Complainant asserts that it has not licensed or otherwise authorized Respondent to use any of Complainant's marks in any manner whatsoever. Moreover, Respondent is not in any way connected to, sponsored by, or affiliated with Complainant.

 

On the contrary, it is alleged that Respondent registered the Disputed Domain Name and is using the Disputed Domain Name to impersonate Complainant, mimic Complainant's webpage, and phish for Complainant's customers' information.

 

In this regard, Complainant refers to a screen capture of the webpage to which the Disputed Domain Name resolves which is exhibited in an annex to the Complaint, and submits that it illustrates that Respondent uses the Disputed Domain Name to pass itself off as Complainant.

 

Complainant specifically alleges that the exhibited webpage mimics Complainant's own website by using Complainant's marks and color scheme, and displaying a login page. Such circumstances, it is contended, unequivocally indicate that Respondent does not have any rights or legitimate interests in the Disputed Domain Name.

 

Complainant next refers to a further exhibit annexed to the Complaint, which Complainant submits shows copies of messages received by a consumer in which Respondent poses as Complainant and urges consumers to visit the Disputed Domain Name in order to obtain consumer's account information for Complainant's platform.

 

Complainant argues that these messages prove that Respondent is engaged in a fraudulent scheme to phish for consumers' username and password for Complainant's platform or other personally-identifying information.

 

Complainant argues that Respondent's use of the Disputed Domain Name in this way does not constitute a bona fide offering of goods or services, or legitimate noncommercial or fair use of the Disputed Domain Name. See DaVita Inc. v. Cue balls, FA 1959168 (Forum Sept. 7, 2021) ("Use of a disputed Disputed Domain Name to pass off as [c]omplainant via emails and engage in a fraudulent scheme does not constitute bona fide offerings of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).").

 

Furthermore, Complainant submits that Respondent does not appear to have ever been commonly known by the Disputed Domain Name. To the contrary, Respondent registered the Disputed Domain Name under the name "NameSilo, LLC / Domain Administrator" which does not have any apparent relation to the Disputed Domain Name or to any of Complainant's Marks.

 

Complainant contends that this is evidence that Respondent is not commonly known by the Disputed Domain Name and has not acquired rights to or legitimate interests in the Disputed Domain Name. See Transamerica Corp. v. Host Master / Transure Enterprise Ltd, FA 1841115 (Forum May 28, 2019) ("[T]he pertinent WHOIS information identifies the registrant of the Disputed Domain Name only as 'Host Master / Transure Enterprise Ltd,' which does not resemble the Disputed Domain Name. On this record, we conclude that [r]espondent has not been commonly known by the disputed Disputed Domain Name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(ii).").

 

Complainant next alleges that the Disputed Domain Name was registered and is being used in bad faith, arguing that Respondent's use of the Disputed Domain Name to impersonate Complainant and conduct a fraudulent phishing scheme is proof that Respondent registered the Disputed Domain Name both to disrupt Complainant's business and to attract, for commercial gain, Internet users and mislead them into providing Respondent with personal protected information by using Complainant's marks to create confusion as to the source of Respondent's fraudulent messages, Disputed Domain Name, and webpage.

 

Complainant argues that such conduct constitutes bad faith registration and use of the Disputed Domain Name for the purposes of the Policy. See, e.g., 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 supported a finding of bad faith registration and use under Policy ¶ 4(b)(iii)).

 

Complainant adds that Respondents use of the Disputed Domain Name to resolve to a webpage that otherwise mimics Complainant's webpage is also evidence of bad faith use and registration of the Disputed Domain Name. See Am. Int'l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the Disputed Domain Name was registered and used in bad faith where the respondent hosted a website that "duplicated [c]omplainant's mark and logo, giving every appearance of being associated or affiliated with [c]omplainant's business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the [complainant's] mark").

 

Further, in view of the publicity that Complainant has received over the past decade – as well as the facts that Respondent impersonates Complainant, and the Disputed Domain Name mimics Complainant's webpage and phishes for Complainant's customers' information – it is inconceivable that Respondent registered the Disputed Domain Name without knowledge of Complainant and Complainant's mark. This too supports a finding that Respondent registered and is using the Disputed Domain Name in bad faith under Policy ¶ 4(a)(iii). See Kendra Scott and Kendra Scott, LLC v. white jams et al, FA 1792824 (Forum Aug. 6, 2018) ("A respondent who had knowledge of complainant's rights in a mark and registered a[n] infringing Disputed Domain Name will be found to be acting in bad faith under Policy ¶4(a)(iii).").

 

Lastly, Complainant submits that because the Disputed Domain Name incorporates the whole of Complainant's registered mark PENDO and merely adds a hyphen, the misspelled generic term "growi," and the gTLD extension <.com>, any use of the Disputed Domain Name would cause consumer confusion.

 

Thus, Respondent's registration and use of the Disputed Disputed Domain Name constitutes bad faith. Panels have found bad faith registration and use pursuant to Policy ¶ 4(b)(iv) when any use of the domain name at issue would cause consumer confusion. See Broadcom Corporation v. T Broadous and Broadcom Marketing & Trading, LLC, FA 151547 (Forum May 9, 2003) ("The Disputed Domain Name registered by [r]espondent is confusingly similar to [c]omplainant's mark; any use by [r]espondent would cause Internet user confusion. Respondent intentionally attempted to attract Internet users to its website by creating a likelihood of confusion with [c]omplainant's BROADCOM mark. Thus, the Panel finds bad faith registration and use pursuant to Policy ¶ 4(b)(iv).").

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant is a provider of cloud-based computer software services and uses the service marks PENDO, PENDOVOX, and PENDOMONIUM in connection with its business, for which it has registered the following registered service marks:

·       United States of America registered service mark PENDO, registration number 5441822, registered on the Principal Register on April 10, 2018 for services in international class 42;

·       United States of America registered service mark PENDO VOX registration number 5666763, registered on the Principal Register on January 29, 2019 for services in international class 42; and

·       United States of America registered service mark PENDOMONIUM, registration number 5363397, registered on the Principal Register on December 26, 2017.

 

Complainant has an established Internet presence and owns and uses the Disputed Domain Name <pendo.io>, which was registered on June 17, 2013, and resolves to Complainant's official website promoting its computer services business.

 

The Disputed Domain Name <pendo-growi.com> was registered on November 3, 2023. It resolves to a login webpage inviting visitors to insert their username and password, and displays Complainant's PENDO trademark together with the wording "Login Now", "Register Account" and "Login Now" and "Online Customer Service".

 

There is no information available about Respondent except for that provided in the Complaint, the Registrar's WhoIs for the Disputed Domain Name and the response from the Registrar to the request from Forum to provide details of the registration of the Disputed Domain Name.

 

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

A.       Complainant's Rights

Complainant has provided convincing, uncontested evidence that it has rights in the PENDO, PENDOVOX, and PENDOMONIUM marks, established by the ownership of the service mark registrations described above and at common law by its use of the marks in its cloud-based computer software services.

 

B.       Confusing Similarity

The Disputed Domain Name <pendo-growi.com> consists of Complainant's PENDO mark in its entirety, in combination with a hyphen, the letters "growi" and the gTLD extension <.com>.

 

Complainant's PENDO mark is clearly recognizable as being the initial, dominant, and only distinctive element in the Disputed Domain Name.

 

The letters "growi", have no obvious meaning, either on their own, or in combination with the other elements of the Disputed Domain Name, although they bear resemblance to the generic words "grow" or "growth" as alleged.

 

This Panel finds that neither the additional letters "growi" nor the hyphen add any distinguishing character to the Disputed Domain Name. On the contrary, the letters "growi" are a nonsense and the hypen, positioned as it is immediately after the PENDO mark, emphasizes and brings attention to the mark. The additional elements do not prevent a finding that the Disputed Domain Name is confusingly similar to the PENDO mark.

 

Similarly, the gTLD extension <.com> does not prevent a finding of confusing similarity because in the circumstances of this proceeding, it would be considered to be a necessary technical requirement for a domain name registration,

 

This Panel finds therefore that the Disputed Domain Name is confusingly similar to the PENDO mark in which Complainant has rights, and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant has made out a prima facie case that the Respondent has no rights legitimate interests in the Disputed Domain Name arguing that

·       each of Complainant's abovementioned service mark registrations precede the date Respondent registered the Disputed Domain Name on November 3, 2023;

·       Complainant has not licensed or otherwise authorized Respondent to use any of Complainant's marks in any manner whatsoever;

·       Respondent is not in any way connected to, sponsored by, or affiliated with Complainant;

·       on the contrary, the screen capture of the webpage to which the Disputed Domain Name resolves which is exhibited in an annex to the Complaint shows that Respondent registered and is using the Disputed Domain Name to impersonate Complainant, mimic Complainant's webpage, and phish for Complainant's customers' information and to pass itself off as Complainant;

·       specifically, the exhibited webpage mimics Complainant's own website by using Complainant's marks and color scheme, and displaying a login page, which unequivocally indicates that Respondent has no rights or legitimate interests in the Disputed Domain Name;

·       a further exhibit annexed to the Complaint, shows copies of messages on a cell phone, which were received by a consumer from Respondent on a FACEBOOK account; in the messages Respondent poses as a recruiter of Complainant's company, in order to obtain consumer's account information for Complainant's platform;

·       the exhibited messages illustrate that Respondent is engaged in a fraudulent scheme to phish for the username and password which consumers use to access Complainant's own platform or other personally-identifying information;

·       use of the Disputed Domain Name in this way does not constitute a bona fide offering of goods or services, or legitimate noncommercial or fair use of the Disputed Domain Name;

·       furthermore, Respondent does not appear to have ever been commonly known by the Disputed Domain Name, but on the contrary, Respondent registered the Disputed Domain Name under the name "NameSilo, LLC / Domain Administrator" which does not have any apparent relation to the Disputed Domain Name or to any of Complainant's marks.

 

It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests.

 

Respondent has failed to discharge that burden and therefore this Panel must find that the Respondent has no rights or legitimate interests in the Disputed Domain Name.

 

Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

Complainant has adduced clear and convincing, uncontested evidence that it has registered trademark rights in the PENDO mark which long predate the registration and first use of the confusingly similar Disputed Domain Name on June 17, 2013.

 

PENDO is a distinctive mark and has no obvious meaning other than as Complainant's service mark. It is most improbable that the Disputed Domain Name which is composed of Complainant's mark and other non-distinctive elements was chosen for any reason other than its similarity to Complainant's mark.

 

In making this finding this Panel is conscious that the registrant intentionally put emphasis on the PENDO mark in the Disputed Domain Name by placing it as the initial and dominant element and separating it from the nonsense term "growi" by a hyphen.

 

This Panel finds therefore that on the balance of probabilities the Disputed Domain Name was registered in bad faith with Complainant in mind to take predatory advantage of Complainant's goodwill and reputation in the PENDO mark.

 

Complainant's uncontested evidence is that the Disputed Domain Name resolves to a webpage that is exhibited in an annex to the Complaint. The exhibit shows a login webpage inviting visitors to insert their usernames and passwords.

 

It contains a banner at the top which displays Complainant's PENDO mark together with the wording "Login Now", "Register Account" and "Login Now" and "Online Customer Service".

 

Separately Complainant has exhibited copies of messages which it states were received from Respondent by consumers. The exhibited messages are screen captures from a cell phone and appear to be from a FACEBOOK account. They are undated. The messages purport to be from a "recruiter for PENDO COMPANY" with an invitation to the recipient to apply for a position that is not named but with a salary package in US$ and Thai Baht of up to $1,500 (THB 53,000) after 15 working days.

 

However the context of the messages is unclear from the Complaint and the exhibit. The recipient is not identified. So, in the absence of much more information, and there is insufficient evidence to make the requested finding that Respondent is engaged in phishing on the basis of those exhibited messages.

 

Nonetheless the uncontested evidence shows that Respondent is using the Disputed Domain Name to resolve to a webpage on which Respondent is impersonating Complainant and inviting Internet users to submit their usernames and passwords to log-in.

 

This, on the balance of probabilities allows this Panel to infer that Respondent is using the Disputed Domain Name to confuse and deceive Internet users, inviting them provide Respondent with the username and password used for Complainant's website. Such use of the Disputed Domain Name for the purpose of phishing constitutes use in bad faith for the purposes of the Policy.

 

As this Panel has found that the Disputed Domain Name was registered and is being used in bad faith, Complainant has succeeded in the third element of the test in 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 <pendo-growi.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

____________________________________

James Bridgeman SC, Panelist

Dated: December 13, 2023