DECISION

 

Apex Tool Group v. jeffery Adamu

Claim Number: FA2311002072696

PARTIES

Complainant is Apex Tool Group ("Complainant"), represented by Jennifer A. Van Kirk of Lewis Roca Rothgerber Christie LLP, Arizona, USA. Respondent is jeffery Adamu ("Respondent"), Georgia, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <apextoolsgroups.com>, (the "Domain Name") registered with PSI-USA, Inc. dba Domain Robot.

 

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.

 

Dawn Osborne as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on November 28, 2023; Forum received payment on November 28, 2023.

 

On November 28, 2023, PSI-USA, Inc. dba Domain Robot confirmed by e-mail to Forum that the <apextoolsgroups.com> Domain Name is registered with PSI-USA, Inc. dba Domain Robot and that Respondent is the current registrant of the name. PSI-USA, Inc. dba Domain Robot has verified that Respondent is bound by the PSI-USA, Inc. dba Domain Robot 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 29, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 19, 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@apextoolsgroups.com. Also on November 29, 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 20, 2023 pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Dawn Osborne 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

The Complainant's contentions can be summarised as follows:

 

The Complainant through one of its subsidiaries is the owner of the trade mark APEX TOOL GROUP registered, inter alia, in the UK for machine tools since at least 2013. It owns apextoolgroup.com.

 

The Domain Name registered in 2023 is confusingly similar to the Complainant's trade mark containing it in its entirety and adding two single letters 's' and the gTLD .com.

 

The Respondent has no rights or legitimate interests in the Domain Name, is not commonly known by it and is not authorised by the Complainant.

 

The Domain Name is not connected to an active web site but has been used for a fraudulent email scheme using the Complainant's logo, the name and logo of one of its subsidiaries and the name of one of the Complainant's employees. This is not a bona fide offering of goods or services or a legitimate noncommercial fair use. It is deceptive registration and use in bad faith.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The Complainant through one of its subsidiaries is the owner of the trade mark APEX TOOL GROUP registered, inter alia, in the UK for machine tools since at least 2013.

 

The Domain Name registered in 2023 is not connected to an active web site but has been used for a fraudulent email scheme using the Complainant's logo, the name and logo of one of its subsidiaries and the name of one of the Complainant's employees.

 

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 Domain Name consists of the Complainant's mark APEX TOOL GROUP (registered, inter alia, in the UK for machine tools since at least 2013), adding two single letter 's' and the gTLD .com.

 

The Panel agrees that misspellings such as the addition of one or more incidence of the single letter 's' does not prevent confusing similarity between the Domain Name and the Complainant's trade mark pursuant to the Policy. See Twitch Interactive, Inc. v Antonio Teggi, FA 1626528 (Forum Aug 3, 2015)(finding that twitcch.tv is confusingly similar to the TWITCH TV trade mark because the domain name consisted of a common misspelling of the mark by merely adding the letter 'c').

 

The gTLD .com does not serve to distinguish the Domain Name from the Complainant's mark. See Red Hat Inc v Haecke FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).

 

Accordingly, the Panel holds that the Domain Name is confusingly similar to the Complainant's registered mark.

 

As such the Panel holds that Paragraph 4(a)(i) of the Policy has been satisfied.

 

Rights or Legitimate Interests

The Complainant has not authorised the use of its mark. There is no evidence or reason to suggest the Respondent is, in fact, commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).

 

The Domain Name has been used in a fraudulent email phishing scheme impersonating one of the Complainant's employees and using the Complainant's mark and logo, the name and logo of one of its subsidiaries and the name of one of the Complainant's employees. As such it cannot amount to the bona fide offering of goods and services or a legitimate noncommercial or fair use. (See DaVita Inc. v Cynthia Rochelo FA 1738034 (Forum July 20, 2017) finding that 'Passing off in furtherance of a fraudulent scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use'.)

 

The Domain Name also appears to be a typosquatting registration differing from the Complainant's mark and url by only two single letters. Typosquatting is also an indication of a lack of rights or a legitimate interests. See Chegg Inc. v. yang qijin, FA1503001610050 (Forum Apr. 23, 2015) ("typosquatting, demonstrates a respondent's lack of rights or legitimate interests under Policy ¶ 4(a)(ii).").

 

The Respondent has not provided a Response to this Complaint and the prima facie case evidenced by the Complainant has not been rebutted.

 

As such the Panelist finds that the Respondent does not have rights or legitimate interests in the Domain Name and that the Complainant has satisfied the second limb of the Policy.

 

Registration and Use in Bad Faith

The use of the name of one of the Complainant's employees and the Complainant's logo and the name of one of its subsidiaries and that subsidiaries' logo in the Respondent's fraudulent phishing email scheme in this case shows that the Respondent has actual knowledge of the Complainant, its rights, business and services.

 

Impersonating a complainant by use of a complainant's mark in a fraudulent phishing scheme is disruptive and evinces bad faith registration and use. See Microsoft Corporation v Terrence Green/ Whois Agent/Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr 4 2016)(finding that respondent's use of the disputed domain name to send fraudulent e- mails constituted bad faith registration and use pursuant to Policy 4(b)(iii)).

 

Typosquatting itself is evidence of relevant bad faith registration and use and disruption of the Complainant's business. Typosquatting also indicates the Respondent had knowledge of the Complainant and its rights. See InfoSpace, Inc. v. Greiner, FA 227653 (Forum Mar. 8, 2004) ("Respondent's domain name is a simple and popular variation of a trademark commonly used by typosquatters …Such a domain name evidences actual knowledge of the underlying mark prior to the registration of the domain name, and as Respondent failed to submit any evidence to counter this inferrence [sic], Respondent's actions evidence bad faith registration of the disputed domain name.").

 

As such, the Panelist believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith, and has satisfied the third limb of the Policy under para 4(b)(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 <apextoolsgroups.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Dawn Osborne, Panelist

Dated: December 20, 2023