DECISION

 

Oklahoma State Fair, Inc. v. Jordan Brandford

Claim Number: FA2312002074921

 

PARTIES

Complainant is Oklahoma State Fair, Inc. ("Complainant"), represented by Chase C. Webb of McAfee & Taft, Oklahoma, USA. Respondent is Jordan Brandford ("Respondent"), Oklahoma, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <okstatefairs.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.

 

Richard Hill as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on December 12, 2023; Forum received payment on December 12, 2023.

 

On December 12, 2023, NameCheap, Inc. confirmed by e-mail to Forum that the <okstatefairs.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 December 13, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 2, 2024 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@okstatefairs.com. Also on December 13, 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 January 3, 2024, 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.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant states that it is a not-for-profit corporation that serves the general public by providing its services throughout the year under the OKLAHOMA STATE FAIR mark, and related designs, at the Oklahoma City Fairgrounds located in Oklahoma City, Oklahoma. Complainant has continuously used the OKLAHOMA STATE FAIR mark, and related designs, in connection with its services since at least as early as January 31, 1907. Complainant owns the domain name <okstatefair.com> since 2002, from which it offers its services; it uses that domain name in connection with its email address, i.e., "@okstatefair.com". Complainant asserts rights in the OKLAHOMA STATE FAIR mark through its registration in the United States in 2007.

 

Complainant alleges that the disputed domain name is confusingly similar to its OKLAHOMA STATE FAIR mark as it replaces the term "Oklahoma" with the abbreviation "OK" and incorporates the rest of the mark, merely adding an additional "s" and the generic top-level domain ("gTLD") ".com." Complainant cites UDRP precedents to support its position.

 

Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name. Respondent is not licensed or authorized to use Complainant's mark. Respondent is not making a bona fide offering of goods or services through the disputed domain name or a legitimate noncommercial or fair use. Instead, Respondent the disputed domain name does not resolve to an active website, but Respondent used it in furtherance of a fraudulent email phishing scheme. Specifically, on September 5, 2023, an email was sent by Respondent to one of Complainant's event vendors. The email, purportedly sent on behalf of one of complainant's controllers in its accounting department, and further cc'ing two other employees of Complainant, requested payment for an outstanding invoice. The signature block of the email displayed Complainant's actual physical address and the URL of its legitimate website. Such solicitation resulted in Complainant's vendor wiring funds to Respondent. When Complainant reached out to the vendor for actual payment, the vendor indicated that such had already paid. This resulted in Complainant and the vendor discovering that the email addresses included the "s" at the end and were thus fraudulent. Complainant cites UDRP precedents to support its position.

 

Further, says Complainant, Respondent registered and used the disputed domain name in bad faith. The disputed domain name was used in furtherance of a fraudulent email phishing scheme. Respondent had actual knowledge of Complainant's mark. Complainant cites UDRP precedents to support its position.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant owns the mark OKLAHOMA STATE FAIR and uses it to provide fair services.

 

Complainant's registration of its mark dates back to 2007.

 

The disputed domain name was registered in 2023.

 

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

 

The disputed domain name was used in furtherance of a fraudulent email phishing scheme. The signature block of the fraudulent emails displays Complainant's actual physical address and the URL of its legitimate website.

 

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 is a shortened version of Complainant's OKLAHOMA STATE FAIR mark as it replaces the term "Oklahoma" with the abbreviation "OK" and incorporates the rest of the mark, merely adding an additional "s" and the generic top-level domain ("gTLD") ".com." Such changes are not sufficient to distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). See 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, Morgan Stanley v. Nicenic.com, Inc., FA 1368093 (Forum Mar. 5, 2011) (finding <ms-ae-fund.com> confusingly similar to Complainant's MORGAN STANLEY mark; "Previous panels have concluded that where a disputed domain name contains a common abbreviation of a mark, confusing similarity exists"); see also Lonza Ltd. v. Isabel Rodriguez Negron, FA 1904285 (Forum Aug. 11, 2020) (finding the domain name <ilonza.com> confusingly similar to Complainant's LONZA mark); see also Brooks Sports, Inc. v. chen jiajin, FA 1930406 (Forum March 30, 2021) (finding that "adding random letters and a gTLD…fails to sufficiently distinguish a disputed domain name"). 

 

Further, the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Jurisprudential Overview 3.0") states under 1.7: "In specific limited instances, … the broader case context such as website content trading off the complainant's reputation … may support a finding of confusing similarity." In the instant case, the disputed domain name is used specifically to trade off Complainant's reputation, because it is used to pass off as Complainant in emails in furtherance of a fraudulent phishing scheme. Such use provides further justification for a finding of confusing similarity to Complainant's mark.

 

For all the above reasons, 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 can support a finding that a respondent is not commonly known by the disputed domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA 1574905 (Forum Sept. 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.). Here, the WHOIS information lists "Jordan Brandford" as the registrant. Accordingly, the Panel finds that Respondent is not commonly known by the disputed domain name.

 

The disputed domain name does not resolve to an active web site. Prior panels have held that a respondent's failure to make any active use of a domain name does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name). For this reason, the Panel finds that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).

 

Complainant presents evidence showing that Respondent used the disputed domain name in furtherance of a fraudulent email phishing scheme. Specifically, on September 5, 2023, an email was sent by Respondent to one of Complainant's event vendors. The email, purportedly sent on behalf of one of complainant's controllers in its accounting department, and further cc'ing two other employees of Complainant, requested payment for an outstanding invoice. Such solicitation resulted in Complainant's vendor wiring funds to Respondent. When Complainant reached out to the vendor for actual payment, the vendor indicated that such had already paid. This resulted in Complainant and the vendor discovering that the email addresses included the "s" at the end and were thus fraudulent. Previous panels have determined that a respondent's attempt to phish is not a bona fide offering of goods or services or 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 DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) ("Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use."). 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).

 

For all the above reasons, the Panel finds that Respondent lacks 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 already noted, Respondent used the disputed domain name in furtherance of a fraudulent email phishing scheme. Previous panels have determined that a respondent's attempt to pass itself off as a complainant and to induce fund transfers constitute bad faith use in the sense of the Policy. See 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 used using the disputed domain name in bad faith per 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 Complainant's actual physical address and the URL of its legitimate website. 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 Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) ("Respondent is using the domain name at issue to resolve to a website at which Complainant's trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant's business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy."). 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).

 

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 <okstatefairs.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Richard Hill, Panelist

Dated: January 3, 2024