DECISION

 

Keypath Education Holdings, LLC v. harlem cuppel

Claim Number: FA2312002075086

 

PARTIES

Complainant is Keypath Education Holdings, LLC ("Complainant"), represented by Rachel L. Bender of Barack Ferrazzano Kirschbaum & Nagelberg LLC, Illinois, USA. Respondent is harlem cuppel ("Respondent"), United Kingdom.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <keypatheduu.com>, registered with Metaregistrar BV.

 

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 December 13, 2023; Forum received payment on December 13, 2023.

 

On December 14, 2023, Metaregistrar BV confirmed by e-mail to Forum that the <keypatheduu.com> domain name is registered with Metaregistrar BV and that Respondent is the current registrant of the name. Metaregistrar BV has verified that Respondent is bound by the Metaregistrar BV 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 14, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 3, 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@keypatheduu.com. Also on December 14, 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 5, 2024, 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 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 is an online program management service provider that partners with universities across the globe for the design, development, launch and management of online educational programs. Its services are provided under the trademarks KEYPATH and KEYPATH EDUCATION and it uses the domain name <keypathedu.com> in connection with its website and operations. Complainant owns a number of registrations for its mark at the United States Patent and Trademark Office (e.g., Reg. No. 5018879 registered on August 9, 2016). Respondent's <keypatheduu.com> domain name is confusingly similar to Complainant's marks as it incorporates the entirety of the KEYPATH mark and adds the term "edu" plus an extra letter "u" and the ".com" TLD.

 

Respondent has no rights or legitimate interests in the disputed domain name as it has used it for a phishing scheme to impersonate Complainant and deceive its partners. The domain name does not resolve to any website content.

 

The disputed domain name was registered and is used in bad faith based on Respondent's perpetration of the above-mentioned phishing scheme.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

-       Complainant owns rights to the KEYPATH and KEYPATH EDUCATION marks and the <keypatheduu.com> domain name is confusingly similar to the marks;

-       Respondent is not commonly known by the disputed domain name and its perpetuation of a phishing scheme indicates that it is not making a bona fide offering of goods or services and that it is not making a legitimate noncommercial or fair use; and

-       The disputed domain name was registered and is used in bad faith based on Respondent's impersonation of Complainant through 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

Complainant claims rights in the KEYPATH and KEYPATH EDUCATION marks through numerous trademark registrations with the United States Patent and Trademark Office ("USPTO"). Registration of a mark with the USPTO is a valid showing of rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) ("Complainant's ownership of a USPTO registration for DIRECTV demonstrates its rights in such mark for the purposes of Policy ¶ 4(a)(i).") Complainant provides screenshots from the USPTO website as evidence of its registration of the asserted marks. Based on this the Panel finds that Complainant has demonstrated rights in the KEYPATH and KEYPATH EDUCATION marks under Policy ¶ 4(a)(i).

 

Next, Complainant argues that the <keypatheduu.com> domain name is confusingly similar to its marks since it uses the entire KEYPATH mark, simply adding the generic or descriptive term "edu" and an additional letter "u", as well as the ".com" gTLD. When a disputed domain name wholly incorporates a complainant's mark, Panels typically find that the addition of generic or descriptive terms is insufficient to distinguish the domain name from the mark. See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) ("[T]he fact that a domain name wholly incorporates a Complainant's registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks"). Similarly, gTLDs are usually irrelevant for purposes of Policy ¶ 4(a)(i) analysis. See Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018) ("A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.") Complainant's KEYPATH mark is immediately recognizable in the disputed domain name and the added term "edu" is an abbreviation of the generic word "education". Further, addition of the extra letter "u" and the ".com" gTLD to the mark do not reduce the prominence of Complainant's marks in the disputed domain name. As such, the Panel finds that the disputed domain name is confusingly similar to the marks under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names 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 names and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests").

 

Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain name as Respondent is not commonly known by the domain name. It is widely accepted that WHOIS information can be used to help determine whether a respondent is commonly known by a disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Timothy Mays aka Linda Haley aka Edith Barberdi, FA 1617061 (Forum June 9, 2015) (concluding that the respondent was not commonly known by the <amazondevice.org>, <amazondevices.org> and <buyamazondevices.com> domain names under Policy ¶ 4(c)(ii), as the pertinent WHOIS information identified "Timothy Mays", "Linda Haley", and "Edith Barberdi" as the respective registrants). Here, the WHOIS information for the disputed domain name, as verified to Forum by the concerned Registrar, identifies the Registrant as "harlem cuppel". As Respondent has filed no Response or made any other submission in this case, there is no evidence to suggest that it is known otherwise. Thus, the Panel finds no ground upon which to conclude that Respondent is commonly known by the disputed domain name per Policy ¶ 4(c)(ii).

 

Next, Complainant notes that the disputed domain name does not resolve to any website content and argues that Respondent has used the disputed domain name to send emails that impersonate a Keypath employee in an attempt to defraud the Complainant's business partners.

 

A Respondent failing to make use of a confusingly similar domain name in relation to a website typically indicates the lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Kohler Co. v xi long chen, FA 1737910 (Forum Aug. 4, 2017) ("Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain.  Respondent's <kohler-corporation.com> resolves to an inactive webpage displaying the message 'website coming soon!'"). See also Activision Blizzard, Inc. / Activision Publishing, Inc. / Blizzard Entertainment, Inc. v. Cimpress Schweiz GmbH, FA 1737429 (Forum Aug. 3, 2017) ("Complainant insists that Respondent has made no demonstrable preparations to use the disputed domain name. When Respondent is not using the disputed domain name in connection with an active website, the Panel may find that Respondent is not using the disputed domain name for a bona fide offering of goods or services… As Respondent has not provided a response to this action, Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.") Here, the disputed domain does not resolve to any web content.

 

Further, using a confusingly similar domain name to impersonate an employee of a complainant in an attempt to defraud its customers, vendors, or other business partners is not a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Goodwin Procter LLP v. GAYLE FANDETTI, FA 1738231 (Forum Aug. 8, 2017) (Where "Respondent has used the name to pass themselves off as an employee of the Complainant in an attempt to commit fraud by redirecting a legitimate wire of funds", the Panel concluded that "it cannot have been registered for a legitimate purpose.") Here, Complainant submits copies of phishing emails that the Respondent sent using an address which incorporates the disputed domain name. These were sent to one of the Complainant's business partners and Respondent poses as an "Account Manager" and state that "We have recently made changes to our banking account, and we kindly request that all payments be made to our updated account listed on the attached invoice 100339". The emails use a signature block that displays the name "Keypath Education" as well as the name and postal address of what is claimed to be one of Complainant's employees. Attached to one of the emails is an invoice that is a copy of Complainant's standard invoice format, including use of its graphic KEYPATH EDUCATION logo. Complainant makes the assertion that this email was used by Respondent in an attempt to defraud Complainant's business partner and Respondent has not denied this.

 

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 fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name per Policy ¶¶ 4(c)(i) or (iii).

 

Registration and Use in Bad Faith

Although not addressed in the Complaint, a foundational question under ¶ 4(a)(iii) is whether or not Respondent had knowledge of Complainant's rights in its ITW mark at the time it registered the <keypatheduu.com> domain name. Some attribution of knowledge of a complainant's trademark, whether actual, constructive, or based upon a conclusion that a respondent should have known of the mark, is inherently prerequisite to a finding of bad faith under the Policy. See Domain Name Arbitration, 4.02-C (Gerald M. Levine, Legal Corner Press, 2nd ed. 2019) ("Knowledge and Targeting Are Prerequisites to Finding Bad Faith Registration"); USA Video Interactive Corporation v. B.G. Enterprises, D2000-1052 (WIPO Dec. 13, 2000) (claim denied where "Respondent registered and used the domain name without knowledge of Complainant for a bona fide commercial purpose.") Instructive on this point is the use to which Respondent has placed the <keypatheduu.com> domain name to impersonate Complainant and operate a phishing scheme. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) ("the Panel here finds actual knowledge through the name used for the domain and the use made of it.") Based on the use of Complainant's mark in phishing emails and its impersonation of one of Complainant's employees, the Panel finds that Respondent had prior knowledge of the KEYPATH and KEYPATH EDUCATION marks at the time that it registered the disputed domain name and that this was done in bad faith.

 

Next, Complainant asserts that Respondent registered and is using the disputed domain name in bad faith through its use of an email phishing scheme. Using a confusingly similar domain name to impersonate an employee of a complainant as part of a phishing scheme strongly signals the existence of bad faith per Policy ¶¶ 4(b)(iii) and/or (iv). See 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)). See also EOG Resources, Inc. v. Host Master / 1337 Services LLC, FA 2065425 (Forum Nov. 8, 2023) ("Respondent is using the Disputed Domain Name for the purposes of sending fraudulent emails purporting to impersonate Complainant and one of its named senior employees, for the purposes of phishing allows this Panel to find that the Disputed Domain Name is being used in bad faith.") Here, Complainant claims that Respondent used the disputed domain name to pose as one of the Complainant's Account Managers in an attempt to trick the Complainant's business partner into making deposits into an unknown bank account. The phishing emails submitted into evidence shows Respondent using an email address formed on the <keypatheduu.com> domain name and a signature block which displays Complainant's company name and which provides the name and contact information for one of Complainant's employees. The attachment is a counterfeit version of one of Complainant's typical invoices. This supports Complainant's claim that Respondent is engaged in a phishing scheme and this conclusion is reinforced by Respondent seeking to mimic Complainant's own <keypathedu.com> domain name. As Respondent has not participated in this case it has offered no alternative explanation for its actions. Therefore, the panel finds that Respondent registered and uses the <keypatheduu.com> domain name to disrupt and compete with Complainant's business and to seek commercial gain based upon a likelihood of confusion with the KEYPATH and KEYPATH EDUCATION marks in bad faith per Policy ¶¶ 4(b)(iii) and (iv).

 

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

 

 

 

Steven M. Levy, Esq., Panelist

Dated: January 7, 2024