DECISION

 

Cornerstone Building Brands, Inc. and NCI Group, Inc. v. sandra drake / cornerstone-bb

Claim Number: FA2312002076381

 

PARTIES

Complainant is Cornerstone Building Brands, Inc. and NCI Group, Inc. ("Complainant"), represented by Kevin M. Bovard of Baker & Hostetler LLP, Pennsylvania, USA. Respondent is sandra drake / cornerstone-bb ("Respondent"), Canada.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <cornerstona-bb.com> ("Domain Name"), registered with Squarespace Domains LLC.

 

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.

 

Nicholas J.T. Smith as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on December 22, 2023; Forum received payment on December 22, 2023.

 

On December 24, 2023, Squarespace Domains LLC confirmed by e-mail to Forum that the <cornerstona-bb.com> domain name is registered with Squarespace Domains LLC and that Respondent is the current registrant of the name. Squarespace Domains LLC has verified that Respondent is bound by the Squarespace Domains 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 January 3, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 23, 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@cornerstona-bb.com. Also on January 3, 2024, 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 24, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Nicholas J.T. Smith 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.

 

PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS

In the instant proceedings, there are two Complainants.  Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") provides that "[a]ny person or entity may initiate an administrative proceeding by submitting a complaint."  The Forum's Supplemental Rule 1(e) defines "The Party Initiating a Complaint Concerning a Domain Name Registration" as a "single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint."

 

Previous panels have interpreted Forum's Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other.  For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int'l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006), the panel stated:

 

It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.

 

In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names.  Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark. 

 

The Panel has reviewed the Complaint and is satisfied that that Cornerstone Building Brands, Inc. is the parent company of NCI Group, Inc. and thus they are affiliated entities.  This is sufficient to establish a sufficient nexus or link between the Complainants such that they should be treated as a single entity in this proceeding referred to in the singular, as "Complainant".

 

PRELIMINARY ISSUE:  FALSE REGISTRANT INFORMATION

Complainant alleges that the WHOIS information listed for the disputed domain name is false because there is no company registered in Canada in the name of the Respondent.  Complainant requests the redaction of the named registrant of the Domain Name, as provided for by Paragraph 4(j) of the Policy.  Complainant made the request in its Complaint, as required by Forum Supplemental Rule 15(b). 

 

While the Panel accepts the uncontested evidence that the company registrant information provided by the Respondent is false, as discussed later in this decision, the mere fact that that an entity is using false registrant information is not a sufficient basis to redact the Respondent's name. In certain limited cases, to avoid the association of an adverse UDRP decision with a particular individual who has clearly been the victim of identity theft, a panel has ordered redaction. See Capital One Financial Corp. v. [Unknown Holder], Case No. FA 1684338 (Forum Aug. 23, 2016) ("Respondent contends that it has been the victim of identity theft.  Specifically, on July 28, Forum received email communications from Respondent stating that 'Someone has apparently used my name without my knowledge or permission'... The information supplied in that e-mail communication makes the claim of identity theft plausible, and Complainant does not contest this assertion.") 

 

In the present case there is no evidence before the Panel that the individual named is a victim of identity theft or is unconnected to the Domain Name. Accordingly, this Panel finds that it is not in the interests of justice that the identity of the Respondent named in the Complaint be redacted from this decision.

 

RELIEF SOUGHT

Complainant requests that the Domain Name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant provides a large range of building products across North America.  Complainant asserts rights in the CORNERSTONE BUILDING BRANDS mark based upon its registration of an International Registration for the CORNERSTONE BUILDING BRANDS mark (e.g., Reg. No. 1521215 registered September 20, 2019), designating jurisdictions including the European Union, Japan and United Kingdom.  Respondent's <cornerstona-bb.com> domain name is identical or confusingly similar to Complainant's CORNERSTONE BUILDING BRANDS mark as it merely misspells the "cornerstone" element and abbreviates the "building brands" element and adds and the ".com" generic top-level-domain ("gTLD").

 

Respondent lacks rights or legitimate interests in the <cornerstona-bb.com> domain name. Respondent is not commonly known by the Domain Name, nor has Respondent been authorized by Complainant to use the CORNERSTONE BUILDING BRANDS mark.  Respondent has not used the Domain Name in connection with a bona fide offering of goods or services as Respondent uses the Domain Name to create emails impersonating Complainant's employees for fraudulent purposes. 

 

Respondent registered and uses the <cornerstona-bb.com> domain name in bad faith.  Respondent disrupts Complainant's business as Respondent registered the Domain Name to create emails that impersonate Complainant's employees for the purpose of phishing and fraud.  Finally, Respondent had actual knowledge of Complainant's rights to the CORNERSTONE BUILDING BRANDS mark prior to registering the Domain Name given its use as an e-mail address for e-mails where Respondent passes off as Complainant. 

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant holds trademark rights for the CORNERSTONE BUILDING BRANDS mark.  The Domain Name is confusingly similar to Complainant's CORNERSTONE BUILDING BRANDS mark.  Complainant has established that Respondent lacks rights or legitimate interests in the use of the Domain Name and that Respondent registered and has used the Domain Name 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 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 has rights in the CORNERSTONE BUILDING BRANDS mark under Policy ¶ 4(a)(i) through its registration of an International Registration for the CORNERSTONE BUILDING BRANDS mark (e.g., Reg. No. 1521215 registered September 20, 2019), designating jurisdictions including the European Union, Japan and United Kingdom.  Registration with various national trademark authorities can sufficiently establish rights in a mark under Policy ¶ 4(a)(i).  See Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a national trademark authority).

 

The Panel finds that the Domain Name is confusingly similar to the CORNERSTONE BUILDING BRANDS mark since it incorporates a minor misspelling of the CORNERSTONE element (replacing the "e" with an "a") and abbreviates the BUILDING BRANDS element ("bb") and adds the ".com" gTLD.  These changes are insufficient to negate confusing similarity between a domain name and a mark under Policy ¶ 4(a)(i).  See SEMCO Prods., LLC v. dmg world media (uk) ltd, FA 913881 (Forum Apr. 9, 2007) (finding that the <atlhomeshow.com> domain name was confusingly similar to the complainant's ATLANTA HOME SHOW mark, as "atl" was a common abbreviation for the city of Atlanta); See also Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018) ("The [<morganstonley.com> and <morganstainley.com>] Domain Names are confusingly similar to Complainant's marks, as they fully incorporate the MORGAN STANLEY mark, varying it only by subtle misspellings, omitting a space between the words, and adding the generic top-level domain ("gTLD") '.com.'"); see also Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) ("A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.").

 

In support of the above conclusion the Panel notes that section 1.15 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition states that "In some instances, panels have however taken note of the content of the website associated with a domain name to confirm confusing similarity whereby it appears prima facie that the respondent seeks to target a trademark through the disputed domain name."  In the present case, by reason of the facts outlined under the elements below, it is clear that Respondent has sought to target and indeed pass itself off as Complainant through the use of the Domain Name.  The Panel finds that the intention of Respondent to mislead Internet users into thinking it is Complainant or connected with Complainant confirms the confusingly similar nature of the Domain Name.

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name.  In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) ("Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.").  The Panel holds that Complainant has made out a prima facie case.

 

Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the CORNERSTONE BUILDING BRANDS mark.  Respondent has no relationship, affiliation, connection, endorsement or association with Complainant.  WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged.  See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA 1613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists "Dale Anderson" as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA 1621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where "Privacy Service" was listed as the registrant of the disputed domain name).  

 

The WHOIS lists "sandra drake / cornerstone-bb" as registrant of record.  However, there is no affirmative evidence that the Respondent is actually commonly known under the cornerstone-bb name as opposed to simply registering the Domain Name under a false name for the purpose of asserting rights or legitimate interests.  There is also evidence before the Panel, discussed earlier in the decision, that here is no company registered in Canada, the purported location of Respondent, under the cornerstone-bb name.  Even if a respondent appears from the WHOIS record to be known by the domain name, without additional affirmative evidence, it can be concluded that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).  See Google Inc. v. S S / Google International, FA 1625742 (Forum Aug. 4, 2015) ("Respondent did identify itself as 'Google International' in connection with its registration of the Disputed Domain Name, and this is reflected in the WHOIS information.  However, Respondent has not provided affirmative evidence from which the Panel can conclude that Respondent was commonly known by the Disputed Domain Name before Respondent's registration thereof."); see also Hewlett-Packard Co. v. HP Supplies, FA 282387 (Forum July 22, 2004) ("The Panel finds, because of the prominence of the HP mark, that Respondent's registration under the 'HP Supplies' name does not establish that Respondent is commonly known by the <hpsupplies.com> domain name.").  Given the lack of evidence that the Respondent is actually known under a name corresponding to the Domain Name, and Complainant's unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).

 

The Domain Name is presently inactive which by itself does not show a bona fide offering of goods and services.  Complainant alleges, and provides evidence supporting its allegations, that prior to the commencement of the proceeding the Domain Name was used for creating an e-mail address used by Respondent as part of a scheme where Respondent would send e-mails third parties directing payment to accounts otherwise unconnected to Complainant.  Such conduct is best characterized as "phishing".  Respondent's use of the Domain Name to impersonate Complainant for the purpose of engaging in a phishing scheme to acquire personal information 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 Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) ("Respondent uses the at-issue domain name to pose as Complainant's CEO by means of email addresses at the confusingly similar domain name in an attempt to determine Complainant's ability to process a transfer.  Using the domain name in this manner is neither a bona fide offering of goods and services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy  ¶ 4(c)(iii)"); see also Caterpillar Inc. v. ruth weinstein, FA 1770352 (Forum March 7, 2018) ("Use of a disputed domain name in an attempt to pass itself off as a complainant and to conduct a phishing scheme is indicative of a failure to use said domain name in connection with a bona fide offer of goods and services per Policy ¶ 4(c)(i) or a legitimate noncommercial or otherwise fair use per Policy ¶ 4(c)(iii).");

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

The Panel finds on the balance of probabilities that at the time Respondent registered the Domain Name, September 27, 2023, Respondent had actual knowledge of Complainant's CORNERSTONE BUILDING BRANDS mark.  It would be implausible for an entity to register the domain name and use it for e-mails impersonating Complainant absent knowledge of Complainant and its reputation in the CORNERSTONE BUILDING BRANDS mark.  In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).

 

The Panel finds that Respondent registered and uses the Domain Name in bad faith as Respondent uses or has used the Domain Name to impersonate Complainant in furtherance of a phishing scheme.  Use of a disputed domain name to impersonate a complainant in furtherance of a phishing scheme is evidence of bad faith per Policy ¶ 4(a)(iii).  See Google Inc. v. Domain Admin / Whois Privacy Corp., FA 1622862 (Forum Aug. 10, 2015) (finding that the respondent's apparent use of the disputed domain name in furtherance of a 'phishing' scheme further established its bad faith registration and use of the disputed domain name under Policy ¶ 4(a)(iii)).  Accordingly, the Panel finds that Respondent registered and uses the Domain Name in bad faith pursuant to Policy ¶ 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 <cornerstona-bb.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Nicholas J.T. Smith, Panelist

Dated: January 24, 2024