DECISION

 

Pendo.io, Inc. v. Jiawei Electronics Development Co., Ltd. / wang ming

Claim Number: FA2401002077664

PARTIES

Complainant is Pendo.io, Inc. ("Complainant"), represented by William B. Cannon of Parker Poe Adams & Bernstein LLP, North Carolina, USA. Respondent is Jiawei Electronics Development Co., Ltd. / wang ming ("Respondent"), Hong Kong.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <pendogrowi.biz>, registered with Dynadot Inc.

 

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.

 

Ho-Hyun Nahm, Esq. as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on January 4, 2024; Forum received payment on January 4, 2024.

 

On January 4, 2024, Dynadot Inc confirmed by e-mail to Forum that the <pendogrowi.biz> domain name is registered with Dynadot Inc and that Respondent is the current registrant of the name. Dynadot Inc has verified that Respondent is bound by the Dynadot 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 January 5, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 25, 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@pendogrowi.biz. Also on January 5, 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 26, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Ho-Hyun Nahm, Esq. as Panelist.

 

On January 27, 2024, the Panel issued a Procedural Order to Complainant to provide a copy of the website to which the disputed domain name resolves because the initially submitted one was not available to download. On January 29, 2024, Complainant submitted an Additional Submission in response to the Panel's Procedural Order.

 

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

i) Complainant is providing its cloud-based computer software services online. Over 10,000 companies in 115 different industries use Complainant's platform. Complainant claims rights in the mark PENDO and formatives thereof through its registration with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 5,441,822, registered April 10, 2018). Complainant has common law rights arising from its extensive and longstanding use of Complainant's mark. The disputed domain name is confusingly similar to Complainant's mark because it wholly incorporates Complainant's mark, merely adds the misspelled generic term "grow" (appearing as "growi") and the ".biz" gTLD.

 

ii) Respondent does not have rights or legitimate interests in the disputed domain name because Complainant has not licensed or authorized Respondent to use the PENDO mark and Respondent is not commonly known by the disputed domain name. Respondent is not affiliated with Complainant in any way. Additionally, Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to impersonate Complainant with a phishing scheme.

 

iii) Respondent registered and uses the disputed domain name in bad faith. Respondent capitalized on the goodwill associated with Complainant's mark for commercial gain. Respondent's use of the domain name for a website displaying the PENDO mark and logo in a manner that impersonates Complainant and mimics the appearance of a legitimate website by passing off as Complainant in furtherance of a phishing scheme demonstrates bad faith registration and use. Respondent had knowledge of Complainant's rights in PENDO mark at the time of registering the disputed domain name. Because the disputed domain name is identical to Complainant's mark PENDO and merely adds the misspelled generic term "growi" and the ".biz" gTLD, any use of the disputed domain name would cause consumer confusion and, and thus Respondent's registration and use of the disputed domain name constitutes bad faith.

 

B. Respondent

Respondent did not submit a Response in this proceeding.

 

FINDINGS

1. Complainant has established rights in the PENDO mark through Complainant's registration of the mark with the USPTO (e.g., Reg. No. 5,441,822, registered April 10, 2018).

 

2. The disputed domain name was registered on November 3, 2023.

 

3. The disputed domain name's resolving webpage mimics Complainant's webpage by using Complainant's mark, logo, and color scheme.

 

4. Respondent uses the disputed domain name in connection with a phishing scheme for consumers' information.

 

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 PENDO mark through its registration with the USPTO (e.g., Reg. No. 5,441,822, registered April 10, 2018). As Complainant has provided evidence of registration with the USPTO, the Panel finds Complainant has established rights in the PENDO mark under Policy ¶ 4(a)(i).

 

Complainant argues that the disputed domain name <pendogrowi.biz> is confusingly similar to Complainant's PENDO mark because it wholly incorporates Complainant's mark and merely adds the misspelled generic term "grow" (appearing as "growi") and the ".biz" gTLD. The Panel agrees and finds that the addition of the misspelled generic term "growi" fails to distinguish the disputed domain name from Complainant's mark per Policy ¶ 4(a)(i). See  E*Trade Financial Holdings, LLC v. hello world, FA2031276 (Forum March 13, 2023) (finding that the addition of the generic term "growth" fails to distinguish the disputed domain name from complainant's registered mark); see also Expedia, Inc. v. Domain Admin / TotalDomain Privacy Ltd, FA2066165 (Forum Nov. 9, 2023) (finding that the addition of "patner," the misspelling of the generic term "partner," "do[es] not escape the realm of confusing similarity under the terms of the Policy"). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant's mark per 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 name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show 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 name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests.").

 

Complainant contends Respondent lacks rights or legitimate interests in the disputed domain name as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized to Respondent any rights in the PENDO mark. When a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). The unmasked WHOIS information for the disputed domain name lists the registrant as "Jiawei Electronics Development Co., Ltd. / wang ming," and nothing in the record suggests that Respondent was authorized to use the PENDO mark. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).

 

Complainant argues that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses the disputed domain name to confuse consumers into believing it is related to or affiliated with Complainant when it is not. The Panel notes that passing off as a complainant does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant's mark and various photographs related to the complainant's business); see also Wolverine World Wide, Inc. v. Fergus Knox, FA 1627751 (Forum Aug. 19, 2015) (finding no bona fide offering of goods or legitimate noncommercial or fair use existed where Respondent used the resolving website to sell products branded with Complainant's MERRELL mark, and were either counterfeit products or legitimate products of Complainant being resold without authorization).

 

Complainant highlights that Respondent's website prominently displays the PENDO mark and mimics Complainant's official website. The Panel finds that the disputed domain name's resolving website impersonates Complainant by displaying its PENDO mark with a phishing scheme to collect personal information from Internet users, and thus Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).

 

The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.

 

Registration and Use in Bad Faith

Complainant contends that Respondent registered and uses the disputed domain name in bad faith because the disputed domain name resolves to a website displaying the PENDO mark in a manner that impersonates Complainant and mimics the appearance of a legitimate website to collect personal information from Internet users.  The Panel is of the view that use of a confusingly similar disputed domain name to attract Internet users in furtherance of a phishing scheme can be evidence of bad faith under Policy ¶  4(b)(iv). See Sumo Group, Inc. v. Anh Duc Vu, FA 1844440 (Forum June 19, 2019) (finding that "Use of a confusingly similar disputed domain name to attract Internet users in furtherance of illegal activity with complainant can be evidence of bad faith under Policy ¶ 4(b)(iv)."); see also 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 Complainant's mark and logo, giving every appearance of being associated or affiliated with Complainant's business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark"). The Panel finds that Respondent uses the dispute domain name to pass itself off as Complainant in furtherance of a fraud and/or phishing scheme to dupe unsuspecting Internet users into providing Respondent their personal identifying information. Therefore, the Panel concludes that the disputed domain name was registered and is being used in bad faith to attract Internet users for commercial gain and in furtherance of a phishing scheme by passing off as Complainant under Policy ¶ 4(b)(iv).

 

Next, Complainant contends that Respondent had knowledge of Complainant prior to registration of the disputed domain name in view of the publicity that Complainant has received over the past decade – as well as the fact that the disputed domain name's resolving webpage mimics Complainant's webpage and phishes for Complainant's customers' information.  The Panel infers, due to the notoriety of Complainant's mark and the manner of use of the disputed domain name that Respondent had knowledge of Complainant's rights in the PENDO mark at the time of registering the disputed domain name, and finds that Respondent registered the disputed domain in 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 <pendogrowi.biz> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Ho-Hyun Nahm, Esq., Panelist

Dated: January 30, 2024