DECISION

 

DataGrail, Inc. v. Jill katz

Claim Number: FA2401002079008

 

PARTIES

Complainant is DataGrail, Inc. ("Complainant"), represented by Casey E. Wright of Barnes & Thornburg LLP, Indiana, USA. Respondent is Jill katz ("Respondent"), California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <datagrail.net> ('the Domain Name'), registered with NameSilo, 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.

 

Dawn Osborne as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on January 12, 2024; Forum received payment on January 12, 2024.

 

On January 12, 2024, NameSilo, LLC confirmed by e-mail to Forum that the <datagrail.net> Domain Name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 15, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 5, 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@datagrail.net. Also on January 15, 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 February 6, 2024 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 is the owner of the mark DATAGRAIL registered, inter alia, in the USA for data privacy related services with first use recorded as 2018.

 

The Domain Name registered in 2023 is identical to the Complainant's trade mark for the purposes of the Policy including it in its entirety and adding only the gTLD .net.

 

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 points to the Complainant's own web site and has been used for fraudulent e mails purporting to come from the Complainant that have sent Internet users fake employment related documents using the Complainant's mark and its logo for the purposes of phishing which is not a bona fide offering of goods or services or a legitimate non commercial fair use. It is registration and use in bad faith deceiving Internet users and disrupting the Complainant's business in full knowledge of the Complainant and its rights for fraudulent reasons. 

 

The Respondent has falsely used the Complainant's address details for the WhoIs database to further perpetuate its impersonation of the Complainant in a further act of bad faith.  

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The Complainant is the owner of the mark DATAGRAIL registered, inter alia, in the USA for data privacy related services with first use recorded as 2018.

 

The Domain Name registered in 2023 points to the Complainant's own web site and has been used for fraudulent e mails purporting to come from the Complainant that have sent Internet users fake employment related documents using the Complainant's mark and its logo. The Respondent has falsely used the Complainant's address details for the WhoIs database details.

 

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 DATAGRAIL mark (registered, inter alia in the USA for data privacy related services with first use recorded as 2018) and the gTLD .net.

 

A gTLD does not serve to distinguish a domain name from a 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 identical for the purpose of the Policy to a mark in which the Complainant has rights.

 

Rights or Legitimate Interests

The Complainant has not authorised the use of its mark. There is no evidence to suggest the Respondent 'Jill Katz' is commonly known by the 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 details and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).

 

The Domain Name points to the site of the Complainant itself. The Panel finds this use does not give rise to rights or a legitimate interest. See Direct Line Ins. Plc v Low-cost-domain, FA 1337658 (Forum Sept 8, 2010) (pointing to Complainant's own site is not a bona fide offering of goods or services or a legitimate non commercial fair use).

 

The Domain Name has also been used for phishing emails containing documents headed with the Complainant's mark and logo. See DaVita Inc. v Cynthia Rochelo FA 1738034 (Forum July 20, 2017) (finding that "Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate non commercial or fair use."). 

 

The Respondent has not answered this Complaint or rebutted the prima facie case evidenced by the Complainant as set out above.

 

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

 

Registration and Use in Bad Faith

Deceptive documents headed with the Complainant's mark and logo have been used in a phishing email scheme using the Domain Name. The redirecting of Internet users to the Complainant's own web site and false use of the Complainant's address in the Who Is details of the Domain Name also demonstrates impersonation of the Complainant for phishing purposes. Phishing is evidence of bad faith registration and use per se within the Policy 4(a)(iii) See Klabzuba Oil & Gas, Inc v LAKHPAT SINGH BHANDARI, FA 1625750 (Forum July 17, 2015). 

 

The Respondent has falsely used the Complainant's address in the WhoIs database details. Providing false information at the time of a domain name's registration may be evidence of respondent's bad faith registration and use under Policy 4(a)(iii). See Farouk Systems, Inc. v. Jack King / SLB, FA 1618704 (Forum June 19, 2015) (finding bad faith registration and use pursuant to Policy ¶ 4(a)(iii) where the respondent had provided false contact information when registering the disputed domain name). Here in the context of phishing providing false address details seems clearly in bad faith.

 

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 <datagrail.net> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Dawn Osborne, Panelist

Dated: February 6, 2024