DECISION

 

Actabl Holdings, LLC v. Agg Benn / Actabl

Claim Number: FA2403002088977

 

PARTIES

Complainant is Actabl Holdings, LLC ("Complainant"), represented by Leonard Searcy of Shook, Hardy & Bacon LLP, Missouri, USA. Respondent is Agg Benn / Actabl ("Respondent"), Florida, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <actablcareers.com>, registered with HOSTINGER operations, UAB.

 

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 March 18, 2024; Forum received payment on March 18, 2024.

 

On March 20, 2024, HOSTINGER operations, UAB confirmed by e-mail to Forum that the <actablcareers.com> domain name is registered with HOSTINGER operations, UAB and that Respondent is the current registrant of the name. HOSTINGER operations, UAB has verified that Respondent is bound by the HOSTINGER operations, UAB 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 March 22, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 11, 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@actablcareers.com. Also on March 22, 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 April 12, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Ho-Hyun Nahm, 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

i) Complainant develops, manufactures, markets, and sells business software products and services in the hospitality industry. In the course of its business, Complainant has acquired extensive rights in trade names, trademarks, and service marks and owns an allowed pending trademark (Serial No. 97375515) that was applied for with the United States Patent and Trademark Office ("USPTO") since April 21, 2022 for ACTABL. Complainant has been using the ACTABL mark continuously in commerce since June 28, 2022 and has acquired significant goodwill, widespread public recognition, and fame as a means by which Complainant and its software products and services are known and identified. The disputed domain name is confusingly similar to Complainant's ACTABL mark because it contains the mark in its entirety, merely adding the generic term "careers" and the ".com" generic top-level domain ("gTLD").

 

ii) Respondent lacks rights and legitimate interests in the disputed domain name. Complainant never authorized or licensed Respondent to use its ACTABL mark in the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use. Respondent is attempting to impersonate a representative of Complainant to scam third-party individuals by using the disputed domain name and the name of a representative of Complainant as an email address in correspondence regarding potential employment by Complainant. There is an actual case of victim due to Respondent's impersonation activities.

 

iii) Respondent registered and uses the disputed domain name in bad faith. Respondent uses the disputed domain name to defraud individuals with fake offers of employment as part of a phishing scheme designed to obtain personal information. Respondent had actual knowledge of Complainant's rights in its ACTABL mark when Respondent registered the disputed domain name. Respondent's failure to make active use of the disputed domain name and instead using the domain name to perpetrate an illegal scheme constitutes passive holding, which is evidence of bad faith.

 

B. Respondent

Respondent did not submit a Response in this proceeding.

 

FINDINGS

1. The disputed domain name was registered on February 2, 2024.

        

2. Complainant owns an allowed pending trademark application number 97375515 for the mark ACTABL that was applied for with the USPTO on April 21, 2022.

 

3.  Complainant has established common law rights in the ACTABL mark dating back to April 21, 2022.

 

4. Respondent is attempting to impersonate a representative of Complainant to scam third-party individuals by using the disputed domain name and the name of a representative of Complainant as an email address in correspondence regarding potential employment by Complainant.

 

5. There is an actual case of victim due to Respondent's impersonation activities.

 

6. The disputed domain name remains inactive.

 

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 asserts common law rights in the ACTABL mark with priority rights of April 21, 2022. The Panel finds that Complainant owns an allowed U.S. trademark application no. 97375515 for the mark ACTABL that was applied for with the USPTO on April 21, 2022. Complainant provides a copy of the Notice of Allowance from the USPTO. The Panel further finds that Complainant has attained a consumer recognition in the industry in connection with the ACTABL mark by virtue of Complainant's considerable efforts advertising and promoting the business software on its platform under the ACTABL mark since June 2022. The Panel notes that on January 12, 2023, within six months of launch, ACTABL was awarded eight HotelTechAwards, including first place for Labor Management Software and Concierge Software. On January 11, 2024 ACTABL was again awarded eight HotelTechAwards with ACTABL earning a category winner or finalist award in the category for each award. Complainant states that the HotelTechAwards are often called "the Grammys of Hotel Tech," and winners are selected from more than 200 top technology products worldwide. The HotelTechAwards are the industry's only data-driven awards platform, with winners determined not by a handful of judges or popularity votes but by product reviews from a global community of verified hotel technology users across more than 120 countries. Complainant provides copies of articles regarding awards won by ACTABL in 2023 and 2024.

 

The Panel notes that to establish unregistered or common law trademark rights for purposes of the Policy, Complainant must show that its mark has become a distinctive identifier which consumers associate with Complainant's goods and/or services. The Panel is of the view that a pending trademark application would not by itself establish trademark rights within the meaning of UDRP paragraph 4(a)(i). The Panel finds that Complainant has established common law rights in the ACTABL with priority rights of April 21, 2022 under Policy ¶ 4(a)(i) on the grounds that i) the filing of an intent-to-use trademark application with the USPTO, subject to the mark being registered, may constitute constructive use of the mark and confer priority rights as of the filing date under United States trademark law; ii) based on Complainant's considerable efforts advertising and promoting the business software on its platform under the ACTABL mark, which was acknowledged by winning the HotelTechAwards where winners are selected from more than 200 top technology products worldwide, the public is likely to associate the mark ACTABL with Complainant and Complainant's products; and iii) Complainant's mark is rather unique and distinctive, and thus it does not require higher degree of consumer recognition unlike a generic or descriptive mark. See Universal Remanufacturing Co. LLC d/b/a Phoenix Chassis v. Super Privacy Service LTD c/o Dynadot and Domain Sales (expired domain caught by auction winner c/o Dynadot), D2022-3700 (WIPO Dec. 23, 2022) (finding that under United States trademark law, the filing of an intent-to-use trademark application, subject to the mark being registered, constitutes constructive use of the mark and confers priority rights as of the date of the application's filing date. This mark has not yet been registered, and hence the "intent to use" application, by itself, may not be sufficient under the UDRP to recognize Complainant's trademark rights on that basis. Although the evidence presented is thin, the Panel finds it sufficient to recognize Complainant's common law trademark rights in PHOENIX CHASSIS in these circumstances, especially given the relatively low "standing" threshold for trademark rights under the first element of the UDRP.).

 

Next, Complainant argues that the disputed domain name is confusingly similar to Complainant's ACTABL mark because it incorporates the mark in its entirety, merely adding the generic term "careers" and the ".com" generic top-level domain ("gTLD"). An addition to a complainant's mark such as a generic and/or descriptive term, and a gTLD does not negate any confusing similarity between a disputed domain name and mark under Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant's entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). Therefore, the Panel finds that the disputed domain name is confusingly similar to the ACTABL 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 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 asserts that Respondent is not commonly known by the disputed domain name nor authorized to use Complainant's mark. The disputed domain name is not the name of Respondent or in any other way identified with or related to a legitimate interest of Respondent. Complainant has not licensed or otherwise permitted Respondent to use any of Complainant's marks or to apply for or use any domain name incorporating any of Complainant's marks. The Panel finds that there is nothing in the records to suggest that Respondent is commonly known by the disputed domain name.

 

Complainant further contends Respondent is not using the disputed domain name for any bona fide offering of goods or services, nor any noncommercial or fair use. Respondent has used the disputed domain name to engage in a fraudulent scam whereby it impersonates a representative of Complainant in an effort to scam customers by setting up fake employment. Respondent has sent emails emanating from the email address formulated by the disputed domain name and the name of a representative of Complainant, to attempt to set up fake job interviews with unsuspecting individuals. Complainant provides copies of screenshots received from victim showing Respondent's impersonation of Complainant and solicitation of the victim's personal information.

 

The Panel finds that using the disputed domain name to pass off as a representative of Complainant for the purpose of furthering a phishing campaign does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See FirstEnergy Corp. v. kelly Rowland Claim Number, FA 2062582 (Forum Oct. 18, 2023) ("Complainant provides copies of emails showing that Respondent has used the disputed domain name in connection with an email address to impersonate an employee of Complainant soliciting Complainant's potential customers for money. Using a disputed domain name to pass off as a complainant's employee for the purpose of furthering a phishing campaign may not be 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 is attempting to impersonate a representative of Complainant in connection with a phishing scheme in order to illegally profit on Complainant's goodwill.   The Panel recalls that Complainant provides copies of screenshots received from victim showing Respondent's impersonation of Complainant and solicitation of the victim's personal information. Registration of a confusingly similar domain name with the intent to disrupt business by furthering an email phishing campaign can evince bad faith registration and use per Policy ¶ 4(b)(iv). See FirstEnergy Corp. v. kelly Rowland Claim Number, FA 2062582 (Forum Oct. 18, 2023) ("Registration of a confusingly similar domain name with the intent to disrupt business by furthering an email phishing campaign can evince bad faith registration and use per Policy ¶ 4(b)(iv).  Respondent has used the disputed domain name in connection with an email address to impersonate a member of Complainant's staff for purposes of soliciting Complainant's potential customers for money. Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iv)."). Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iv).

 

Next, Complainant argues Respondent registered the disputed domain name with actual knowledge of Complainant's rights in the ACTABL mark. While constructive notice is not sufficient to support a bad faith finding, actual knowledge may constitute a bad faith registration. Complainant contends that Respondent had knowledge of Complainant's rights in the mark given the circumstances that (i) Respondent registered the disputed domain name long after Complainant's application for the ACTABL mark and registration of Complainant's <actabl.com> domain name; (ii) Complainant's business is on the Internet and Complainant has customers with which it does business in various physical locations all over the world; (iii) in correspondences with the victims, Respondent provided detailed information of Complainant including the address of Complainant's headquarter in Oldsmar, Florida, the font and color of Complainant's mark as applied for and as used on Complainant's website, and actual job title used by Complainant in job listings; and (iv) Respondent registered the disputed domain name on February 2, 2024 for the purpose of impersonating Complainant in an illegal phishing scheme, and evidently, Respondent contacted a victim on February 2, 2024 (the same day) to perpetrate the phishing scheme using Complainant's mark to offer a position with Complainant's actual job title.

 

The Panel infers, due to the reputation of Complainant's mark and the manner of use of the disputed domain name that Respondent had knowledge of Complainant's rights in the ACTABL 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 <actablcareers.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Ho-Hyun Nahm, Esq., Panelist

Dated: April 14, 2024