DECISION

 

Agency Within, LLC v. tou tou

Claim Number: FA2501002134459

 

PARTIES

Complainant is Agency Within, LLC ("Complainant"), represented by Maulin V. Shah of Envision IP LLC, North Carolina, USA. Respondent is tou tou ("Respondent"), USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <withinet.com>, <withinhc.com>, <withinae.com> and <withinopo.com>, registered with Gname.Com Pte. Ltd.

 

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.

 

Alan L. Limbury, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on January 9, 2025. Forum received payment on January 9, 2025.

 

On January 12, 2025, Gname.Com Pte. Ltd. confirmed by e-mail to Forum that the <withinet.com>, <withinhc.com>, <withinae.com> and <withinopo.com> domain names are registered with Gname.Com Pte. Ltd. and that Respondent is the current registrant of the names. Gname.Com Pte. Ltd. has verified that Respondent is bound by the Gname.Com Pte. Ltd. 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, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 4, 2025 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent's registrations as technical, administrative, and billing contacts, and to postmaster@withinet.com, postmaster@withinhc.com, postmaster@withinae.com and postmaster@withinopo.com. Also on January 15, 2025, 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 registrations as technical, administrative and billing contacts.

 

Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.

 

On February 5, 2025, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Alan L. Limbury 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 names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant, Agency Within, LLC, founded in 2015 and headquartered in Queens, New York, is a digital marketing firm that operates under the WITHIN trademark and the website "www.within.co".

 

Complainant has rights in the WITHIN and W-logo marks through registrations with the United States Patent and Trademark Office ("USPTO"). Respondent's <withinet.com>, <withinhc.com>, <withinae.com> and <withinopo.com> domain names are confusingly similar to Complainant's WITHIN trademark.

 

Respondent has no rights or legitimate interests in the <withinet.com>, <withinhc.com>, <withinae.com> and <withinopo.com> domain names, each of which currently resolves or previously resolved to a fraudulent login webpage which purports to be an official site of Complainant, prominently displaying Complainant's word trademark in the exact style and font used by Complainant. Respondent also provides a user dashboard that displays Complainant's stylized "W" logo mark. 

 

Respondent is not commonly known by the domain name, is not affiliated with Complainant and Complainant has not authorized Respondent to use its WITHIN trademark, which Respondent uses for a fraudulent business that solicits users for employment as reviewers for products offered on Amazon.com. Respondent's business is a phishing scam that convinces users to send Respondent funds in Bitcoin in exchange for releasing payment for the work performed. The deceptive nature of Respondent's fraudulent business accessed from the domain names indicates that they have been registered for phishing, which cannot be a bona fide or legitimate purpose.

 

Respondent registered the <withinet.com>, <withinhc.com>, <withinae.com> and <withinopo.com> domain names in bad faith with actual knowledge of Complainant's rights in the WITHIN word and W-logo marks and uses them in bad faith by impersonating a customer service representative of Complainant to promote fake employment offers to individuals with the ultimate goal of fraudulently obtaining Bitcoin funds or other payments from these users. Respondent uses the domain names to confuse and mislead Internet users, and Respondent's fraudulent business which utilizes the domain names tarnishes the WITHIN trademark through its phishing activities.

 

B.       Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant has established all the elements entitling it to relief.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted 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 the domain name should be cancelled or transferred:

 

(i)        the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii)        Respondent has no rights or legitimate interests in respect of the domain name; and

(iii)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 as 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 shown that it has rights in the WITHIN and W-logo marks through registrations with the USPTO (WITHIN, Reg. No. 6,222,915 registered on December 15, 2020 and W-logo, Reg. No. 6,968,097 registered on January 31, 2023).

 

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant's trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0 "), section 1.7.

 

The Panel finds Respondent's <withinet.com>, <withinhc.com>, <withinae.com> and <withinopo.com> domain names to be confusingly similar to Complainant's WITHIN mark, only differing by the addition to the mark of the letters "et", "hc", "ae" or "opo" which are insufficient to distinguish any of the domain names from Complainant's mark. The inconsequential ".com" generic top-level domain ("gTLD") may be ignored under this element. See, for example, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.

 

Complainant has established this element.

 

Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by Respondent, shall demonstrate rights to or legitimate interests in the domain names for purposes of paragraph 4(a)(ii) of the Policy, i.e.

 

(i)         before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain names or names corresponding to the domain names in connection with a bona fide offering of goods or services; or

 

(ii)         Respondent (as an individual, business or other organization) has been commonly known by the domain names, even if Respondent has acquired no trademark or service mark rights; or

 

(iii)         Respondent is making a legitimate noncommercial or fair use of the domain names, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.

 

The <withinet.com>, <withinhc.com>, <withinae.com> and <withinopo.com> domain names were all registered on October 14, 2024, several years after Complainant registered its WITHIN mark. They resolve or have resolved to a login page prominently displaying Complainant's WITHIN mark in the style and font used by Complainant, seeking users' contact information, followed by a dashboard page displaying Complainant's W-logo mark. In a chat conversation with a user, Respondent wrote: "The company is WITHIN, a digital SEO company based in Queens New York".

 

These circumstances, together with Complainant's assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain names on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the <withinet.com>, <withinhc.com>, <withinae.com> and <withinopo.com> domain names. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014). Respondent has made no attempt to do so.

 

The Panel finds that Respondent has no rights or legitimate interests in respect of the domain names.

 

Complainant has established this element.

 

Registration and Use in Bad Faith

The four illustrative circumstances set out in paragraph 4(b) of the Policy as evidence of the registration and use of a domain name in bad faith for purposes of paragraph 4(a)(iii) are not exclusive.

 

The circumstances set out above in relation to the second element satisfy the Panel that Respondent was fully aware of Complainant's WITHIN and W-logo marks when Respondent registered the <withinet.com>, <withinhc.com>, <withinae.com> and <withinopo.com> domain names and that Respondent registered and is using the domain names in bad faith for the purpose of fraudulently phishing for bitcoin from Internet users seeking employment with Complainant.

 

Complainant has established this element.

 

DECISION

Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <withinet.com>, <withinhc.com>, <withinae.com> and <withinopo.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

Alan L. Limbury, Panelist

Dated: January 6, 2025