DECISION

 

Clarus Commerce LLC DBA ebbo v. GoDaddy / Kuichuan Wang

Claim Number: FA2502002138769

 

PARTIES

Complainant is Clarus Commerce LLC DBA ebbo ("Complainant"), represented by Emily Goodell of Davis Wright Tremaine LLP, Washington, USA. Respondent is GoDaddy / Kuichuan Wang ("Respondent"), California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <ebboloyaltyprogram.com>, <ebboloyaltyprogram.net>, <loyaltyprogramebbo.com>, <loyaltyprogramebbo.net>, <ebbo-loyalty.com>, <theebboloyalty.com>, <theebbo-loyalty.com>, <ebboprogram.com>, and <ebboworldprogram.com>, registered with Dominet (HK) Limited and Cosmotown, 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.

 

Charles A. Kuechenmeister, Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on February 5, 2025; Forum received payment on February 5, 2025.

 

On Feb 06, 2025; Feb 09, 2025, Dominet (HK) Limited and Cosmotown, Inc. confirmed by e-mail to Forum that the <ebboloyaltyprogram.com>, <ebboloyaltyprogram.net>, <loyaltyprogramebbo.com>, <loyaltyprogramebbo.net>, <ebbo-loyalty.com>, <theebboloyalty.com>, <theebbo-loyalty.com>, <ebboprogram.com>, and <ebboworldprogram.com> domain names are registered with Dominet (HK) Limited and Cosmotown, Inc. and that Respondent is the current registrant of the names. Dominet (HK) Limited and Cosmotown, Inc. have verified that Respondent is bound by the Dominet (HK) Limited and Cosmotown, Inc. registration agreements 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 February 12, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of March 4, 2025 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@ebboloyaltyprogram.com, postmaster@ebboloyaltyprogram.net, postmaster@loyaltyprogramebbo.com, postmaster@loyaltyprogramebbo.net, postmaster@ebbo-loyalty.com, postmaster@theebboloyalty.com, postmaster@theebbo-loyalty.com, postmaster@ebboprogram.com, and postmaster@ebboworldprogram.com. Also on February 12, 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 registration as technical, administrative and billing contacts.

 

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

 

On March 5, 2025, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Charles A. Kuechenmeister 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 a Response or any other submittals from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PRELIMINARY ISSUE: Multiple Respondents and Domain Names

The Complaint names two persons as Respondents and relates to nine domain names. Paragraph 3(c) of the Rules provides that a "complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder."  Complainant alleges that all nine domain names are operated by the same person or entity using different aliases. For convenience of reference, each domain name is assigned a number, as follows:

 

1. <ebboloyaltyprogram.com>, 2. < ebboloyaltyprogram.net>, 3. <loyaltyprogramebbo.com>, 4. < loyaltyprogramebbo.net>, 5. <ebbo-loyalty.com>, 6. <theebboloyalty.com>, 7. <theebbo-loyaly.com>, 8. <ebboprogram.com> and 9. <ebboworldsprogram.com>.

 

The WHOIS information furnished to Forum by the registrars lists Kuichuan Wang as the registrant of domain names 1 through 4. It lists GoDaddy as the registrant of the other 5 domain names. Domain names 1-4 have the same registrar, as do domain names 5-9. Domain names 1-4 were registered on April 25, 2024 and the remaining domain names were registered serially beginning on December 19, 2024 and ending on January 23, 2025 (WHOIS printouts included in Complaint Exhibit 1). Before the domain names were placed on "client hold" by the registrars, the websites resolving from all of them were identical to each other (Declaration of Director, Information Security Production Overhead & IT at Complainant, including screenshots of websites, submitted as Complaint Exhibit 2—the "Kindred Declaration"). All of the domain names exhibit the same or similar naming conventions, incorporating the EBBO mark and adding related terms such as "loyalty," and "program" and changing the order of these terms. All of these factors indicate common ownership and control. The Panel finds that all nine domain names are registered to the same person or entity or are under common control and will proceed as to all of them.  References in this Decision to Respondent, even though in the singular, refer to the registrant of all nine domain names.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant furnishes loyalty and marketing programs for businesses. It has rights in the EBBO mark through its registration of that mark with the USPTO. Respondent's domain names are virtually identical and confusingly similar to Complainant's mark because they fully incorporate the mark, merely adding related terms such as "loyalty" and "program" and the ".com" generic top level domain (gTLD).

 

Respondent has no rights or legitimate interests in the domain names. The resolving websites contain no contact information for Respondent or any of the typical terms of service, Respondent is not using the domain names in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use but instead uses them to pass off as Complainant in a fraudulent employment scheme in which it attempts to persuade victims to transfer money to accounts controlled by Respondent under the false assurance that they will be repaid by Complainant, Respondent has not been commonly known by the domain names, and Complainant has not authorized Respondent to use its mark.

 

Respondent registered and uses the domain names in bad faith. It is using them in connection with a scheme to impersonate Complainant and defraud unsuspecting victims, it registered the domain names with actual knowledge of Complainant and its mark, and it has engaged in a pattern of bad faith registrations of the domain names.

 

B. Respondent

Respondent did not submit a Response in this proceeding.

 

FINDINGS

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 a complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:

 

(1)       the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(2)       the 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, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations 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 as true unless the evidence is clearly contradictory. Nevertheless, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. 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"), WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), ¶ 4.3 ("In cases involving wholly unsupported and conclusory allegations advanced by the complainant, . . . panels may find that—despite a respondent's default—a complainant has failed to prove its case.")…."). The WIPO Overview 3.0 is not a definitive statement of applicable law which governs any particular issue, but it does express a consensus among a significant number of UDRP panelists as to how particular issues typically are and should be resolved. This Panelist accepts that consensus on this and other issues addressed later in this Decision.

 

The Panel finds as follows with respect to the matters at issue in this proceeding:

 

Identical and/or Confusingly Similar

The EBBO mark was registered to Complainant with the USPTO (Reg. No. 7,184,597) on October 3, 2023 (USPTO registration certificate submitted as Complaint Exhibit 4). Complainant's registration of its mark with the USPTO establishes its rights in that mark for the purposes of Policy ¶ 4(a)(i).  Nintendo of America Inc. v. lin amy, FA 1818485 (Forum Dec. 24, 2018) ("Complainant's ownership a USPTO trademark registration for the NINTENDO mark evidences Complainant's rights in such mark for the purposes of Policy ¶ 4(a)(i).").

 

Respondent's domain names are identical or confusingly similar to Complainant's mark. They fully incorporate the mark, merely adding related terms such as "loyalty" and "program" and the ".com" gTLD. These changes do not distinguish the domain names from Complainant's mark for the purposes of Policy ¶ 4(a)(i).  MTD Products Inc v J Randall Shank, FA 1783050 (Forum June 27, 2018) ("The disputed domain name is confusingly similar to Complainant's mark as it wholly incorporates the CUB CADET mark before appending the generic terms 'genuine' and 'parts' as well as the '.com' gTLD.").  The WIPO Overview 3.0, at ¶ 1.7, states that the test for confusing similarity "typically involves a side-by-side comparison of the domain name and the relevant trademark to assess whether the mark is recognizable within the domain name."  Notwithstanding the changes described above, Complainant's mark is clearly recognizable within the domain names.

 

Further, the addition of descriptive terms that relate to a complainant can actually enhance confusion. That is the case with the domain names involved here. The terms "loyalty" and "program" describe the services provided by Complainant. Adding these terms to Complainant's mark in the domain names relates directly to Complainant's business and enhances the confusing similarity. PADI Americas, Inc. v. MPM Administration, FA 1783415 (Forum May 22, 2018) (finding the <padivacations.com> domain name to be confusingly similar to the complainant's PADI mark: "the inclusion of the suggestive term 'vacations' in the at-issue domain name only adds to any confusion between the domain name and Complainant's trademark since the term suggests Complainant's travel related services").

 

For the reasons set forth above, the Panel finds that the domain names are identical or confusingly similar to the EBBO mark, in which Complainant has substantial and demonstrated rights. 

 

Rights or Legitimate Interests

If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. 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."). If a respondent fails to come forward with such evidence, the complainant's prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0, at ¶ 2.1.

 

Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate a respondent's rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):

 

(i)                      Before any notice to the respondent of the dispute, the respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;

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

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

 

Complainant asserts that Respondent has no rights or legitimate interests in the domain names because (i) the resolving websites contain no contact information for Respondent or any of the typical terms of service, (ii) Respondent is not using the domain names in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use but instead uses them to pass off as Complainant in a fraudulent employment scheme in which it attempts to persuade victims to transfer money to accounts controlled by Respondent under the false assurance that they will be repaid by Complainant, (iii) Respondent has not been commonly known by the domain names, and (iv) Complainant has not authorized Respondent to use its mark.  These allegations are addressed as follows:

 

Complainant states that it has not authorized or permitted Respondent to use its mark. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel. In the absence of evidence that a respondent is authorized to use a complainant's mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights or legitimate interests in the domain name. IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant's mark and failed to submit evidence that it is commonly known by the domain name), Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) ("Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant's trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.").

 

Complaint Exhibit 2, the Kindred Declaration, contains screenshots of the websites resolving from the domain names before the registrars put them in a "client hold" status following protests by Complainant. These nine sites were virtually identical to each other and displayed Complainant's mark and logo, featured photographs identical to photographs on Complainant's website at www.ebbo.com and displayed the same colors, font and general appearance as the pages on Complainant's website (screenshot of Complainant's website submitted as Complaint Exhibit 5). One of the exhibits attached to the Kindred Declaration is a copy of a purported employment agreement between Complainant and an unnamed person, which Mr Kindred states that he received from a consumer who said that the consumer received it as a part of the above-described scheme. This purported employment agreement bore the signature of an actual employee of Complainant.

 

The Kindred Declaration states that Mr Kindred reviewed at least 19 reports from consumers who describe a fraudulent work-from-home employment scheme into which they were recruited through the websites resolving from the domain names. Victims report being contacted via Facebook or WhatsApp regarding an opportunity for remote work.  They are then encouraged to engage with individuals via Telegram. Victims report they were all eventually directed to create an account at the websites resolving from one of the domain names. Several were told to complete "training" which required them to transfer their own funds, using cryptocurrency, to wallets designated by the scheme operators. Initially, reporting consumers were able to get some of their money returned, via "rebate", but they were then asked to transfer increasingly large amounts of cryptocurrency until eventually, the scheme operators ceased making payments or providing "rebates" and became unresponsive. Several were offered and entered into employment contracts to which they falsely believed Complainant was a party. As of January 29, 2025, the approximate total amount of monetary losses reported to Complainant by consumers as a result of their interaction with the domain names was $23,000.

 

Much of Complainant's evidence is hearsay but it is corroborated by content appearing on some of the pages on Respondent's websites and by an article published by the FBI, submitted as Complaint Exhibit 6, which warns the public of cryptocurrency job scams identical to the scheme described in Complaint Exhibit 2. This evidence is deemed to be reliable and accurate, and it demonstrates that Respondent is using the domain names to impersonate Complainant and engage in fraudulent attempts to deprive unsuspecting consumers of substantial amounts of money.  Using a confusingly similar domain name to impersonate a complainant and engage in fraud is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  Even without the evidence of fraud, Respondent is passing off as Complainant and this on its own is sufficient to establish a prima facia case of no bona fide offering of goods or services and no legitimate noncommercial or fair use. Dow Jones & Company, Inc. v. Chenjia Weng / PSU Subscription Agency / ZONGYI LIN, FA 2018619 (Forum Jan. 16, 2023) ("As set forth in section 2.13.1 of WIPO Overview 3.0: 'Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent.'  Here, by using the Disputed Domain Names as described above, Respondent has apparently used the Disputed Domain Names for illegal activity, including impersonation.  Accordingly, the Panel finds that Respondent's use of the Disputed Domain Names in this manner does not constitute a "bona fide offering of goods or services" or "a legitimate noncommercial or fair use" under paragraphs 4(c)(i) or 4(c)(iii) of the Policy.").

 

The WHOIS information furnished to Forum by the registrars lists the Respondent as the registrant of the domain names. Neither of these names bears any resemblance to the domain names. Evidence could, of course, in a given case demonstrate that a respondent is commonly known by a domain name different from the name in which it registered the domain name, e.g., the case of a domain name incorporating the brand name of a specific product offered by and associated with the respondent. In the absence of any such evidence, however, UDRP panels have consistently held that WHOIS evidence of a registrant name which does not correspond with the domain name is sufficient to prove that the respondent is not commonly known by the domain name. Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed Domain Name when the identifying information provided by WHOIS was unrelated to the Domain Name or respondent's use of the same), 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 information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The Panel is satisfied that Respondent has not been commonly known by the domain names.

 

The evidence furnished by Complainant establishes the required prima facie case. On that evidence, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the domain names.

 

Registration or Use in Bad Faith

Policy ¶ 4(b) sets forth a nonexclusive list of four circumstances, any one of which if proven would be evidence of bad faith use and registration of a domain name. They are as follows:

 

(i)                      circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or

(ii)                      the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii)                      the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv)         by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation or endorsement of the respondent's web site or location or of a product or service on the respondent's web site or location.

 

The evidence of Respondent's conduct discussed above in the rights or legitimate interests analysis also supports a finding of bad faith registration and use, based upon the foregoing grounds articulated in the Policy and upon additional grounds adopted by UDRP panels over the years. First, by passing off as Complainant and engaging in a fraudulent employment scheme, Respondent is using the confusingly similar domain names to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of its websites, as described in Policy ¶ 4(b)(iv). Thorp Direct Sales, Inc. and Smoky Mountain Boots Inc. v. Khne Behui, FA2058639 (Forum Sept. 23, 2023) ("The impersonator invites Internet users to purchase Complainant's goods at a discount and to pay for their purchases by credit card and by this means engages in a fraudulent scheme to dupe and scam innocent Internet users for their personal information and collect payments without delivering the goods.").

 

Even if Respondent were not engaged in the overtly fraudulent conduct, Respondent is using the domain names to pass off as Complainant. Policy ¶ 4(b) recognizes that mischief can manifest in many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (Jan. 5, 2005). The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and passing off as a complainant, in and of itself, is evidence of bad faith. Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith where "Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant's own website in order to confuse users into believing that Respondent is Complainant or is otherwise affiliated or associated with Complainant.").

 

Next, it is evident that Respondent had actual knowledge of Complainant and its EBBO mark when it registered the domain names in April and December 2024 and January 2025 (WHOIS printouts included in as Complaint Exhibit 1 show creation dates). In order to impersonate Complainant, using websites very similar if not identical in appearance to Complainant's site, even to the extent of using the name of an actual employee of Complainant in a fraudulent employment agreement, it had to have had actual knowledge of Complainant and its mark. There is no question that it had actual knowledge of Complainant and its rights in the EBBO mark when it registered the domain names. Given the non-exclusive nature of Policy ¶ 4(b), registering a confusingly similar domain name with actual knowledge of a complainant's rights in its mark is evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii).  Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).

 

For the reasons set forth above, the Panel finds that Respondent registered and is using the domain names in bad faith within the meaning of Policy ¶ 4(a)(iii).

 

DECISION

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

 

Accordingly, it is Ordered that the  <ebboloyaltyprogram.com>, <ebboloyaltyprogram.net>, <loyaltyprogramebbo.com>, <loyaltyprogramebbo.net>, <ebbo-loyalty.com>, <theebboloyalty.com>, <theebbo-loyalty.com>, <ebboprogram.com>, and <ebboworldprogram.com> domain names be TRANSFERRED TO COMPLAINANT.

 

 

 

Charles A. Kuechenmeister, Panelist

March 7, 2025