DECISION

 

American Society for Testing and Materials v. Nick Young / cgg.co.ltd

Claim Number: FA2503002145116

 

PARTIES

Complainant is American Society for Testing and Materials ("Complainant"), represented by Meaghan H. Kent of Morgan, Lewis & Bockius LLP, District of Columbia, USA. Respondent is Nick Young / cgg.co.ltd ("Respondent"), Alaska, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <astmwebstore.com> and <astmonline.com>, registered with Tucows Domains 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 March 14, 2025; Forum received payment on March 14, 2025.

 

On March 14, 2025, Tucows Domains Inc. confirmed by e-mail to Forum that the <astmwebstore.com> and <astmonline.com> domain names are registered with Tucows Domains Inc. and that Respondent is the current registrant of the names. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 March 19, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of April 8, 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@astmwebstore.com and postmaster@astmonline.com. Also on March 19, 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 formal Response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.

 

On April 9, 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 formal Response from Respondent.

 

RELIEF SOUGHT

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

 

PRELIMINARY ISSUE: Multiple Domain Names

The Complaint relates to two 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 both domain names are operated by the same person or entity.

 

The WHOIS information furnished to Forum by the registrars lists the named Respondent as the registrant of both domain names, and gives the same registrant contact information for both domain names. The domain names utilize the same naming convention and were registered on the same day (WHOIS printouts included in Complaint Exhibit A). The websites resolving from both domain names are substantially identical, offering Complainant's products and displaying the same representation of Complainant's logo (screenshots of websites submitted as Complaint Exhibits E and F). Both websites feature the same general layout and appearance, with identical color schemes and fonts. Id.  These factors indicate common ownership and control. The Panel finds that both domain names are registered to the same person or entity or are under common control and will proceed as to both of them.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant develops and publishes technical standards relating to a wide range of products and systems across a broad range of industries. It sells and distributes manuals and booklets containing its proprietary standards through its online retail store.  It has rights in the ASTM mark based upon its registration of that mark with the United States Patent and Trademark Office (USPTO). Respondent's <astmwebstore.com> and <astmonline.com> domain names are identical or confusingly similar to the ASTM mark as they incorporate the entire mark, merely adding generic or descriptive terms and the ".com" generic top-level domain (gTLD).

 

Respondent has no rights or legitimate interests in the domain names. It is not connected or affiliated with Complainant and Complainant has not authorized Respondent to use its mark, it has not been commonly known by the domain names, it 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 because the domain names resolve to websites that impersonate Complainant and advertise unauthorized copies of Complainant's products, and it engages in phishing.

 

Respondent registered and uses the domain names in bad faith. It is using them to pass off as Complainant and advertise Complainant's products at discounted prices, it engages in phishing, and it registered the domain names using a privacy service.

 

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:

 

(i)                      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

(ii)                      the 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, 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. 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 3.0, at ¶ 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 ASTM mark was registered to Complainant with the USPTO (Reg. No. 2,679,320) on January 28, 2003 (USPTO registration certificate included in Complaint Exhibit D). Complainant's registration of its mark with the USPTO establishes its rights in that mark for the purposes of Policy ¶ 4(a)(i). Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, "Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.").

 

Respondent's <astmwebstore.com> and <astmonline.com> domain names are identical or confusingly similar to the ASTM mark. They fully incorporate the mark, merely adding the descriptive terms "webstore" and "online" and a 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 textual components of 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 "webstore" and "online" describe the method by which Complainant markets its products at its website located at <https://www.astm.org/productsservices/standards-and-publications.html>. 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 ASTM 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 has used or has made 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; or

(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) it is not connected or affiliated with Complainant and Complainant has not authorized Respondent to use its mark, (ii) it has not been commonly known by the domain names, (iii) it 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 because the domain names resolve to websites that impersonate Complainant and advertise unauthorized copies of Complainant's products, and (iv) it engages in phishing.  These allegations are addressed as follows:

 

Complainant alleges that Respondent is not affiliated with Complainant and that Complainant has not licensed or authorized Respondent to use its mark. 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 Name 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.").

 

The WHOIS information provided to Forum by the registrar lists the named Respondent as the registrant of the domain names. Neither of the registrant names bears any resemblance to the domain names. Evidence could, of course, in a given case demonstrate that the 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 for the purposes of Policy ¶ 4(c)(ii).

 

Complaint Exhibits E and F contain screenshots of pages on the websites resolving from the domain names. They both display the ASTM mark and a very close copy of the distinctive logo of Complainant and offer what appear to be publications produced by Complainant.  Respondent's websites unquestionably represent themselves and pass off as Complainant's and purport to offer Complainant's products for sale. Passing off as a complainant and offering to sell products advertised as those of a complainant does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or as a legitimate noncommercial or fair use within the meaning of Policy ¶ 4(c)(iii). Netflix, Inc. v. Irpan Panjul / 3corp.inc, FA 1741976 (Forum Aug. 22, 2017) ("The usage of Complainant's NETFLIX mark which has a significant reputation in relation to audio visual services for unauthorised audio visual material  is not fair as the site does not make it clear that there is no commercial connection with Complainant and this amounts to passing off . . . As such the Panelist finds that Respondent does not have rights or a legitimate interest in the Domain Name."); Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) ("Respondent uses the [disputed] domain name to divert Internet users to Respondent's website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] 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).").

 

Complainant alleges that Respondent is also deceiving customers into providing payment information under the pretense of buying one of Complainant's products and failing to deliver the product. In support of this it submitted a copy of a fraudulent invoice sent to a customer who thought it was purchasing a product from Complainant (Complaint Exhibit G). The invoice states that payment was made by credit card. This type of activity is generally referred to as phishing, which is a fraudulent attempt to obtain sensitive information such as usernames, passwords and credit card details by disguising oneself as a trustworthy entity in an electronic communication. Using a confusingly similar domain name to engage in phishing is neither a bona fide offering of goods or services for the purposes of Policy ¶4(c)(i) nor a legitimate noncommercial or fair use for the purposes of Policy ¶ 4(c)(iii).  Enterprise Holdings, Inc. v. I S / Internet Consulting Services Inc., FA 1785242 (Forum June 5, 2018) ("On its face, the use of a domain name that is confusingly similar to the mark of another in order to facilitate a phishing scheme cannot be described as either a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(iii)."); VectivBio AG v. John McLellan, FA 2047090 (Forum June 2023) ("Using a confusingly similar domain name to engage in phishing is neither a bona fide offering of goods or services for the purposes of Policy ¶4(c)(i) nor a legitimate noncommercial or fair use for the purposes of Policy ¶ 4(c)(iii).").

 

On the evidence presented, 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 and 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 of 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 offering to sell products advertised as those of Complainant, 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. The evidence does not disclose whether Respondent is actually selling the products advertised on its websites or fraudulently representing that it does, collecting money from the customer and then not delivering the goods. Regardless of which scenario is present here, Respondent's conduct fits squarely within the circumstances described in Policy ¶ 4(b)(iv) and is manifest evidence of bad faith registration and use. Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA 1612750 (Forum May 13, 2015) ("The Panel agrees that Respondent's use of the website to display products similar to Complainant's, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).").

 

As discussed above, 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.").

 

As discussed above, Respondent has also used the domain names to engage in phishing. This also is evidence bad faith registration and use. Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA 1625750 (Forum July 17, 2015) ("Respondent uses the <klabzuba-oilgas.com> domain to engage in phishing, which means Respondent registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii)."); McKinsey & Company, Inc., and McKinsey Holdings, Inc. v. Privacy Protection, report abuse to / Registrar: DELTA-X Ltd., FA 1580883 (Forum Oct. 25, 2014) (holding that the respondent had engaged in phishing, which is further evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii), when the respondent used the disputed domain name in an attempt to obtain Internet users' personal information including their driver's license number and name).

 

Finally, it is evident that Respondent had actual knowledge of Complainant and its mark when it registered the domain names in October 2024 (WHOIS printout submitted as Complaint Exhibit A shows creation dates). Complainant began using its mark at least as early as the 1962 first use date shown on the USPTO registration certificate included in Complaint Exhibit D. More importantly, Respondent had to have had actual knowledge of Complainant in order to advertise Complainant's products using Complainant's name. There is no question that Respondent knew of Complainant and its mark when it registered the domain name. Given the non-exclusive nature of Policy ¶ 4(b), acquiring 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).

 

Complainant argues that Respondent's registration of the domain names with a privacy service is also evidence of bad faith. Many UDRP panels, especially in the years first following the adoption of the Policy, accepted this argument. More recently, however, in light of many instances of abuse of information gained from domain name registrations, many registrants, and indeed even registrars themselves, have opted to use privacy services. The WIPO Overview 3.0, at ¶ 3.6, acknowledges that there are recognized legitimate uses of privacy and proxy services, and in 2018 the European Union adopted its General Data Protection Regulation (GDPR) which potentially subjects entities around the world to stiff penalties in the interest of protecting personal identifying information of European Union citizens worldwide. Domain name registrars offer and recommend data privacy services to domain name registrants to protect their data, and domain name registrants are with increasing frequency using such services. In summary, there are any number of reasons a registrant might choose to use a privacy service that do not involve bad faith, and the use of such services cannot be taken ipso facto as evidence of bad faith. Rovio Entertainment Corporation v. baobin chi, Case No. D2021-0888 (WIPO May 26, 2021) (". . . the mere fact that the WhoIs details of a respondent are protected by Pa privacy filter alone cannot be sufficient to support a finding of bad faith within the meaning of the third limb of paragraph 4(a).").  

 

Any inference of bad faith based upon the use of a privacy service would most likely involve some notion that the respondent did so in order to hinder or delay the filing of an administrative proceeding seeking transfer. The use of a privacy service may cause some minor delay after the administrative proceeding is commenced, to enable the provider to obtain previously screened registrant information from the registrar, but it does not impose any real deterrent to the filing of a case. UDRP cases are in the nature of in rem  proceedings. The Panel has jurisdiction over the domain names and can enter any orders contemplated by the relevant policy as to the domain names without personal jurisdiction over the respondent. In this case, there is no evidence to support any contention that Respondent's use of a privacy service to register the domain names was for any improper or unlawful purpose. Respondent's use of a privacy service is not evidence of bad faith.

 

For the reasons first above 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 <astmstore.com> and <astmonline.com> domain names be TRANSFERRED from Respondent to Complainant. 

 

 

 

Charles A. Kuechenmeister, Panelist

April 10, 2025