Stepp Manufacturing Company Incorporated v. Protection of Private Person
Claim Number: FA1608001686520
Complainant is Stepp Manufacturing Company Incorporated (“Complainant”), represented by Maulin V. Shah of UDRPro, LLC, North Carolina, USA. Respondent is Protection of Private Person (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <steppmfg.com>, registered with Registrar of Domain Names REG.RU LLC.
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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 1, 2016; the Forum received payment on August 1, 2016. The Complaint was received in both Russian and English.
On August 2, 2016, Registrar of Domain Names REG.RU LLC confirmed by e-mail to the Forum that the <steppmfg.com> domain name is registered with Registrar of Domain Names REG.RU LLC and that Respondent is the current registrant of the name. Registrar of Domain Names REG.RU LLC has verified that Respondent is bound by the Registrar of Domain Names REG.RU 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 August 2, 2016, the Forum served the Russian language Complaint and all Annexes, including a Russian language Written Notice of the Complaint, setting a deadline of August 22, 2016 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 email@example.com. Also on August 2, 2016, the Russian language 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, the Forum transmitted to the parties a Notification of Respondent Default.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Russian language Complaint and Commencement Notification, and, absent a Response, concludes that the remainder of the proceedings may be conducted in English.
On August 30, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David A. Einhorn as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant, Stepp Manufacturing Company Incorporated, is a Minnesota company that has operated since 1942 and specializes in manufacturing equipment designed to heat, melt, transport and store bitumen and asphalt materials for highway maintenance and related tasks. Complainant has common law rights in the STEPP MANUFACTURING and STEPP MFG marks dating back to 1942. Complainant has continuously identified itself using the marks and continuously sold goods, advertised, and been recognized using the marks. Respondent’s domain, <steppmfg.com>, is confusingly similar to the STEPP MANUFACTURING and STEPP MFG marks as the domain incorporates the entirety of Complainant’s mark.
Respondent lacks rights or legitimate interests in the disputed domain name. Respondent has not been commonly known by the disputed domain name.
Respondent fraudulently obtained the domain from Complainant through hacking and transferred the domain registration which had been in Complainant’s control for almost 18 years. Additionally, Respondent’s domain resolving to a site hosting malware is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent has registered and is using the disputed domain name in bad faith. Respondent has offered the domain for sale in excess of out of pocket costs. Respondent registered the domain to disrupt Complainant’s business through preventing Complainant from using its work email to maintain its business. Respondent’s bad faith is also clearly evident through illegally hacking into Complainant’s account and stealing Complainant’s registration of the disputed domain.
Respondent failed to submit a Response in this proceeding.
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 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant asserts that it has common law rights in the STEPP MANUFACTURING and STEPP MFG marks dating back to1942. Complainant states that it has continuously used the STEPP MANUFACTURING and STEPP MFG mark since that date in connection with its asphalt and road repair equipment manufacturing services. Complainant has included numerous reports detailing contracts acquired with its business and other evidence demonstrating its business activities. Traditionally, secondary meaning is established by evidence of complainant’s sales figures, expenditures, and any other evidence indicating popularity in the mark as related to complainant. See Gourmet Depot v. DI S.A., FA 1378760 (Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”). Complainant has provided evidence regarding length of sales under the mark, the nature and extent of advertising, the nature and extent of sales under the mark and of unsolicited media recognition. Respondent has not disputed this evidence. The Panel therefore finds that Complainant has established common law rights in the STEPP MANUFACTURING and STEP MFG marks.
Complainant argues that the <steppmfg.com> domain is confusingly similar to the STEPP MANUFACTURING and STEPP MFG marks in which Complainant claims common law rights. Respondent’s domain includes the entire STEPP MFG mark. The Panel therefore concludes that Respondent’s domain is confusingly similar to the STEPP MANUFACTURING and STEPP MFG marks pursuant to Policy ¶ 4(a)(i).
Complainant contends that Respondent has not been commonly known by the disputed domain name. WHOIS information indicates that Respondent is using a privacy service to shield its identity. Panels have held that a respondent is not commonly known by a disputed domain name based on WHOIS information regarding use of a privacy service and a lack of evidence to the contrary. See CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA 1589962 (Forum Jan. 1, 2015) (“The Panel notes that the WHOIS information merely lists a privacy service as registrant. In light of Respondent’s failure to provide any evidence to the contrary, the Panel finds there is no basis to find Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).”). As Respondent has not disputed Complainant’s contention, and there is no evidence to indicate that it is commonly known by the disputed domain, the Panel finds that Respondent is not commonly known by the disputed domain under Policy ¶ 4(c)(ii).
Complainant next contends that Respondent has not used the domain in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent’s domain currently resolves to a website hosting a pop-up message that prompts the user to call a tech support number because the user’s browser has been “hacked and hijacked.” Similar uses of websites have been found to not be a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Ceridian Corp. v. Versata Software, Inc., FA 1259927 (Forum June 23, 2009) (finding that a respondent’s use of a disputed domain name to direct Internet users to a website which attempts to download computer viruses “failed to create any semblance of a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)”). The Panel concludes that Respondent has not used the domain within the parameters of Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
Complainant claims that Respondent also lacks rights or legitimate interests in the disputed domain through hacking Complainant to fraudulently obtain the means to take over Complainant’s domain. An email exchange between Complainant and Respondent includes a message from Respondent using the email “firstname.lastname@example.org,” stating, “Scott… You need your email ? If yes… I can give you Back …if you pay.” In this exchange, Respondent is using an email associated with the disputed domain, Complainant’s previous email, to contact an employee of Complainant and attempt to sell the domain back. Panels have held that a respondent cannot have rights or legitimate interests in a domain which appears to have been acquired through fraud or other illegal activity. See Gryphon Internet, LLC v. thank you corp. / Jon Shakur, FA 1405610 (Forum Oct. 11, 2011) (“Complainant has produced documents showing its purchase of the Domain Name, that the site was a thriving business until August 2011, that the site came under attack and the theft of the Domain Name was reported to the police in August 2011…On the balance of probabilities and the evidence before it the Panelist prefers the account of the Complainant and holds that, as it appears that the Respondent is now in control of a stolen domain name which it has not yet used, the Respondent cannot have any rights or legitimate interests in the name.”). This Panel similarly concludes that Respondent’s activity indicates a lack of rights or legitimate interests in the disputed domain name.
Thus, Complainant has also satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered the domain to disrupt Complainant’s business through preventing Complainant from using its work email to maintain its business. Panels have broadly defined the term disruption. See Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (defining “competitor” as “one who acts in opposition to another and the context does not imply or demand any restricted meaning such as commercial or business competitor”). Panels have held that a complainant’s business has been disrupted through altering a corporate domain and interfering with a complainant’s ability to email through the domain. See GPZ Technology, Inc. v. Aleksandr Vedmidskiy / Private Person, FA 1612935 (Forum May 11, 2015) (“Complainant alleges Respondent’s wrongful acquisition of the disputed domain name through hacking establishes bad faith registration and use. Complainant contends that its corporate website has been removed, which results in significant disruption of its email access and its ability to communicate with customers and potential clients. Complainant has adduced evidence to substantiate these matters and the Panel accepts that evidence.”). This supports a finding of bad faith.
Respondent’s bad faith is also clearly evident through its apparent hacking into Complainant’s account and stealing Complainant’s registration of the disputed domain. Complainant claims that it previously had control of the disputed domain name and only lost control through the fraudulent hacking activity of Respondent. Prior panels have held that a respondent’s apparent hijacking of another’s domain has registered and used the domain in bad faith under Policy ¶ 4(a)(iii). See ITX sarl v. Steiner, FA 1222737 (Forum Oct. 24, 2008) (finding that, where "Complainant has shown that it has a long-term ownership of the domain name at issue before the domain name came under the control of Respondent," and where there was also evidence that the domain name had been transferred to Respondent without the permission of Complainant at a time when Complainant was the registered owner of the domain name, Respondent had registered and was using the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).).
Accordingly, the Panel finds that Respondent has registered and is using the disputed domain in bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <steppmfg.com> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: September 9, 2016
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