Paramount Export Company v. Stedrick Hoyle
Claim Number: FA1704001725247
Complainant is Paramount Export Company (“Complainant”), California, USA. Respondent is Stedrick Hoyle (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <paramuontexport.net>, registered with Gandi SAS.
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.
Complainant submitted a Complaint to the Forum electronically on April 4, 2017; the Forum received payment on April 4, 2017.
On April 5, 2017, Gandi SAS confirmed by e-mail to the Forum that the <paramuontexport.net> domain name is/ registered with Gandi SAS and that Respondent is the current registrant of the name. Gandi SAS has verified that Respondent is bound by the Gandi SAS 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 April 11, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 1, 2017 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@paramuontexport.net. Also on April 11, 2017, 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, the Forum transmitted to the parties a Notification of Respondent Default.
On May 8, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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.
A. Complainant
i) Complainant has rights in the Paramount Export Company or Paramount Export mark based upon its registration and longstanding use of the Paramount Export Company or Paramount Export mark as a corporation with the state of California and through the longstanding ownership of the <paramountexport.net> domain name since 1999.
ii) Respondent has not been commonly known by the <paramuontexport.net> domain name because the available WHOIS information identifies Respondent as “Stedrick Hoyle,” and because Respondent has no connection to Complainant.
Respondent fails to use the domain name to make a bona fide offering or a legitimate noncommercial or fair use because the resolving website is inactive, and used to host and send fraudulent e-mails purporting to be Complainant.
iii) Respondent uses the <paramuontexport.net> domain name in bad faith because it uses the domain name to host and send e-mails used to pass off as Complainant for profit by defrauding consumers who mistake Respondent for Complainant.
B. Respondent
Respondent has not submitted a Response. The Panel notes that the <paramuontexport.net> domain name was created on January 7, 2017.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
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.”).
The Panel notes that Complainant does not allege to have registered a mark with any trademark organization. However, panels have agreed that such a registration is not required if common law rights can be established. See Oculus VR, LLC v. Ivan Smirnov, FA 1625898 (Forum July 27, 2015) (holding, “A Complainant does not need to hold registered trademark rights in order to have rights in a mark under Policy ¶ 4(a)(i) and it is well established that a Complainant may rely on common law or unregistered trademarks that it can make out.”).
Complainant claims to have rights in the Paramount Export Company or Paramount Export mark based upon its registration and longstanding use as a corporation with the state of California and through the longstanding ownership and use of the <paramountexport.net> domain name since 1999. Complainant has provided, evidence of business registration in California, evidence of ownership of the associated domain name. More specifically, Complainant has provided evidence showing the fact that Paramount Export Company is a California corporation registered since 1958; Paramount Export Company has offered export related services to companies since 1939; and Paramount Export Company has continuously owned and operated its domain name since 1999, and website since 2001.
As the Panel finds this evidence sufficient to establish secondary meaning required for common law rights for the Paramount Export Company or Paramount Export mark, it finds that Complainant has rights in the Paramount Export Company or Paramount Export mark according to Policy ¶ 4(a)(i). See Golden Title Loans, LLC dba 745Cash v. roylee, FA 1618801 (Forum June 23, 2015) (holding, “Relevant evidence of secondary meaning includes continuous and ongoing use of a mark, holding of a domain name identical to the mark, or using the mark in commerce before a disputed domain name is created.” Finding “Complainant has provided evidence of secondary meaning . . . displaying Complainant’s business registration with the state of Tennessee, showing use of the 745-CASH mark since July 2005 . . . showing the creation date as March 30, 2004 of Complainant’s own website <745cash.com>. Complainant also urges that its business phone number is 745-CASH.”).
The Panel notes that Complainant does not provide an argument that the <paramuontexport.net> domain name is identical or confusingly similar to Complainant’s Paramount Export Company or Paramount Export mark. The disputed domain name is the same as Complainant’s mark Paramount Export
except for the transposition of the letters “o,” and “u;” and that the disputed domain name contains the words “Paramount,” although with a misspelling, and “Export” combined with the generic top-level domain (“gTLD”) “.net.” For the same reasons, the disputed domain name is confusingly similar to Complainant’s owned <paramountexport.net> domain name. As such, the Panel finds the disputed domain name to be confusingly similar to Complainant’s mark. See Capital One Financial Corp. v. Huang Li Technology Corp c/o Dynadot, FA 1620197 (Forum June 16, 2015) (finding confusing similarity where the respondent misspelled the word “bank” by transposing the letters “a” and “n,” attached the gTLD “.com,” and eliminated spacing with respect to the CAPITAL ONE BANK mark to create the <capitalonebnak.com> domain name.).
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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006)
(“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain
names.”).
Complainant argues that Respondent has not been commonly known by the <paramuontexport.net> domain name because the available WHOIS information identifies Respondent as “Stedrick Hoyle,” and because Respondent has no connection to Complainant. As the Panel finds this evidence sufficient, it concludes that Respondent has not been commonly known by the <paramuontexport.net> domain name according to Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)).
Complainant contends that Respondent fails to use the <paramuontexport.net> domain name to make a bona fide offering or a legitimate noncommercial or fair use because the resolving website is inactive, and used to host and send fraudulent e-mails purporting to be Complainant. Complainant has provided a screenshot of the resolving page to demonstrate its inactive use, as well as evidence of use of e-mails from e-mail addresses hosted at the disputed domain name. As the Panel agrees that this evidence demonstrates either an inactive use of the website or an attempt to pass off as Complainant, it finds that Respondent’s use of the <paramuontexport.net> domain name is neither a bona fide offering or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”); see also Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Complainant maintains that Respondent uses the <paramuontexport.net> domain name in bad faith because it uses the domain name to host and send e-mails used to pass off as Complainant for profit by defrauding consumers who mistake Respondent for Complainant. Complainant has provided evidence of such use to demonstrate this attempt to profit. As the Panel finds this evidence sufficient, it agrees that Respondent uses the domain name in bad faith according to Policy ¶ 4(b)(iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”); see also Qatalyst Partners LP v. Devimore, FA 1393436 (Forum July 13, 2011) (finding that using the disputed domain name as an e-mail address to pass itself off as the complainant in a phishing scheme is evidence of bad faith registration and use).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <paramuontexport.net> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: May 15, 2017
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