Katrina Szish v. Judi Hobbs
Claim Number: FA2004001891959
Complainant is Katrina Szish (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, United States. Respondent is Judi Hobbs (“Respondent”), United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <katrinaszish.com>, which is registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 14, 2020; the Forum received payment on April 14, 2020.
On April 15, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <katrinaszish.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 April 16, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 6, 2020 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 firstname.lastname@example.org. Also on April 16, 2020, 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 12, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 is a journalist, television host and fashion advisor.
Complainant has for many years worked under her personal name as a fashion writer and editor for widely distributed magazines.
Complainant has also numerous appearances on national television as a correspondent covering celebrity news, style and popular culture.
In addition, since 2018 Complainant has served as a program host for QVC, one of the largest at-home shopping retailers in the world.
As a consequence of these and related professional activities conducted in commerce continuously over a span of 25 years, Complainant has acquired rights in the KATRINA SZISH mark under the common law.
Respondent registered the domain name <katrinaszish.com> on or about December 9, 2019.
The domain name is both substantively identical and confusingly similar to Complainant’s KATRINA SZISH mark.
Respondent has not been commonly known by the domain name.
Respondent is not authorized to use Complainant’s KATRINA SZISH mark.
Respondent registered the domain name after Complainant, who was the holder of the domain name from 2007 until 2018, inadvertently allowed it to expire.
Respondent fails to use the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Rather, Respondent uses the domain name to impersonate Complainant in furtherance of a “phishing” scheme aimed at surreptitiously obtaining the sensitive personal information of unsuspecting Internet users.
Respondent also employs the domain name to resolve to a web page that carries hyperlinks to the web sites of third-parties unrelated to Complainant, and from the operation of which links Respondent profits in the form of click-through fees.
Respondent lacks rights to or legitimate interests in the domain name.
Respondent’s use of the domain name causes confusion among Internet users as to the possibility of Complainant’s association with it.
Respondent’s use of the domain name disrupts Complainant’s business.
Respondent registered and uses the domain name in bad faith.
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is substantively identical and confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used by Respondent 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:
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 to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept as true all reasonable claims and inferences set out in the Complaint unless the supporting evidence is manifestly contradictory. See, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). But see 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”).
It is customary for a UDRP complainant to demonstrate that it has rights in a mark sufficient to satisfy the standing requirements of Policy ¶ 4(a)(i) so that it may pursue a complaint against a domain name holder under the Policy by showing that it has registered its mark with a national or international trademark authority. However, it is not necessary for a UDRP complainant to have registered its mark in order to establish standing under the Policy. It is enough for a complainant to show that it has acquired protection of its rights in a mark by operation of the common law. See, for example, Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA 1625750 (Forum July 17, 2015):
Complainant does not claim to own a trademark registered with a governmental authority. However, Policy ¶ 4(a)(i) does not require such registration if a complainant can demonstrate … common law rights [in the mark].
To establish common law rights in a mark, a UDRP complainant must show extensive and continuous use of the mark in commerce such that consumers have come to associate the mark with the complainant as a source of identified goods. See, for example, Iacocca v. Tex. Int’l Prop. Assocs., FA 1088017 (Forum November 29, 2007):
In order to garner the benefit of common law trademark rights, Complainant must lay out, not only evidence of extensive and continuous use of the mark in commerce, but also evince some strong probability that as a result of such exposure, … consumers have come to associate the mark with Complainant, as to the source of the goods.
The Complaint and accompanying materials before us support Complainant’s claim of extensive and continuous use of her personal name in commerce to justify the conclusion that she has developed rights in the KATRINA SZISH mark sufficient for purposes of Policy ¶ 4(a)(i). For this reason, and because Respondent does not contradict Complainant’s assertions on this question, we so find.
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <katrinaszish.com> domain name is both substantively identical and confusingly similar to Complainant’s KATRINA SZISH mark. The domain name incorporates the mark in its entirety, merely deleting the space between its terms and adding the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save it from the realm of identity and confusing similarity under the standards of the Policy. See, for example, Starwood Capital Grp. Global LLC v. Resort Realty, FA 1043061 (Forum September 6, 2007):
[T]he addition of the generic top-level domain ‘.com’ [to the mark of another in forming a domain name] does nothing to eliminate the confusing similarity, as a top-level domain is a requirement for all domain names.
And, as to Respondent’s deletion of the single space between the terms of Complainant’s mark in creating the domain name, this alteration of the mark is of no significance to our analysis because domain name syntax does not permit the use of blank spaces.
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent lacks rights to and legitimate interests in the <katrinaszish.com> domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c)(i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <katrinaszish.com> domain name, and that Complainant has not authorized Respondent to use the KATRINA SZISH mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “JUDI HOBBS,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(ii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as “Bhawana Chandel,” and nothing in the record showed that that respondent was authorized to use a UDRP Complainant’s mark in any manner). See also Navistar International Corporation v. N Rahmany, FA 620789 (Forum June 8, 2015) (finding, under Policy ¶ 4(c)(ii), that a respondent was not commonly known by a disputed domain name where a UDRP complainant had not authorized that respondent to incorporate its mark in a domain name).
We next observe that Complainant asserts without objection from Respondent, that Respondent employs the <katrinaszish.com> domain name to impersonate Complainant in furtherance of a fraudulent scheme to acquire the sensitive personal information of unsuspecting Internet users, a process sometimes called “phishing.” This employment is neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use of it under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy. See, for example, DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017):
Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are satisfied that Respondent’s use of the <katrinaszish.com> domain name, as alleged in the Complaint, constitutes a fraudulent phishing scheme. This stands as proof of Respondent’s registration and use of the domain name in bad faith. See, for example, Ian Schrager and IS Co. LLC v. Gary Prioste, FA1828418 (Forum March 7, 2019):
Respondent registered a domain name … incorporating Complainant[‘s] … registered mark in its entirety… and has used it in what appears to be a fraudulent phishing scheme. Such conduct is indicative of bad faith registration and use under the Policy.
See also Zoetis Inc. and Zoetis Services LLC v. VistaPrint Technologies Ltd, FA1623601 (Forum July 14, 2015):
Respondent’s attempt to use the … domain name to phish for personal information in fraudulent emails also constitutes bad faith [registration and use] pursuant to Policy ¶ 4(a)(iii).
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <katrinaszish.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: May 14, 2020
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