Air Lift Company v. hermanrademan / Paul Russo / Encompass Corporation
Claim Number: FA2203001989867
Complainant is Air Lift Company (“Complainant”), represented by Malaina J Weldy of Warner Norcross + Judd LLP, Michigan, USA. Respondents are hermanrademan / Paul Russo / Encompass Corporation, South Africa.
REGISTRARS AND DISPUTED DOMAIN NAMES
The domain names at issue are <airsliftcompany.com> and <airliftscompany.com>, registered with Hosting Concepts B.V. d/b/a Registrar.eu and <airlifcompany.com>, registered with NameCheap, Inc.
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 28, 2022; the Forum received payment on March 28, 2022.
On March 28, 2022 and April 5, 2022, the Registrars confirmed by e-mail to the Forum that the <airsliftcompany.com>, <airlifcompany.com>, and <airliftscompany.com> domain names are registered with them and that the named respondents each own one of the names. The Registrars verified that the respondents are bound by their registration agreements and have 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 6, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 26, 2022 by which the respondents could file a Response to the Complaint, via e-mail to all entities and persons listed on their registrations as technical, administrative, and billing contacts, and to postmaster@airsliftcompany.com, postmaster@airlifcompany.com, postmaster@airliftscompany.com. Also on April 6, 2022, the Written Notice of the Complaint, notifying the respondents of the e-mail addresses served and the deadline for a Response, was transmitted to the respondents via post and fax, to all entities and persons listed on their registrations as technical, administrative and billing contacts.
Having received no response, the Forum transmitted to the parties a Notification of Respondent Default.
On May 3, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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 the respondents.
Complainant requests that the domain names be transferred from the respondents to Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
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.”
Here the disputed domain names are each registered to a different holder. Nevertheless, Complainant contends that the names were all registered by the same person or entity because (i) none have been used; (ii) all are said to be typosquatted iterations of Complainant’s company name (and trademark); and (iii) they were registered within a year of each other.
It is well established that the Panel has discretion to allow a single proceeding against multiple names if an inference of common control can be drawn. That said, the submissions are not particularly compelling, and the Panel is in doubt that all three domain names are commonly held. In particular, the Panel finds no clear inference that <airlifcompany.com> is under the same control as either, or both, of the other two names.
The Forum’s Supplemental Rule 4(c)(ii) states that if the Panel determines that insufficient evidence is presented to link the alleged aliases, the domain names held by the unrelated registrants will not be subject to further consideration by the Panel. However, in this case and for the reasons which follow, the Panel has found that the Complaint only succeeds against the <airsliftcompany.com> name and so a final determination on the question of common control is not required.
It follows that references in this decision from this point forward to “Respondent” are references to the holder of the <airsliftcompany.com> only and further references to “the domain name” are references to <airsliftcompany.com> only.
A. Complainant
Complainant asserts trademark rights in AIR LIFT. Complainant holds national registrations for that trademark. Complainant submits that the disputed domain names are confusingly similar to its trademark.
Complainant alleges that the respondents have no rights or legitimate interests in the disputed domain names.
Complainant alleges that the respondents registered and used the disputed domain name in bad faith.
B. Respondents
The respondents each failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant manufactures and sells air-spring suspension and load support products for vehicles by reference to the trademark AIR LIFT which is registered, inter alia, with the United States Patent & Trademark Office (“USPTO”) as Reg. No. 665,307, from August 5, 1958;
2. the disputed domain name was registered in 2021 and has not been used other than in connection with an email address and email posing as emanating from Complainant’s business; and
3. there is no relationship between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating the trademark.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments (see, for example, WIPO Jurisprudential Overview 3.0 at ¶ 4.3; 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”)).
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights (see, for example, Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003)). Complainant therefore has rights as it provides proof of its registration of the trademark AIR LIFT with the USPTO, a national trademark authority.
For the purposes of comparison of the domain name with the trademark the gTLD, “.com”, can be disregarded (see, for example, Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Forum Dec. 31, 2007)). The disputed domain alters the trademark by addition of the letter, “s”, and the word, “company”. Both additions are trivial, and the trademark remains the distinctive and memorable part of the domain name (see, for example, Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”); Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018) (“The [<morganstonley.com> and <morganstainley.com>] Domain Names are confusingly similar to Complainant’s marks, as they fully incorporate the MORGAN STANLEY mark, varying it only by subtle misspellings, omitting a space between the words, and adding the generic top-level domain (“gTLD”) ‘.com.’”)).
The Panel finds the domain name to be confusingly similar to the trademark and therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your 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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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 need only make out a prima facie case that Respondent has no rights or legitimate interests in the domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see, for example, Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000‑0624).
There is no suggestion that Respondent might be commonly known by the disputed domain name, or that Respondent has any trademark rights. Complainant provides evidence that the domain name does not resolve to an active website. The only evidence of use is that of an email address using the domain name which has been used to send a message posturing as originating from Complainant with the nefarious intention of diverting monies away from Complainant.
The Panel finds that Complainant has made a prima facie case that Respondent lacks a right or interest in the domain name and so the onus shifts to Respondent (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.”)). Absent a Response that onus is not met and so the Panel finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and used in bad faith.
The Panel observes here that the Complaint fails against two of the domain names because there is no evidence of their use in any capacity and no evidence, generally, which might lend support to a finding of so-called passive holding in bad faith in line with the principles first enunciated in Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000).
Returning to the domain name, paragraph 4(b) of the Policy sets out four circumstances which are to be taken as evidence of the registration and use of a domain name in bad faith. The Panel finds that paragraph 4(b)(iv) has direct application. It states:
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website 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 website or location or of a product or service on the site or location.’
The Panel has already found the domain name to be confusingly similar to the trademark. The use on the domain name as described in email is clearly for commercial gain. The Panel finds that Respondent targeted Complainant’s trademark and business and so finds registration and use in bad faith (see, for example, See 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 under paragraph 4(b)(iv)).
The Panel finds that the third and final element of the Policy is satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED in respect of the domain name.
Accordingly, it is ORDERED that <airsliftcompany.com> be TRANSFERRED from Respondent to Complainant.
Having in both cases failed to establish one of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED in respect of <airlifcompany.com> and <airliftscompany.com> and it is ORDERED that those names REMAIN WITH Respondent.
Debrett G. Lyons, Panelist
Dated: May 5, 2022
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