American Petroleum Institute v. creativity vision / End of Creativity
Claim Number: FA1903001832793
Complainant is American Petroleum Institute (“Complainant”), represented by B. Brett Heavner of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., District of Columbia, USA. Respondent is creativity vision / End of Creativity (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <theenvironmental-partnership.org>, registered with GoDaddy.com, 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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 6, 2019; the Forum received payment on March 6, 2019.
On March 6, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <theenvironmental-partnership.org> 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 March 7, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 27, 2019 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@theenvironmental-partnership.org. Also on March 7, 2019, 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 March 29, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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
The Complainant is the leading trade association in USA for the petroleum and natural gas industry, and since 1919 has worked to promote, develop, and improve the petroleum and natural gas industry. Complainant has rights in the THE ENVIRONMENTAL PARTNERSHIP trademark through its registration of the trademark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 5,597,735, registered Oct. 30, 2018). Complainant also has common law rights in the trademark based on active advertising through press releases, its website, and other outlets. Respondent’s <theenvironmental-partnership.org> domain name is identical or confusingly similar to Complainant’s trademark as it entirely incorporates Complainant’s trademark THE ENVIRONMENTAL PARTNERSHIP and merely removes the spaces between the words, adds a hyphen, and adds the generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <theenvironmental-partnership.org> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the trademark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses an email address associated with the disputed domain name to impersonate Complainant and defraud Complainant, its members, its customers, and or other third parties. The disputed domain name does not resolve to an active webpage.
Respondent registered and uses the <theenvironmental-partnership.org> domain name in bad faith. Respondent disrupts Complainant’s business and commercially benefit by using an email address associated with the disputed domain name to impersonate Complainant in furtherance of phishing scheme aimed at defrauding Complainant, its members, its customers, and or other third parties. Respondent opportunistically registered the disputed domain name in bad faith based on the fact that Complainant publicly used the trademark for almost a year before Respondent registered the disputed domain name <theenvironmental-partnership.org> and Respondent uses the disputed domain name to pass off as Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the following U.S. trademark registrations:
No. 5,597,735 THE ENVIRONMENTAL PARTNERSHIP (word), registered October 30, 2018 for services in Class 42; and
No. 5,597,742 THE ENVIRONMENTAL PARTNERSHIP (word), registered October 30, 2018 for services in Class 35.
Respondent registered the <theenvironmental-partnership.org> domain name on September 6, 2018.
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 rights in the THE ENVIRONMENTAL PARTNERSHIP trademark based on its registration with the USPTO (e.g. Reg. No. 5,597,735, registered October 30, 2018). Registration of a trademark with the USPTO sufficiently confers a complainant’s rights in a trademark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). The Panel notes that the disputed domain name predates Complainant’s USPTO registration for the THE ENVIRONMENTAL PARTNERSHIP trademark; however, the relevant date of rights may extend back to the date of application. See Micha Advanced Health dba LEMYKA v. Shanshan Huang / This domain name is for sale, FA 1772893 (Forum Apr. 9, 2018) (“The relevant date for acquiring rights in a registered mark is the application filing date.”). The application date of Complainant’s trademark is October 11, 2017 with a first use in commerce dated January 1, 2018. Accordingly, the Panel finds that Complainant has established rights in the THE ENVIRONMENTAL PARTNERSHIP trademark for the purposes of Policy ¶ 4(a)(i).
Additionally, Complainant claims it hold common law rights in the THE ENVIRONMENTAL PARTNERSHIP trademark. Policy ¶ 4(a)(i) does not require a complainant to own a trademark prior to a respondent’s registration if it can demonstrate established common law rights in the trademark. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding that “The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”). To establish common law rights in a trademark, a complainant generally must prove that the mark has generated a secondary meaning. See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”). Complainant provides screenshots from its webpage showing its longstanding history and press releases promoting its organization. The Panel finds that Complainant does hold common law rights in the trademark for the purposes of Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <theenvironmental-partnership.org> domain name is identical or confusingly similar to Complainant’s trademark as Respondent deletes the spaces between words, adds a hyphen, and adds the gTLD “.org” to Complainant’s fully incorporated trademark. Similar changes in a registered trademark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See Research Now Group, Inc. v. Pan Jing, FA 1735345 (Forum July 14, 2017) (“The … elimination of spacing [is] considered irrelevant when distinguishing between a mark and a domain name.”). The Panel agrees with the Complainant that these changes does not sufficiently distinguish the disputed domain name from Complainant’s trademark, and finds that the <theenvironmental-partnership.org> domain name is at least confusingly similar to the THE ENVIRONMENTAL PARTNERSHIP trademark under Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also 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”).
Complainant argues Respondent lacks rights or legitimate interest in the <theenvironmental-partnership.org> domain name as Respondent is not commonly known by the disputed domain name nor has Complainant authorized the Respondent to use the THE ENVIRONMENTAL PARTNERSHIP trademark. WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). The WHOIS information for the disputed domain name lists the registrant as “creativity vision,” and there is no other evidence to suggest that Respondent was authorized to use the THE ENVIRONMENTAL PARTNERSHIP trademark. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant contends Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <theenvironmental-partnership.org> domain name. Specifically, Complainant argues that Respondent uses an email address associated with disputed domain name to attempt to pass off as Complainant in furtherance of phishing and to defraud Complainant, its members, its customers, and/or other third parties. Use of a disputed domain name to pass off as a complainant through emails cannot be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Emerson Electric Co. v. Adilcon Rocha, FA 1735949 (Forum July 11, 2017) (finding that respondent’s attempt to pass off as complainant through emails does not constitute a bona fide offering of goods or services and, as such, respondent lacked rights or legitimate interests in the disputed domain name). Therefore, the Panel finds that Respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name per Policy ¶¶ 4(c)(i) or (iii).
Additionally, Complainant argues that Respondent fails to make active use of the disputed domain name. Failure to use a disputed domain name in connection with an active webpage may indicate a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Kohler Co. v xi long chen, FA 1737910 (Forum Aug. 4, 2017) (”Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <kohler-corporation.com> resolves to an inactive webpage displaying the message “website coming soon!”). Complainant provides screenshots of disputed domain name resolving to a parked webpage and/or displaying an error message. Therefore, the Panel finds that Respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Complainant argues that Respondent uses an email address associated with the <theenvironmental-partnership.org> domain name to attempt to pass off as an employee of Complainant’s in furtherance of phishing and to defraud Complainant, its members, its customers, and/or other third parties. Using a disputed domain name to pass off as an employee of a complainant via email demonstrates bad faith under Policy ¶¶ 4(b)(iii) and/or (iv). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the <abbuie.com> domain name to impersonate Complainant’s CEO. Such use is undeniably disruptive to Complainant’s business and demonstrates bad faith pursuant to Policy ¶ 4(b)(iii), and/or Policy ¶ 4(b)(iv)”). Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Complainant further contends that Respondent registered the <theenvironmental-partnership.org> domain name in opportunistic bad faith. Registration of a disputed domain name shortly after a complainant files a trademark application can support a finding of opportunistic bad faith under Policy ¶ 4(a)(iii). See Arizona Board of Regents, for and on behalf of Arizona State University v. Weiping Zheng, FA1504001613780 (Forum May 28, 2015) (finding that the respondent had acted in opportunistic bad faith according to Policy ¶ 4(a)(iii), when it registered the disputed domain name just one week after the complainant filed applications to register the SUB DEVIL LIFE mark, and just days after those applications became public through the USPTO’s website). Complainant argues it publicly used the trademark and applied for trademark registration a year before Respondent registered the disputed domain name. Further, Respondent uses the disputed domain name to pass off as Respondent. Based on this information, the Panel finds that Respondent registered the disputed domain name in opportunistic bad faith per 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 <theenvironmental-partnership.org> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: April 11, 2019
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