United States Steel Corporation v. Daniel Knorpp
Claim Number: FA1905001842112
Complainant is United States Steel Corporation (“Complainant”), represented by Michael D. Lazzara, Pennsylvania, USA. Respondent is Daniel Knorpp (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ussteelco.com>, 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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 8, 2019; the Forum received payment on May 8, 2019.
On May 8, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <ussteelco.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 May 8, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 28, 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@ussteelco.com. Also on May 8, 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 May 29, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, 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
Complainant, United States Steel Corporation, has rights in the trademark U. S. STEEL based upon its longstanding use of the mark dating back to 1930 and its registration of the mark with the United States Patent and Trademark Office (“USPTO”) dating back to 2001. Respondent’s <ussteelco.com> domain name, registered on March 10, 2019, is confusingly similar to Complainant’s U. S. STEEL mark because it consists of a substantial part of the U. S. STEEL mark itself.
Respondent lacks rights or legitimate interests in the <ussteelco.com> domain name. Respondent is not authorized to use Complainant’s U. S. STEEL mark and it is not commonly known by the disputed domain name. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use because the active resolving website has been parked and displays monetized links to third-party companies.
Respondent registered and uses the <ussteelco.com> domain name in bad faith because Respondent attempts to attract, for commercial gain, users to the disputed domain name where Respondent creates a likelihood of confusion with Complainant’s U. S. STEEL mark for profit. Furthermore, Respondent registered and uses the <ussteelco.com> domain name in bad faith because Respondent had actual knowledge of Complainant’s U. S. STEEL mark prior to registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also 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”).
Complainant asserts rights in the U. S. STEEL trademark based upon its use in commerce and its registration with the USPTO. Registration of a mark with the USPTO is sufficient to establish rights in the mark pursuant to Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”) Therefore, the Panel finds that Complainant has rights in the U. S. STEEL mark per Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <ussteelco.com> domain name is confusingly similar to Complainant’s U. S. STEEL mark because it consists in substantial part of the mark itself. The addition of generic or descriptive terms and a gTLD to a complainant’s mark have been found insufficient to withstand a test of confusing similarity pursuant to Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)); see also The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”); see also Yahoo! Inc. v. HEIDI BUI, FA 1638878 (Forum Oct. 26, 2015) (finding that punctuation is not significant in determining the similarity of a domain name and mark). Here, the Panel notes that the disputed domain name wholly incorporates the U. S. STEEL mark with the addition of the generic and/or descriptive term “co” (a shorthand for “company”) and the “.com” gTLD. Therefore, the Panel finds that Respondent’s disputed domain name is confusingly similar to the Complainant’s U. S. STEEL mark.
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). Should it succeed in this effort, the burden then shifts to Respondent to show that it does have rights or legitimate interests. 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 that Respondent has no rights or legitimate interests in the <ussteelco.com> domain name as Respondent is not commonly known by the disputed domain name and is not authorized by Complainant to use the U. S. STEEL mark. Where a response is absent, WHOIS information can inform the question of whether the respondent is commonly known by the disputed domain name. 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). Additionally, lack of authorization to use a complainant’s mark may support a finding that the respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”) Complainant provides a copy of the WHOIS record for the disputed domain name and this indicates that Respondent is known as “Daniel Knorpp”. In the absence of a Response or other submission by the Respondent, no information of record in this case indicates that Respondent is known otherwise or that it was authorized to use the Complainant’s U. S. STEEL mark. Therefore, the Panel finds that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent lacks rights or legitimate interests in the <ussteelco.com> domain name because Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use in that the resolving website has been parked. A respondent is responsible for how a domain name is used, even if parked; furthermore, hosting links for goods or services which compete with a complainant’s business do not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See State Farm Mut. Auto. Ins. Co. v. Pompilio, FA 1092410 (Forum Nov. 20, 2007) (“As a rule, the owner of a parked domain name does not control the content appearing at the parking site. Nevertheless, it is ultimately [the] respondent who is responsible for how its domain name is used.”) Complainant provides a screenshot of the disputed domain name’s resolving parked webpage, which states “This Web page is parked for FREE” and which features what appear to be pay-per-click links[i]. Therefore, the Panel finds that Respondent has failed to provide a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant argues that Respondent registered and uses the <ussteelco.com> domain name in bad faith because Respondent had actual knowledge of Complainant’s U. S. STEEL mark prior to registering the disputed domain name. Prior decisions have found that a respondent’s appropriation of a complainant’s trademark is a clear intent to trade upon the complainant’s reputation and goodwill in order to confuse Internet users, thus constituting actual knowledge of the complainant’s mark prior to registration and bad faith per Policy ¶ 4(a)(iii). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (“Complainant contends Respondent’s appropriation of Complainant’s trademark was a clear intent to trade upon Complainant’s reputation and goodwill in order to confuse Internet users. Therefore, the Panel finds Respondent did have actual knowledge of Complainant’s mark prior to registration and this constitutes bad faith per Policy ¶ 4(a)(iii).”). Thus, the Panel agrees and finds that Respondent had actual notice of Complainant’s rights in the U. S. STEEL mark under Policy ¶ 4(a)(iii).
Complainant next argues that Respondent registered and uses the <ussteelco.com> domain name in bad faith because Respondent attempts to attract, for commercial gain, users to the disputed domain name where Respondent creates a likelihood of confusion with Complainant’s marks for profit. Bad faith registration has been found under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to a respondent’s own website and likely profiting such activity. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). Here, Complainant asserts that Respondent profits from its use of the disputed domain name and the pay-per-click nature of the website that results from the domain makes it highly likely that either the Respondent or the third parties listed in the website are commercially benefiting from the use of the domain name. Thus, the Panel finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <ussteelco.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: May 30, 2019
[i] Complainant provides a screenshot of the home page associated with the disputed domain name to support this contention but this only shows a number of category headings, not actual links to third-party websites. However, the Panel’s independent review of the <ussteelco.com> website confirms that there do exist pay-per-click links which lead to various third-party websites that offer goods or services in Complainant’s industry.
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page