T-Mobile USA, Inc. dba MetroPCS v. Maria Rojo
Claim Number: FA1909001862089
Complainant is T-Mobile USA, Inc. dba MetroPCS (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Maria Rojo (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <metropscsfreesesy.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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 13, 2019; the Forum received payment on September 13, 2019.
On September 16, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <metropscsfreesesy.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 September 16, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 7, 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@metropscsfreesesy.com. Also on September 16, 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 October 10, 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
Complainant is the third wireless services providers in the United States. Complainant has rights in the METROPCS trademark through its trademark registrations around the world, including with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,803,097, registered Jan. 6, 2004). Respondent’s <metropscsfreesesy.com> domain name is confusingly similar to Complainant’s METROPCS trademark as it incorporates the trademark in its entirety, merely adding the letter “s,” the term “freesesy,” and a “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <metropscsfreesesy.com> domain name. Respondent is not licensed or authorized to use Complainant’s METROPCS trademark and 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 or services or a legitimate noncommercial or fair use. Rather, Respondent uses the domain name to pass off as Complainant in furtherance of a phishing scheme.
Respondent registered and uses the <metropscsfreesesy.com> domain name in bad faith. Respondent attempts to disrupt Complainant’s business and attract, for commercial gain, users to the disputed domain name where it passes off as Complainant as part of a phishing scheme. Furthermore, Respondent had actual knowledge of Complainant’s rights in the METROPCS trademark prior to registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant/s are two companies that merged in 2013, today trading as T-Mobile US. As the combined company in fact is acting as one company, the Panel will hereafter refer to them as a single Complainant, including the Panels notes and findings below on Complainant’s trademark rights.
The Complainant is the owner of the following U.S. trademark registrations:
No. 2,865,446 METROPCS (word), registered July 20, 2004 for goods in class 9;
No. 2,803,097 METROPCS (word), registered January 6, 2004 for services in class 38;
No. 4,484,674 METROPCS (word), registered February 18, 2014 for goods and services in classes 9, 35, 36 and 38;
No. 2,784,778 metroPCS (logo), registered November 18, 2003 for goods in class 9;
No. 2,792,316 metroPCS (logo), registered December 9, 2003 for services in class 38;
No. 4,480,888 metroPCS (logo), registered February 11, 2014 for goods and services in classes 9, 35, 36 and 38;
No. 3,542,846 metroPCS (logo), registered December 9, 2008 for goods and services in classes 9 and 38; and
No. 4,480,891 metroPCS (logo), registered February 11, 2014 for goods and services in classes 9, 35, 36 and 38.
Respondent registered the disputed domain name <metropscsfreesesy.com> on September 8, 2019.
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”).
The Complainant claims rights in the METROPCS trademark based upon registration of the trademark with the USPTO (e.g., Reg. No. 2,803,097, registered Jan. 6, 2004). Registration of a trademark with the USPTO is sufficient to establish rights in that trademark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). The Panel therefore holds that Complainant’s registration of the METROPCS trademark with the USPTO is sufficient to establish rights in the trademark under Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <metropscsfreesesy.com> domain name is confusingly similar to the METROPCS trademark, as the domain name incorporates the trademark, merely misspelling through the additional “s,” adds the term “freesesy” and a “.com” gTLD. Such changes are not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See PathAdvantage Associated v. VistaPrint Technologies Ltd, FA 1625731 (Forum July 23, 2015) (holding that the <pathadvantages.com> domain name was confusingly similar to the PATHADVANTAGE trademark because the domain name “merely adds the letter ‘s’ to Complainant’s mark”); see also Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). The Panel therefore determines that the <metropscsfreesesy.com> domain name is confusingly similar to the METROPCS mark per 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 that Respondent has no rights or legitimate interests in the <metropscsfreesesy.com> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the METROPCS trademark in any way. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by a 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). The WHOIS information of record identifies the registrant of the at-issue domain name as “Maria Rojo,” and no information on the record indicates that Respondent was authorized to register a domain name incorporating Complainant’s trademark. The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the <metropscsfreesesy.com> domain name.
Complainant further argues that Respondent’s lack of rights or legitimate interests in the <metropscsfreesesy.com> domain name is demonstrated by its failure to use the domain name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Complainant contends Respondent uses the disputed domain name to pass off as Complainant in furtherance of a phishing scheme. Such a use may definitely not be indicative of rights or legitimate interests under a Policy ¶¶ 4(c)(i) or (iii) analysis. See Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (refusing to find rights and legitimate interests in a domain name on the part of a respondent when the disputed domain name “resolves to a website that Respondent has designed to mimic Complainant’s own in an attempt to pass itself off as Complainant”); see also Enterprise Holdings, Inc. v. I S / Internet Consulting Services Inc., FA 1785242 (Forum June 5, 2018) (“On its face, the use of a domain name that is confusingly similar to the mark of another in order to facilitate a phishing scheme cannot be described as either 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).”). Complainant provides a screenshot of the disputed domain name’s resolving website which features Complainant’s METROPCS trademark, a similar color scheme, and a login feature that requires users to provide their phone number and account PIN. Therefore, the Panel clearly finds that Respondent lacks rights or legitimate interests in the disputed domain name per Policy ¶¶ 4(c)(i) or (iii)
Complainant claims that Respondent’s use of the <metropscsfreesesy.com> domain name to pass off as Complainant in order to operate a phishing scheme demonstrates that Respondent registered and used the domain name in bad faith. Use of a domain name to create a false impression of affiliation with a complainant in order to phish for users’ personal information is behavior indicative of bad faith registration and use per Policy ¶¶ 4(b)(iii) and (iv). See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that the respondent’s registration and use of the disputed domain name, which displayed a website virtually identical to the complainant’s website, constituted bad faith pursuant to Policy ¶ 4(b)(iii); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”). As the Panel has noted above, the Complainant provides a screenshot of the disputed domain name’s resolving website which features Complainant’s METROPCS trademark, a similar color scheme, and a login feature that requires users to provide their phone number and account PIN. The Panel therefore finds that Respondent registered and used the domain name in bad faith per Policy ¶¶ 4(b)(iii) and/or (iv).
Complainant also contends that in light of the fame and notoriety of Complainant's METROPCS trademark, it is inconceivable that Respondent could have registered the <metropscsfreesesy.com> domain name without actual knowledge of Complainant's rights in the trademark. Although panels have generally not regarded constructive notice as sufficient for a finding of bad faith, actual knowledge of Complainant’s trademark prior to registering is adequate to find bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Complainant further asserts that Respondent’s use of the domain name to feature the METROPCS trademark and related imagery indicates it had actual knowledge of Complainant’s rights. The Panel agrees and finds that Respondent had actual knowledge of Complainant’s rights in the trademark and thus registered the domain name in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <metropscsfreesesy.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: October 22, 2019
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