Conduent, Inc. v. Nayeem Akbar
Claim Number: FA1911001870846
Complainant is Conduent, Inc. (“Complainant”), represented by Steven M. Levy, United States. Respondent is Nayeem Akbar (“Respondent”), United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <conduent.work>, registered with Network Solutions, 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.
Charles A. Kuechenmeister, Panelist.
Complainant submitted a Complaint to the Forum electronically on November 12, 2019; the Forum received payment on November 12, 2019.
On November 12, 2019, Network Solutions, LLC confirmed by e-mail to the Forum that the <conduent.work> domain name (the Domain Name) is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, 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 November 13, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of December 3, 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@conduent.work. Also on November 13, 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 December 5, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister 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 one of the world’s largest business process companies. It has rights in the CONDUENT mark based on its registration of that mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 5,297,518, registered Sep. 26, 2017). Respondent’s <conduent.work> Domain Name is identical to Complainant’s mark because it wholly incorporates the mark, merely adding the generic top-level domain (“gTLD”) “.work.”
Respondent has no rights or legitimate interests in the Domain Name. Respondent is not using the Domain Name in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use because the Domain Name resolves to a pay-per-click web site that hosts links to other businesses and Respondent is also using it to perpetrate a phishing scheme. Finally, Respondent is not commonly known by the Domain Name.
Respondent registered and is using the Domain Name in bad faith. It uses the confusingly similar Domain Name to attract, for commercial gain, Internet users seeking Complainant and to disrupt the business of Complainant. It also phishes for sensitive personal and private information from visitors to its web site, and Respondent had actual knowledge of Complainant and its mark when it registered the Domain Name.
B. Respondent
Respondent did not submit a Response in this proceeding.
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 Complainant to prove each of the following three elements to obtain an order cancelling or transferring the Domain Name:
(1) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) the 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, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations 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. Nevertheless, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. 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”), WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), at ¶ 4.3 (“In cases involving wholly unsupported and conclusory allegations advanced by the complainant, . . . panels may find that—despite a respondent’s default—a complainant has failed to prove its case.”).
The Panel finds as follows with respect to the matters at issue in this proceeding:
The Conduent mark was registered to Complainant with the USPTO (Reg. No. 5,297,518) on September 26, 2017 (Complaint Exhibit E). Complainant’s registration of its mark with the USPTO is sufficient to establish its rights in that mark for the purposes of Policy ¶ 4(a)(i). DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrates its rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
Respondent’s <conduent.work> Domain Name is identical or confusingly similar to Complainant’s mark as it incorporates the CONDUENT mark verbatim, merely adding the gTLD “.work.” These changes are not sufficient to distinguish the Domain Name from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist 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.); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The WIPO Overview 3.0 at ¶ 1.7, states that the test for confusing similarity “typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name.” Notwithstanding the changes described above, Complainant’s mark is clearly recognizable within the Domain Name.
For the reasons set forth above, the Panel finds that the Domain Name is identical or confusingly similar to the CONDUENT mark, in which Complainant has substantial and demonstrated rights.
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. 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”). If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0, at ¶ 2.1.
Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate a respondent’s rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) before any notice to the respondent of the dispute, the respondent has used or has made 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) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is 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 asserts that Respondent has no rights or legitimate interests in the Domain Name because (i) Respondent is not using the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use because the web site resolving from it is a classic pay-per-click site offering hyperlinks to other businesses, (ii) Respondent uses the Domain Name to phish for sensitive personal and private information, and (iii) Respondent is not commonly known by the Domain Name. These allegations are addressed as follows:
Complaint Exhibit F-1 is the home page for the web site resolving from the Domain Name. The name appearing at the top of this page is “Conduent.work” and the page features hyperlinks with titles including “Home Based Data Entry Jobs,” “Top Home Based Data Entry Jobs,” “High Paying At Home Jobs.” There are also links with titles relating to Dcon poison. Subsequent pages of the Exhibit display the results of clicking on the links named above. Two of them repeat the list of titles and links on the home page but do not offer any substantive information or process about job opportunities. The other two advertise various goods including medications, cookware and strategies for buying used Mercedes Benz automobiles. The last Exhibit F page displays a message from a “Linda Pope” explaining that the visitor has been found to qualify for employment with Complainant and requesting the visitor to send “Ms. Pope” his or her name, mailing and email addresses, telephone number, and a photo of the visitor holding a government-issued ID next to his or her face. Taken as a whole, the site is clearly commercial in nature, offering links to other web sites which offer various products not related to Complainant’s business. Respondent also falsely represents that the visitor has been accepted for employment with Complainant and solicits personal identifying information. Neither of these uses qualifies as a bona fide offering of goods or services for the purposes of Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use for the purposes of Policy ¶ 4(c)(iii). See Bloomberg Finance L.P. v. Syed Hussain / Domain Management, FA1410001582912 (Forum Nov. 10, 2014) (concluding that the respondent’s use of the disputed domain name to host hyperlinks, unrelated to the complainant’s business, did not qualify as a bona fide offering of goods or services, or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii)). See Virtu Financial Operating, LLC v. Lester Lomax, FA1409001580464 (Forum Nov. 14, 2014) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii) where the respondent was using the disputed domain name to phish for Internet users’ personal information by offering a fake job posting on the resolving website). The Panel finds that Respondent does not fit within the circumstances set forth in Policy ¶¶ 4(c)(i) and (iii).
The information furnished to the Forum by the registrar lists the registrant of the Domain Name as “Nayeem Akbar.” This name bears no resemblance to the Domain Name. Evidence could, of course, in a given case demonstrate that the respondent is commonly known by a domain name different from the name in which it registered the domain name, e.g., the case of a domain name incorporating the brand name of a specific product offered by and associated with the respondent. In the absence of any such evidence, however, UDRP panels have consistently held that WHOIS evidence of a registrant name which does not correspond with the domain name is sufficient to prove that the respondent is not commonly known by the domain name. See Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name); see also Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The Panel is satisfied that Respondent has not been commonly known by the Domain Name for the purposes of Policy ¶ 4(c)(ii).
Complainant has made its prima facie case. On the evidence presented, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
Policy ¶ 4(b) sets forth a nonexclusive list of four circumstances, any one of which if proven would be evidence of bad faith use and registration of a domain name. They are as follows:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s web site 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 web site or location or of a product of service on the respondent ‘s web site or location.
The evidence of Respondent’s conduct discussed above in the rights or legitimate interests analysis also supports a finding of bad faith registration and use, based upon the foregoing grounds stated in the Policy and upon additional grounds adopted by UDRP panels over the years. First, Respondent is clearly using the Domain Name to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its web site, as described in Policy ¶ 4(b)(iv). Respondent obtains commercial gain from its use of the Domain Name and the resolving web site. Pay-per-click sites are common on the Internet. Under the most common forms of business arrangements relating to these sites, when a visitor to Respondent’s site clicks on one of the links which appear there, Respondent receives compensation from the various web site owners who are forwarded from the site. Most likely, Respondent receives compensation based upon the number of hits the web site owners get from being linked to Respondent’s web site. See AllianceBernstein LP v. Texas International Property Associates - NA NA, Case No. D2008-1230 (WIPO, 2008) (the domain name resolved to a search directory site with links to third-party vendors and the panel inferred that the respondent received click-through-fees when site visitors clicked on those links), and Brownells, Inc. v. Texas International Property Associates, Case No. D2007-1211 (WIPO, 2007), (finding in similar cases that a respondent intentionally attempted to attract internet searchers for commercial gain). Respondent’s use of the Domain Name is commercial also because the various companies forwarded from the web sites benefit from the subsequent interest and purchases of those who visit the sites. UDRP panels have held that there only needs to be commercial gain sought by some party for the use to be commercial. See Focus Do It All Group v. Athanasios Sermbizis, Case No. D2000-0923 (WIPO, 2000) (finding that “[I]t is enough that commercial gain is being sought for someone” for a use to be commercial).
Complainant alleges that Respondent’s conduct also fits within the circumstances articulated by Policy ¶ 4(b)(iii). The Panel agrees that its conduct is likely disruptive, but it does not appear from the evidence that Respondent is a competitor of Complainant. Respondent’s business operations appear to be limited primarily to earning pay-per-click revenues. It is true that many of the links displayed on its home page relate to job placement opportunities but none of the web pages to which the links redirect the visitor actually offers job placement services, and the goods advertised there are wholly unrelated to Complainant’s services. Although some UDRP panels have found competition for the purposes of Policy ¶ 4(b)(iii) when the parties act “in opposition to each other,” many panels require some kind of direct, economic competition in order for a Policy ¶ 4(b)(iii) claim to be sustained. See Tribeca Film Center Inc. v. Lorenzo Brusasco-Mackenzie, Case No. 2000-1772 (WIPO April 10, 2000). This Panel favors the second view, concurring with the panel in Britannia Building Society v. Britannia Fraud Prevention, Case No. 2001-0505 (WIPO July 8, 2001) that to accept the interpretation first above described would “render so many parties ‘competitors’ as to dilute the Policy’s bad faith requirement beyond recognition.” Clearly, Respondent here does not offer the same types of services offered by Complainant and is not vying with Complainant for customers or business in the business consulting industry. In the absence of actual commercial competition between a complainant and a respondent, the respondent’s redirecting traffic to web sites of entities offering goods unrelated to the services offered by Complainant cannot logically fall within the circumstances stated in Policy ¶ 4(b)(iii). Respondent here cannot be considered a competitor for the purposes of Policy ¶ 4(b)(iii).
Complainant alleges that “potential victims receive an email inviting them to apply for a job at Complainant.” Neither the Complaint nor any of the exhibits explains how, by whom or on what basis these emails are sent. It is implied, however, that they originate from Respondent, likely using the Domain Name for the email account, and the Complaint alleges that recipients who respond are instructed to participate in an online interview using the Google Hangouts chat feature. Complaint Exhibit F-6 is a screenshot of this item. As described above, it displays a message from a “Linda Pope” explaining that the visitor has been found to qualify for employment with Complainant and requests the visitor to send “Ms. Pope” an email with his or her name, mailing and email addresses, telephone number, and a photo of the visitor holding a government-issued ID next to his or her face. Complainant argues that this constitutes phishing. Phishing is a fraudulent attempt to obtain sensitive information such as usernames, passwords and credit card details by disguising oneself as a trustworthy entity in an electronic communication. While the Complaint Exhibit F-6 does not solicit banking, credit card or pass code information it does ask for a mailing address, telephone number and a picture of the person with that person’s government-issued ID card. With this last item especially it appears that Respondent’s conduct here could reasonably be characterized as phishing. Further, the body of evidence surrounding this activity strongly suggests that further efforts to obtain additional, more sensitive information would be made if the dialog is continued and carried further. Policy ¶ 4(b) recognizes that mischief can assume many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. See Worldcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (January 5, 2005)l; see also Bloomberg Finance L.P. v. Domain Admin - This Domain is For Sale on GoDaddy.com / Trnames Premium Name Services, FA 1714157 (Forum Mar. 8, 2017) (determining that Policy ¶ 4(b) provisions are merely illustrative of bad faith, and that the respondent’s bad faith may be demonstrated by other allegations of bad faith under the totality of the circumstances). The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and using a confusingly similar domain name in furtherance of a phishing scheme is evidence of bad faith registration and use. See McKinsey & Company, Inc., and McKinsey Holdings, Inc. v. Privacy Protection, report abuse to / Registrar: DELTA-X Ltd., FA1409001580883 (Forum Oct. 25, 2014) (holding that the respondent had engaged in phishing, which is further evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii), when the respondent used the disputed domain name in an attempt to obtain Internet users’ personal information including their driver’s license number and name).
Finally, it is evident that Respondent had actual knowledge of Complainant and its mark when it registered the Domain Name in September 2019 (Amended Complaint Exhibit B establishes date of creation). Complainant’s CONDUENT mark has been used in commerce since 2017 and is known throughout the world (Complaint Exhibit D). Respondent copied that mark verbatim into the Domain Name, and it uses the mark in the name of the entity advertised on the resolving web site. Given the non-exclusive nature of Policy ¶ 4(b), registering a confusingly similar domain name with actual knowledge of a complainant’s rights in its mark has often been held to be evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Name in bad faith within the meaning of Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <conduent.work> Domain Name be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
December 6, 2019
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