DECISION

 

CBS Maxpreps Inc. v. hendra uhe / uheshop

Claim Number: FA1911001872068

 

PARTIES

Complainant is CBS Maxpreps Inc. (“Complainant”), represented by Dennis L. Wilson of Kilpatrick Townsend & Stockton LLP, United States.  Respondent is hendra uhe / uheshop (“Respondent”), Indonesia.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <maxpreps.us>, registered with Hosting Concepts B.V. d/b/a Openprovider.

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on November 19, 2019; the Forum received payment on November 19, 2019.

 

On November 20, 2019, Hosting Concepts B.V. d/b/a Openprovider confirmed by e-mail to the Forum that the <maxpreps.us> domain name is registered with Hosting Concepts B.V. d/b/a Openprovider and that Respondent is the current registrant of the name. Hosting Concepts B.V. d/b/a Openprovider has verified that Respondent is bound by the Hosting Concepts B.V. d/b/a Openprovider registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).

 

On November 26, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 16, 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@maxpreps.us.  Also on November 26, 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 20, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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 to the usTLD Dispute Resolution Policy (“Rules”).  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.   Complainant

1.    Complainant, CBS MaxPreps Inc., is best known for specializing in the coverage of American high school sports. Complainant has rights in the MAXPREPS mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,233,098 registered Apr. 24, 2007). See Compl. Annex E. Respondent’s <maxpreps.us> domain name is identical to Complainant’s MAXPREPS mark. Respondent includes the entirety of the MAXPREPS mark and adds the “.us” generic top-level domain (“gTLD”).

2.    Respondent has no rights or legitimate interests in the <maxpreps.us> domain name as Respondent is not commonly known by the disputed domain name nor did Complainant authorize Respondent to use its MAXPREPS mark in any way. Respondent also fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent attempts to pass itself off as Complainant. Respondent also engages in a phishing scheme by obtaining personal information.

3.    Respondent registered and uses the <maxpreps.us> domain name in bad faith as Respondent attempts to pass itself off as Complainant. Respondent attempts to divert internet users away from Complainant for commercial gain. Respondent engages in a phishing scheme by attempting to obtain personal information. Lastly, Respondent had actual knowledge of Complainant’s rights in the MAXPREPS as evidenced by Respondent using Complainant’s mark and other indicators in its attempt to pass off as Complainant.

B.   Respondent

1.    Respondent failed to submit a response to this proceeding.

 

FINDINGS

1.    Respondent’s <maxpreps.us> domain name is confusingly similar to Complainant’s MAXPREPS mark.

2.    Respondent does not have any rights or legitimate interests in the <maxpreps.us> domain name.

3.    Respondent registered or used the <maxpreps.us> domain name in bad faith.

 

DISCUSSION

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 or is being used in bad faith.

 

Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.

 

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”).

 

Identical and/or Confusingly Similar

Complainant claims to have rights in the MAXPREPS mark through its registration with the USPTO. Registration of a mark with the USPTO is sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Here, Complainant has provided the Panel with a copy of its USPTO registration for the MAXPREPS mark (e.g. Reg. No. 3,233,098 registered Apr. 24, 2007). See Compl. Annex E. Therefore, the Panel finds that Complainant has adequately shown rights in the MAXPREPS mark per Policy ¶ 4(a)(i).

 

Complainant argues that Respondent’s <maxpreps.us> domain name is identical to Complainant’s MAXPREPS mark. Registration of a domain name that incorporates a mark in its entirety may be sufficient to establish that the domain name is identical to the mark per Policy ¶ 4(a)(i). See Cards Against Humanity, LLC v. sri winarti, FA 1736823 (Forum July 31, 2017) (“The Panel therefore finds Respondent’s <cardsagainsthumanity.us> to be identical to Complainant’s CARDS AGAINST HUMANITY mark.”). Furthermore, the addition of a gTLD is disregarded per Policy ¶ 4(a)(i). See Tupelo Honey Hospitality Corporation v. King, Reggie, FA 1732247 (Forum July 19, 2017) (“Addition of a gTLD is irrelevant where a mark has been fully incorporated into a domain name and the gTLD is the sole difference.”). Here, Complainant argues Respondent includes the entirety of the MAXPREPS mark and adds the “.us” gTLD. The Panel therefore finds the disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(c)(i).

 

Rights or Legitimate Interests

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), then the burden shifts to Respondent to show 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”).

 

There is nothing in the available evidence which indicates that Respondent has rights in a mark identical to the disputed domain name, which would serve to satisfy Policy ¶ 4(c)(i). See Pepsico, Inc. v. Becky, FA 117014 (Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)). Therefore, this Panel concludes that Respondent has failed Policy ¶ 4(c)(i).

 

Complainant argues Respondent lacks rights or legitimate interest in the <maxpreps.us> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been given license or consent to use the MAXPREPS mark or register domain names using Complainant’s mark. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(iii). 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 indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain name lists the registrant as “Hendra Uhe / Uheshop” and there is no other evidence to suggest that Respondent was authorized to use the MAXPREPS mark or was commonly known by the disputed domain name. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(iii).

 

Complainant argues that Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent attempts to pass itself off as Complainant. Use of a disputed domain name in an attempt to pass off as a complainant is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(ii) or (iv). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business). Here, Complainant has provided the Panel with a screenshot of Respondent’s <maxpreps.us> domain name that shows Complainant’s MAXPREPS and offering similar services that Complainant offers. See Compl. Annex M. Therefore, the Panel finds that Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(ii) or (iv).

 

Complainant further argues that Respondent uses the <maxpreps.us> domain name to engage in a phishing scheme to obtain personal information. Use of a disputed domain name to engage in a phishing scheme is indication that a respondent lacks any rights or legitimate interests in a domain name per Policy ¶ 4(a)(ii). See Morgan Stanley v. Zhange Sheng Xu / Zhang Sheng Xu, FA1501001600534 (Forum Feb. 26, 2015) (“The Panel agrees that the respondent’s apparent phishing attempt provides further indication that the respondent lacks any rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”). Here, Complainant has provided a screenshot of a link accessed form Respondent’s domain name that asks Internet users for personal information, such as name and credit card information. See Compl. Annex N. Therefore, the Panel finds that Respondent lacks any rights or legitimate interests in the disputed domain name per Policy ¶ 4(a)(ii).

 

Registration or Use in Bad Faith

Complainant argues that Respondent registered and used the <maxpreps.us> domain name in bad faith as Respondent attempts to pass itself off as Complainant. Use of a disputed domain name to pass off as a complainant may be evidence of bad faith per Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”). Here, Complainant has provided the Panel with a screenshot of Respondent’s <maxpreps.us> domain name that shows Complainant’s MAXPREPS and offering similar services that Complainant offers. See Compl. Annex M. Therefore, the Panel finds that Respondent registered and used the <maxpreps.us> domain name in bad faith per Policy ¶ 4(b)(iv).

 

Complainant further argues that Respondent attempts to divert internet users away from Complainant for commercial gain. Use of a disputed domain name to divert internet users for commercial gain through links competing and non-competing may be evidence of bad faith per Policy ¶ 4(b)(iv). See The Dress Barn, Inc. v. Pham Dinh Nhut, FA1503001611220 (Forum May 15, 2015) (“The Panel agrees that Respondent’s inclusion of various hyperlinks; some of which direct Internet users to competing websites of Complainant, some which direct Internet users to Complainant’s own website, and some of which are unrelated to Complainant’s business; evince bad faith attraction for commercial gain.”). Here, Complainant has provided the Panel with screenshots of Respondent’s <maxpreps.us> domain name’s resolving webpage that shows links to third parties that also may as for personal information. See Compl. Annexes M and N. Therefore, the Panel finds that Respondent has registered and used the disputed domain name in bad faith per Policy ¶ 4(b)(iv).

 

Complainant additionally argues that Respondent engages in a phishing scheme by attempting to obtain personal information from Internet users. Use of a disputed domain name to phish for Internet user’s personal information may be evidence of bad faith. See United States Postal Service v. kyle javier, FA 1787265 (Forum June 12, 2018) (“Use of a domain name to phish for Internet users’ personal information is evidence of bad faith.”). Here, Complainant has provided a screenshot of a link accessed form Respondent’s <maxpreps.us> domain name that asks Internet users for personal information, such as name and credit card information. See Compl. Annex N. Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(a)(iii).

 

Lastly, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the MAXPREPS by using Complainant’s mark and other indicators in its attempt to pass off as Complainant. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, actual knowledge of Complainant’s rights in the mark prior to registering the disputed domain name 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.”). Use of a disputed domain name that incorporates a complainant’s logo and other brand indicators may be evidence of actual knowledge per Policy ¶ 4(a)(iii). See Snap Inc. v. View Bird, FA1709001749823 (Forum Oct. 30, 2017) (use of the complainant’s logo and other brand indicia on the resolving website indicated the respondent had actual knowledge of the complainant when registering and using the domain name under Policy ¶ 4(a)(iii)). The Panel recalls that Complainant has provided screenshots of Respondent’s <maxpreps.us> domain name that show Complainant’s mark and other indicators of its services. See Compl. Annex M. Therefore, the Panel finds that Respondent had actual knowledge of Complainant’s rights in the marks which constitutes bad faith per Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <maxpreps.us> domain name be TRANSFERRED from Respondent to Complainant.

 

 

John J. Upchurch, Panelist

Dated:  January 3, 2020