Detrick Premier Carwash, Inc. v. Nick Korobkov
Claim Number: FA2001001880455
Complainant is Detrick Premier Carwash, Inc. (“Complainant”), represented by Tom W Winslow of Goldfinch Winslow, LLC, South Carolina, United States. Respondent is Nick Korobkov (“Respondent”), Ukraine.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <detrickscarwash.net> (“Domain Name”), 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.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 24, 2020; the Forum received payment on January 24, 2020.
On January 27, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <detrickscarwash.net> 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 January 31, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 20, 2020 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@detrickscarwash.net. Also on January 31, 2020, 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 February 25, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nicholas J.T. Smith 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 a car wash business with several locations in Myrtle Beach, South Carolina. Complainant asserts common law rights in the DETRICKS CAR WASH mark through continuous use in commerce since 2004. Complainant further asserts rights in the DETRICKS CAR WASH mark through its registration of the mark as a trade mark with the State of South Carolina on December 31, 2019. Respondent’s <detrickscarwash.net> domain name is identical or confusingly similar to Complainant’s DETRICKS CAR WASH mark as it includes the mark in its entirety, adding the “.net” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <detrickscarwash.net> domain name. Respondent is not commonly known by the Domain Name and Respondent is not a licensee or authorized to use Complainant’s mark in any fashion. Additionally, Respondent fails to use the Domain Name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent passes off as Complainant and uses the Domain Name in furtherance of a fraudulent phishing scheme.
Respondent registered and uses the <detrickscarwash.net> domain name in bad faith. Specifically, Respondent uses the Domain Name to pass off as Complainant and displays Complainant’s mark. Further, Respondent uses the Domain Name in furtherance of a fraudulent phishing scheme.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the DETRICKS CAR WASH mark. The Domain Name is identical to Complainant’s DETRICKS CAR WASH mark. Complainant has established that Respondent lacks rights or legitimate interests in the Domain Name and that Respondent registered and has used the Domain Name 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 DETRICKS CAR WASH mark through its registration of a device mark containing the words “Detricks Car Wash” mark with the State of South Carolina. The question of whether registration of a mark with a state trademark authority is sufficient to confer rights for the purposes of Policy ¶ 4(a)(i) is an open one with different Panels taking different views. See MadisonFlatFeeHomes.Com. LLC v. Stuart Meland, FA 1724843 (Forum May 13, 2013) (“Registration of a mark with a state authority can sufficiently evince rights in a mark.”). See also PK Information Systems, dba St Pete Software v. Kevin Kurpe, FA1835258 (Forum May 13, 2019) (“Complainant claims trademark rights based on a Florida state trademark registration for ST PETE SOFTWARE. As numerous Panels have held, a state trademark registration is not itself sufficient proof of “rights in a trademark” for purposes of the UDRP because state trademark applications typically are not examined on absolute grounds. In particular, in granting a state trademark registration, the Florida Department of State typically does not consider whether the applied-for term is generic or merely descriptive; rather, the Department of State will typically issue the registration as long as there are no identical registrations on the State registry. See generally Town of Easton Connecticut v. Lightning PC Inc., FA 0808001220202 (Forum Oct. 12, 2008) (explaining that no deference is due to state registrations because they are “usually granted automatically or only after a cursory review for exact matches on the State’s trademark registry.”)”)
The Panel prefers the reasoning in PK Information Systems however it is not necessary to decide this question given the findings below that Complainant holds common law rights in the DETRICKS CAR WASH mark for the purposes of Policy ¶ 4(a)(i).
To establish common law rights in a mark, 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.”).
It is apparent from Complainant’s website and the documents annexed to the Complaint that Complainant has operated a car wash business under the DETRICKS CAR WASH mark for over 15 years. This business operates from, at the date of the decision, 4 locations, each of which is prominently branded with the DETRICKS CAR WASH mark. The Complainant has also advertised itself under the DETRICKS CAR WASH mark and has received awards for its services. The Panel is satisfied that Complainant’s continuous use of the DETRICKS CAR WASH mark in trade and advertising is sufficient to establish secondary meaning in that mark and hence Complainant has common law rights in the DETRICKS CAR WASH mark for the purposes of Policy ¶ 4(a)(i).
The Panel finds that the <detrickscarwash.net> domain name is identical to Complainant’s DETRICKS CAR WASH mark as it fully incorporates the DETRICKS CAR WASH mark, removes the spaces between the words and adds the “.net” gTLD. These changes are insufficient to distinguish the Domain Name from the DETRICKS CAR WASH mark under Policy ¶ 4(a)(i). See NAED Education and Research Foundation, Inc. v. Domain Administrator / Marketing Express, FA 1602497 (Forum Mar. 23, 2015) (“The Panel agrees that the disputed domain name is identical to the NAED mark, and that the addition of a gTLD to the mark is not sufficient to rebut a finding of confusing similarity under Policy ¶ 4(a)(i).”).; see also Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because the domain name syntax requires TLDs.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the DETRICKS CAR WASH mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS lists “Nick Korobkov” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).
The Domain Name is presently inactive which by itself does not show a bona fide offering of goods and services. Complainant alleges, and provides evidence supporting its allegations, that prior to the commencement of the proceeding the Domain Name was redirected to a site that impersonated Complainant’s website including copying much of the formatting, copyrighted materials and details such as Complainant’s trading locations. Respondent then offers products, such as car wash insurance and gift cards from that website. In order to receive these services, consumers must provide their personal financial information to the Respondent, through what appears to be a PayPal link on the website accessed through the Domain Name. Such conduct is best characterized as “phishing” or simply fraud. Respondent’s use of the Domain Name to impersonate Complainant for the purpose of engaging in a phishing scheme to acquire financial information is not a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the at-issue domain name to pose as Complainant’s CEO by means of email addresses at the confusingly similar domain name in an attempt to determine Complainant’s ability to process a transfer. Using the domain name in this manner is neither a bona fide offering of goods and services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)”); see also Caterpillar Inc. v. ruth weinstein, FA 1770352 (Forum March 7, 2018) (“Use of a disputed domain name in an attempt to pass itself off as a complainant and to conduct a phishing scheme is indicative of a failure to use said domain name in connection with a bona fide offer of goods and services per Policy ¶ 4(c)(i) or a legitimate noncommercial or otherwise fair use per Policy ¶ 4(c)(iii).”);
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds that, at the time Respondent acquired the Domain Name, which is unclear but either August 1, 2012 or a date after August 1, 2012, Respondent had actual knowledge of Complainant’s DETRICKS CAR WASH mark. The Respondent has used the Domain Name to pass itself off as Complainant (including copying large portions of Complainant’s website) for financial gain (by defrauding customers of Complainant). In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and uses the Domain Name in bad faith as Respondent uses or has used the Domain Name to impersonate Complainant in furtherance of a phishing scheme. Use of a disputed domain name to impersonate a complainant in furtherance of a phishing scheme is evidence of bad faith per Policy ¶ 4(a)(iii). See Google Inc. v. Domain Admin / Whois Privacy Corp., FA1506001622862 (Forum Aug. 10, 2015) (finding that the respondent’s apparent use of the disputed domain name in furtherance of a ‘phishing’ scheme further established its bad faith registration and use of the disputed domain name under Policy ¶ 4(a)(iii)). Accordingly, the Panel finds that Respondent registered and uses the Domain Name in bad faith pursuant to Policy ¶ 4(b)(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 <detrickscarwash.net> domain name be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: February 26, 2020
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