Delta Sigma Theta, Incorporated v. Hulmiho Ukolen / Poste restante
Claim Number: FA2007001905337
Complainant is Delta Sigma Theta, Incorporated (“Complainant”), represented by Gerben Law Firm, PLLC, District of Columbia, USA. Respondent is Hulmiho Ukolen / Poste restante (“Respondent”), Finland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <deltasigmatheta.com>, registered with Gransy, S.R.O., Gransy S.R.O D/B/A Subreg.Cz.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 21, 2020; the Forum received payment on July 21, 2020.
On Jul 30, 2020, Gransy, S.R.O., Gransy S.R.O D/B/A Subreg.Cz confirmed by e-mail to the Forum that the <deltasigmatheta.com> domain name is registered with Gransy, S.R.O., Gransy S.R.O D/B/A Subreg.Cz and that Respondent is the current registrant of the name. Gransy, S.R.O., Gransy S.R.O D/B/A Subreg.Cz has verified that Respondent is bound by the Gransy, S.R.O., Gransy S.R.O D/B/A Subreg.Cz 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 August 7, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 27, 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@deltasigmatheta.com. Also on August 7, 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 September 1, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant has rights in the DELTA SIGMA THETA mark through its registrations with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <deltasigmatheta.com> domain name is identical or confusingly similar to Complainant’s mark, as it entirely incorporates the mark and only adds the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <deltasigmatheta.com> as it is not commonly known by the at-issue domain name, and Complainant has not authorized or licensed Respondent to use the DELTA SIGMA THETA mark in the at-issue domain name. Respondent does not use the domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use. Instead, Respondent attempts to profit off of Complainant’s trademark by diverting internet users seeking Complainant’s website to the disputed domain name’s resolving website, where Respondent hosts pay-per-click links to online shops which sell unauthorized or counterfeit Greek life apparel.
Respondent registered and uses the at-issue domain name in bad faith by disrupting Complainant’s business for commercial gain. Respondent attempts to divert internet users seeking Complainant’s website to the domain name’s resolving website, where Respondent hosts pay-per-click hyperlinks to online counterfeit Greek life apparel shops.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the DELTA SIGMA THETA mark.
Complainant’s rights in the DELTA SIGMA THETA mark existed prior to Respondent’s registration of the at-issue domain name.
Respondent is not authorized to use Complainant’s trademark.
Respondent’s domain name addresses a website where Respondent hosts pay-per-click links to online shops which sell unauthorized or counterfeit apparel that competes with offerings by Complainant.
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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of a USPTO trademark registration for the DELTA SIGMA THETA mark evidences Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(I). See Microsoft Corp. v. Burkes, FA 652743 (Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
The at-issue domain name consists of Complainant’s entire DELTA SIGMA THETA trademark less its impermissible spaces, all followed by the top level domain name “.com.” The differences between the at-issue <deltasigmatheta.com> domain name and Complainant’s DELTA SIGMA THETA trademark are insufficient to distinguish the domain name from Complainant’s trademark for the purposes of the Policy. Therefore, the Panel finds that pursuant to Policy ¶ 4(a)(i) Respondent’s <deltasigmatheta.com> domain name is identical and similar to Complainant’s DELTA SIGMA THETA trademark See David Duchovny v. Alberta Hot Rods c/o Jeff Burgar, FA 1734414 (Forum July 4, 2017) (“Respondent arrives at the disputed domain name by simply taking Complainant’s mark in its entirety and adding the g TLD “.com”. This is insufficient to distinguish the disputed domain name from Complainant’s common law trademark.”).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the DELTA SIGMA THETA 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.
The WHOIS information for the at-issue domain name ultimately identifies the domain name’s registrant as “Hulmiho Ukolen.” The record before the Panel contains no evidence that otherwise tends to show that Respondent is commonly known by the <deltasigmatheta.com> domain name. The Panel therefore concludes that Respondent is not commonly known by the at-issue domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Furthermore and as elaborated below regarding bad faith, Respondent is attempting to trade on Complainant’s trademark to divert internet users looking for Complainant to a website controlled by Respondent. Respondent’s website displays pay-per-click links to third parties offering counterfeit products that compete with those offered by Complainant. Respondent’s use of the domain name in this manner constitutes neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use under Policy ¶ 4(c)(iii). See Walgreen Co. v. Privacy protection service - whoisproxy.ru, FA 1785188 (Forum June 10, 2018) (“Respondent uses the <walgreensviagra.net> domain name to pass itself off as Complainant and display links to a website offering products similar to those offered by Complainant. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶4(c)(i), nor a non-commercial or fair use under Policy ¶4(c)(iii).”); see also Wolverine World Wide, Inc. v. Fergus Knox, FA 1627751 (Forum Aug. 19, 2015) (finding no bona fide offering of goods or legitimate noncommercial or fair use existed where Respondent used the resolving website to sell products branded with Complainant’s MERRELL mark, and were either counterfeit products or legitimate products of Complainant being resold without authorization).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶ 4(a)(ii).
Respondent’s <dwfairport.com> domain name was registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present and permit the Panel to conclude that Respondent acted in bad faith regarding the at-issue domain name pursuant to paragraph 4(a)(iii) of the Policy.
As mentioned elsewhere herein, Respondent’s at-issue trademark identical domain name addresses a website displaying links to third parties. These pay-per-click links refer to competing and unlicensed online Greek life apparel stores, capitalize on Respondent’s misappropriation of Complainant’s trademark in the at-issue domain name to augment traffic to such links, and are disruptive to Complainant’s business. Respondent’s bad faith is thus demonstrated under Policy ¶¶ 4(b)(iii) and (iv). See Nestlé Waters North America, Inc. v. Domain Administrator / Fundacion Privacy Services LTD, FA 1792308 (Forum July 22, 2018) (Finding Respondent uses the domain names to point to a site which offers links relating to Complainant’s business. “Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, affiliation or endorsement of the web site likely to disrupt the business of the 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 <deltasigmatheta.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: September 2, 2020
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