MontaRosa LLC v. Susan
Claim Number: FA2010001917090
Complainant is MontaRosa LLC (“Complainant”), represented by Jeremy Lateiner of Goodwin Procter LLP, New York, USA. Respondent is Susan (“Respondent”), Colorado, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <montarrosa.com>, registered with Google LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 15, 2020; the Forum received payment on October 15, 2020.
On October 16, 2020, Google LLC confirmed by e-mail to the Forum that the <montarrosa.com> domain name is registered with Google LLC and that Respondent is the current registrant of the name. Google LLC has verified that Respondent is bound by the Google 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 October 20, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 9, 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@montarrosa.com. Also on October 20, 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.
A timely Response was received and determined to be complete on November 3, 2020.
On November 5, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Respondent’s <montarrosa.com> domain name is confusingly similar to Complainant’s MONTAROSA mark.
2. Respondent does not have any rights or legitimate interests in the <montarrosa.com> domain name.
3. Respondent registered and uses the <montarrosa.com> domain name in bad faith.
B. Respondent claims that she is not the registrant of the <montarrosa.com> domain name.
Complainant, MontaRosa LLC, is a boutique executive search firm. Complainant has common law rights in the MONTAROSA mark under the Policy based upon continued and exclusive use of the mark in commerce since 2008.
Respondent registered the <montarrosa.com> domain name on October 3, 2020, and uses it to impersonate Complainant through email.
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.
Complainant asserts common law rights in the MONTAROSA mark based upon continued and exclusive use of the mark in commerce since 2008. Under Policy ¶ 4(a)(i), registration of a mark is unnecessary if common law rights in the mark can be established. See Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA 1625750 (Forum July 17, 2015) (“Complainant does not claim to own a trademark registered with a governmental authority. However, Policy ¶ 4(a)(i) does not require such registration if a complainant can demonstrate having common law rights.”). Common law rights may be established under Policy ¶ 4(a)(i) through evidence that the mark has acquired a secondary meaning. See Gordon & Rees LLP v. Peter Smith, FA 1618345 (Forum June 14, 2015) (finding that Complainant’s evidence is sufficient to establish secondary meaning, and thus Complainant holds common law rights in the GORDON & REES mark pursuant to Policy ¶ 4(a)(i) because “Complainant has provided evidence of its first use of the GORDON & REES mark for the purpose of practicing law beginning in Sept. 1974. Complainant has also provided evidence of media and consumer recognition, and business filings in several states in the United States.”). Complainant argues that it has dedicated significant resources and marketing efforts to develop and promote the MONTAROSA mark and brand and provides archived copies of its webpage showing continuous use since 2008. Respondent does not contest Complainant’s rights in the MONTAROSA mark. The Panel finds that Complainant has common law rights in the MONTAROSA mark for the purposes of Policy ¶ 4(a)(i).
Respondent’s <montarrosa.com> domain name uses the MONTAROSA mark and simply adds an extra “r” and the “.com” gTLD. These minor changes to a mark in a domain name are insufficient to overcome confusing similarity under Policy ¶ 4(a)(i). See Valpak Direct Mktg. Sys., Inc. v. Manila Indus., Inc., D2006-0714 (WIPO Aug. 17, 2006) (finding the <vallpak.com> domain name to be confusingly similar to the VALPAK mark under Policy ¶ 4(a)(i)). Therefore, the Panel finds that Respondent’s <montarrosa.com> domain name is confusingly similar to Complainant’s MONTAROSA mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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”).
Complainant argues that Respondent has no rights or legitimate interests in the <montarrosa.com> domain name because Respondent fails to use it for a bona fide offering of goods or services or a legitimate noncommercial or fair use and instead uses the domain name to impersonate Complainant through email. The use of a disputed domain name to pass off as a complainant through email does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Emerson Electric Co. v. Adilcon Rocha, FA 1735949 (Forum July 11, 2017) (finding that respondent’s attempt to pass off as complainant through emails does not constitute a bona fide offering of goods or services and, as such, respondent lacked rights or legitimate interests in the disputed domain name). Complainant provides uncontroverted evidence of fake emails sent to Complainant’s customers soliciting payments to Respondent. The Panel finds that this use is not a bona fide offering of goods or services or a legitimate noncommercial or fair use, and thus Respondent has no rights under Policy ¶¶ 4(c)(i) or (iii). The Panel notes that Respondent “Susan” bears no resemblance to the disputed domain name, and also finds that Respondent is not commonly known by the disputed domain name and thus has no rights under Policy ¶ 4(c)(ii). 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)).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and uses the <montarrosa.com> domain name in bad faith by impersonating Complainant in an email phishing scheme. Passing off as a complainant for phishing purposes is evidence of bad faith under Policy ¶ 4(b)(iii). See Microsoft Corporation v. Terrence Green / Whois Agent / Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr. 4, 2016) (finding the Respondent’s use of the disputed domain names to send fraudulent emails supported a finding of bad faith registration and use under Policy ¶ 4(b)(iii)). Accordingly, the Panel finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(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 <montarrosa.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: November 9, 2020
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