The Trustees of Davidson College Corp. v. Timo Petr
Claim Number: FA2010001917271
Complainant is The Trustees of Davidson College Corp. (“Complainant”), represented by Amanda L. DeFord of McGuireWoods LLP, United States. Respondent is Timo Petr (“Respondent”), Turkey.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <davidson-edu.com>, registered with NameSilo, 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 16, 2020; the Forum received payment on October 16, 2020.
On October 16, 2020, NameSilo, LLC confirmed by e-mail to the Forum that the <davidson-edu.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 19, 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@davidson-edu.com. Also on October 19, 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 November 12, 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, The Trustees of Davidson College Corp., are responsible for the management of Davidson College, a liberal arts college established in 1837.
Complainants have rights in the DAVIDSON mark based on registration with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <davidson-edu.com> domain name is confusingly similar to Complainant’s mark as it simply adds the term “edu” and the “.com” generic top level domain (“gTLD”) to Complainant’s DAVIDSON mark.
Respondent does not have rights or legitimate interests in the <davidson-edu.com> domain name. Respondent is not commonly known by the at-issue domain name and Complainant has not licensed Respondent to use the DAVIDSON mark in any way. Additionally, Respondent does not use the domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain to resolve to a parked page with pay-per-click links and to send phishing emails to Complainant’s vendors.
Respondent registered and uses the <davidson-edu.com> domain name in bad faith. Respondent fails to make active use of the disputed domain name as it resolves to a parked page. Additionally, Respondent uses the at-issue domain name to send phishing emails. Furthermore, Respondent has constructive and/or actual knowledge of Complainant’s rights in the DAVIDSON mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has trademark rights in DAVIDSON.
Respondent is not affiliated with Complainant and is not authorized to use the DAVIDSON mark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired trademark rights in DAVIDSON.
Respondent uses the <davidson-edu.com> domain name to address a parked page with pay-per-click links and to support an email address used to perpetrate a phishing scheme aimed at Complainant’s vendors.
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 identical to a trademark in which Complainant has rights.
Complainant’s registration of the DAVIDSON mark with the USPTO sufficiently demonstrates Complainant’s rights in a mark under Policy ¶ 4(a)(i). See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).”).
Further, Respondent’s <davidson-edu.com> domain name contains Complainant’s entire DAVIDSON trademark followed by a hyphen and the suggestive abbreviation “edu” with all followed by the domain name-necessary generic top-level domain name, here “.com”. The slight difference between Complainant’s trademark and Respondent’s domain name does nothing to distinguish the at-issue domain name from Complainant’s trademark under Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent’s <davidson-edu.com> domain name is confusingly similar to Complainant’s DAVIDSON trademark. See Eastman Chem. Co. v. Patel, FA 524752 (Forum Sept. 7, 2005) (“Therefore, the Panel concludes that the addition of a term descriptive of Complainant’s business, the addition of a hyphen, and the addition of the gTLD ‘.com’ are insufficient to distinguish Respondent’s domain name from Complainant’s mark.”)); see also, Ant Small and Micro Financial Services Group Co., Ltd. v. Ant Fin, FA 1759326 (Forum Jan. 2, 2018) (“Respondent’s <antfinancial-investorrelations.com> Domain Name is confusingly similar to Complainant’s ANT FINANCIAL mark. It incorporates the mark entirely. It adds a hyphen, the descriptive terms “investor relations,” and the “.com” gTLD, but these additions are insufficient to distinguish the Domain name from complainant’s mark for the purposes of Policy ¶ 4(a)(i).”).
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 at-issue 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 identifies the domain name’s registrant as “Timo Petr” and the record before the Panel contains no evidence tending to prove that Respondent is commonly known by the <davidson-edu.com> domain name. The Panel therefore concludes that Respondent is not commonly known by the <davidson-edu.com> domain name for the purposes of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Moreover, Respondent uses the <davidson-edu.com> domain name to address a website that offers pay-per-click links and further exploits the domain name by using it to host email integral to a phishing scheme whereby Respondent, posing as Complainant, attempts to extract financial information from at-least one of Complainant’s vendors. It is reasonable to assume, and Complainant’s alleges, that Respondent’s use of the at-issue in this way is meant to stay detection of an underlying criminal caper through which Respondent seeks to misdirect Complainant’s legitimate payment to that vendor into an account owned or controlled by Respondent and/or his affiliates. Respondent’s use of the domain name to host pay-per-click links indicates neither a bona fide offering of goods or services under Policy ¶ 4 (c)(i), nor a non-commercial or fair use pursuant to 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 at-issue 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)). Likewise, Respondent’s phishing activity is not a bona fide offering of goods or services or legitimate noncommercial or fair use of the domain name per Policy ¶¶ 4(c)(i) or (iii). See Chevron Intellectual Property LLC v. Thomas Webber / Chev Ronoil Recreational Sport Limited, FA 1661076 (Forum Mar. 15, 2016) (finding that the respondent had failed to provide a bona fide offering of goods or services or any legitimate noncommercial or fair use, stating, “Respondent is using an email address to pass themselves off as an affiliate of Complainant. Complainant presents evidence showing that the email address that Respondent has created is used to solicit information and money on false pretenses. The disputed domain name is being used to cause the recipients of these emails to mistakenly believe Respondent has a connection with Complainant and is one of the Complainant’s affiliates.”).
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 under Policy ¶ 4(a)(ii).
The at-issue domain name was registered and is being used in bad faith. As discussed below without limitation, there is evidence from which the Panel may conclude that Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii).
As mentioned above regarding rights and interests, Respondent uses its <davidson-edu.com> domain name to address a website hosting pay-per-click links. Respondent’s use of the confusingly similar <davidson-edu.com> domain name in this manner shows bad faith registration and use under Policy ¶¶ 4(b)(iii) and (iv). See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent registered and used the domain name in bad faith under Policy ¶ 4(b)(iv) where the at-issue domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business).
Additionally and as also mentioned above regarding rights and legitimate interests, Respondent registered and uses the at-issue domain name in bad faith by employing it to facilitate a phishing scheme. Respondent’s use of the <davidson-edu.com> domain name to host and send phishing emails as discussed elsewhere herein is evidence of bad faith per Policy ¶ 4(a)(iii). See SHUAA Capital psc v. Oba Junkie / shuaa capital psc, FA14009001581255 (Forum Oct. 29, 2014) (“The Panel finds that Respondent’s use of the domain name’s e-mail suffix for fraudulent purposes illustrates Policy ¶ 4(a)(iii) bad faith.”); see also CoorsTek, Inc. v. Gwendolyn K Bohn / CoorsTek Inc, FA 1764186 (Forum Feb. 2, 2018) (“Respondent sent email to users seeking employment at Complainant’s business and asked for personal information such as a photo ID. Therefore, the Panel finds Respondent’s emails constitute a phishing scheme and this indicates bad faith registration and use per Policy ¶ 4(a)(iii).”).
Finally, Respondent had actual knowledge of Complainant’s rights in the DAVIDSON mark when it registered <davidson-edu.com> as a domain name. Respondent’s actual knowledge is evident from the notoriety of Complainant’s DAVIDSON trademark, from Respondent’s inclusion of the suggestive abbreviation “edu” in the domain name, and from Respondent’s use of the domain name to impersonate Complainant in connection with Respondent’s email based phishing scheme. Respondent’s registration and use of the confusingly similar <davidson-edu.com> domain name with knowledge of Complainant’s trademark rights in such domain name shows Respondent’s bad faith pursuant to Policy ¶ 4(a)(iii). See Immigration Equality v. Brent, FA 1103571 (Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii)."); see also, Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <davidson-edu.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: November 12, 2020
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