BigCommerce Pty Ltd v. Alfred William / Candace Hernandez
Claim Number: FA2010001918279
Complainant is BigCommerce Pty Ltd (“Complainant”), represented by Giulio E. Yaquinto of Pirkey Barber PLLC, Texas, US. Respondent is Alfred William / Candace Hernandez (“Respondent”), US.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bcqualitycontrol.com> and <bc-qualitycontrol.com>, registered with Paknic (Private) Limited and NameCheap, Inc..
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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 26, 2020; the Forum received payment on October 26, 2020.
On October 26, 2020 and October 30, 2020, Paknic (Private) Limited and NameCheap, Inc. confirmed by e-mail to the Forum that the <bcqualitycontrol.com> and <bc-qualitycontrol.com> domain names are registered with Paknic (Private) Limited and NameCheap, Inc. and that Respondent is the current registrant of the names. Paknic (Private) Limited and NameCheap, Inc. has verified that Respondent is bound by the Paknic (Private) Limited and NameCheap, Inc. 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 November 4, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 24, 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@bcqualitycontrol.com, postmaster@bc-qualitycontrol.com. Also on November 4, 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 27, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. 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 names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
In the instant proceeding, Complainant has alleged that the entities which own the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Where, as in the present case, it is not obvious from the WHOIS records that multiple disputed domain names are under common ownership, Panels have looked to other elements such as similar naming conventions and the content or operation of the domain names. See, e.g., Google LLC v. Marcelo Gonzalez, FA 1831623 (Forum May 9, 2019) (“The <telechargerplaystore.com> domain name redirects users to the <playstoretelecharger.net> domain name. This allows the Panel to conclude that the websites to which the disputed domain names resolve are subject to common control, as both domain names share the same website.”)
Here, Complainant contends that the two disputed domain names differ only by the use or absence of a single hyphen. Further, the <bc-qualitycontrol.com> domain name automatically redirects users to the website at <bcqualitycontrol.com>. Next, both disputed domain names are being used in connection with the same apparent phishing scam involving fake job offers. Finally, the WHOIS records for both disputed domain names show that they were created just over one week apart.
As Complainant has set forth a plausible case for the <bc-qualitycontrol.com> and <bcqualitycontrol.com> domain names being under common ownership or control, and as Respondent has not filed a Response or otherwise made any submission to contest Complainant’s case, the Panel finds it reasonable to conclude that both of the disputed domain names are owned or controlled by the same person and it will proceed with the remainder of this decision based on this conclusion.
A. Complainant
Complainant is a technology company founded in 2009 that employs over 700 people and offers a unique cloud-based ecommerce platform for online sellers. Complainant’s business allows users to create customizable online storefronts, powering both business-to-business and business-to-consumer transactions worldwide. Complainant has rights in the trademark BIGCOMMERCE mark through Complainant’s longstanding use thereof and its registration of the mark with the United States Patent and Trademark Office (“USPTO”) in 2010. Complainant also has trademark rights in the letters BC which are commonly used, by both Complainant and its customers, as an abbreviation of its BIGCOMMERCE mark. On October 22, 2020, Complainant filed an application to register the BC mark with the USPTO. Respondent’s <bcqualitycontrol.com> and <bc-qualitycontrol.com> domain names, registered on June 30, 2020 and July 8, 2020, respectively, are identical or confusingly similar to Complainant’s BIGCOMMERCE and BC marks as they merely add the generic term “quality control” and, in one case a hyphen, to the common abbreviation of BIGCOMMERCE, i.e., “BC.”
Respondent lacks rights or legitimate interests in the <bcqualitycontrol.com> and <bc-qualitycontrol.com> domain names. Respondent is not commonly known by the disputed domain names nor has Respondent been authorized by Complainant to use the BIGCOMMERCE or BC marks. Respondent has not used the disputed domain names in connection with a bona fide offering of goods or services as Respondent uses them to compete with Complainant through a job offer email and web-based phishing scheme. Furthermore, Respondent attempts to pass itself off as Complainant in furtherance of such scheme.
Respondent registered and uses the <bcqualitycontrol.com> and <bc-qualitycontrol.com> domain names in bad faith where the disputed domain names are employed in connection with a website that offers competing services with Complainant and an email phishing scheme. Through this scheme, Respondent attempts to pass itself off as Complainant and harvest personal information from recipients of its emails or those who visit its website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) each of the domain names registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain names; and
(3) each of the disputed domain names was registered and is being used by Respondent 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 and evidence 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 and supported 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 BIGCOMMERCE mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”). Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate [sic] its rights in such mark for the purposes of Policy ¶ 4(a)(i).”) Therefore, the Panel finds that Complainant has demonstrated rights in the BIGCOMMERCE mark per Policy ¶ 4(a)(i).
As for its asserted BC mark, the Panel notes that this is the subject of a pending trademark application. Pending trademark applications have, alone, been held not to satisfy the requirement of Policy ¶ 4(a)(i) for a showing of “a trademark or service mark in which the complainant has rights”. See Jireh Industries Ltd. v. DVLPMNT MARKETING, INC. / Domain Administrator, FA 1719671 (Forum Apr. 14, 2017) (“Pending trademark applications do not confer rights under Policy ¶ 4(a)(i).”) However, Registration of a trademark is not required when a complainant can demonstrate established common law rights in an asserted mark. 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.”) To establish common law rights in a name, a complainant generally must show extensive and continuous use in commerce such that the mark has developed a secondary meaning with respect to the complainant and its business. See Iacocca v. Tex. Int’l Prop. Assocs., FA 1088017 (Forum Nov. 29, 2007) (“In order to garner the benefit of common law trademark rights, Complainant must lay out, not only evidence of extensive and continuous use of the mark in commerce, but also evince some strong probability that as a result of such exposure, that consumers have come to associate the mark with Complainant, as to the source of the goods.”) In support of its claim, Complainant submits screenshots from its own website showing that it uses the letters BC to refer to its BIGCOMMERCE services in shorthand. Further, it submits images of questions and comments posted by its customers and user community dating back to 2016 as well as a Twitter post dating to 2010 and a YouTube video dated to August of 2020, both of which also use the letters to refer to Complainant. Finally, Complainant submits images of various Google search results for “bigcommerce” and “bigcommerce bc” which use the abbreviation BC in reference to Complainant and its services. On the basis of this uncontroverted evidence, the Panel finds that Complainant has demonstrated its ownership of common law trademark rights in the term BC sufficient to meet the threshold standard of Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <bcqualitycontrol.com> and <bc-qualitycontrol.com> domain names are identical or confusingly similar to Complainant’s BC mark as they merely add the generic term “quality control” to the mark which is a common abbreviation of the phrase BIGCOMMERCE. The addition of generic words and a gTLD to a mark (or to a common abbreviation of a mark) fails to sufficiently distinguish a disputed domain name from the mark per Policy ¶ 4(a)(i). See Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Svensson Viljae, FA 1784650 (Forum June 1, 2018) (finding confusing similarity where “[t]he disputed domain name <skechers-outlet.com> adds a hyphen and the generic term ‘outlet’ to Complainant's registered SKECHERS mark, and appends the ‘.com’ top-level domain.”); see also SEMCO Prods., LLC v. dmg world media (uk) ltd, FA 913881 (Forum Apr. 9, 2007) (finding that the <atlhomeshow.com> domain name was confusingly similar to the complainant’s ATLANTA HOME SHOW mark, as “atl” was a common abbreviation for the city of Atlanta). Therefore, as the <bcqualitycontrol.com> and <bc-qualitycontrol.com> domain names add the term “qualitycontrol”, the “.com” gTLD, and, in one case, a hyphen to Complainant’s BC mark which functions both as a trademark and a common abbreviation of the BIGCOMMERCE mark, the Panel finds that each of the disputed domain names is confusingly similar to Complainant’s marks per Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii). Should it succeed in this effort, the burden then shifts to Respondent to show that 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 contends that Respondent lacks rights or legitimate interests in the <bcqualitycontrol.com> and <bc-qualitycontrol.com> domain names as Respondent is not commonly known by the disputed domain names nor has Complainant authorized or licensed to Respondent any rights in the BIGCOMMERCE or BC marks. In considering this issue, relevant WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA 1626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain names); see also 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 names 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 a respondent is not commonly known by the disputed domain names. 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 names per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain names, as revealed by the concerned Registrars after the Complaint was filed, lists the registrants as “Candace Hernandez” and “Alfred William,” and Complainant argues that there is no other evidence to suggest that Respondent is known otherwise or that it was authorized to use the BIGCOMMERCE or BC marks. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names per Policy ¶ 4(c)(ii).
Complainant next argues that Respondent fails to use the <bcqualitycontrol.com> and <bc-qualitycontrol.com> domain names in connection with a bona fide offering of goods or services and fails to make a legitimate noncommercial or fair use thereof as Respondent uses the disputed domain names to compete with Complainant. Using a confusingly similar domain name to compete with a complainant may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Vanguard Trademark Holdings USA LLC v. Dan Stanley Saturne, FA 1785085 (Forum June 8, 2018) (“Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use” where “Respondent is apparently using the disputed domain name to offer for sale competing services.”) Here, Complainant argues that the disputed domain names are used in connection with a website that offers e-commerce employment related services that appear to compete with Complainant because the website claims it was created to “simplify logistics” for online sellers and touts that it was “voted [the] #1 ecommerce inspection service.” Respondent has not participated in this case and does not contest this evidence or Complainant’s assertions. On the balance of the evidence before it, the Panel finds that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Complainant also argues that Respondent fails to use the <bcqualitycontrol.com> and <bc-qualitycontrol.com> domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent passes itself off as Complainant in furtherance of a phishing scheme. Using a confusingly similar domain name to pass oneself off as a complainant in furtherance of a phishing scheme may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See United States Postal Service v. Kehinde Okunola / Genuine ICT Centre, FA 1785420 (Forum June 6, 2018) (“Respondent uses the <uspscouriers.com> domain name both to sell services competing with the business of Complainant and to phish for personal identification information from Internet users. Neither of these uses of the domain name constitutes a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy.”); see also Emerson Electric Co. v. Adilcon Rocha, FA 1735949 (Forum July 11, 2017) (finding that respondent’s attempt to pass itself 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 names). Here, Complainant claims that, within a few weeks after the disputed domain names were registered, it “had received at least four reports from consumers who were confused by fake job postings created by Respondent.” Unfortunately, Complainant does not submit copies of any of these emails. However, it does submit a copy of a “job packet” that was sent to recipients of Respondent’s alleged emails, or who otherwise went to Respondent’s website to show interest in the job posting for a work-at-home e-commerce quality control inspector. Both this job packet and Respondent’s website that resolves from the disputed domains (screenshots of which are also submitted by Complainant) prominently display Complainant’s BIGCOMMERCE mark and the letters BC in a logo form, and on a page that also uses a blue color scheme similar to that used by Complainant. The job packet contains a “Payroll Delivery Form” in which applicants are asked to submit information such as their bank routing and account numbers, and a “Job Offer Letter” that has a space for the application to write its signature. Further, Respondent’s website appears to have copied much of its text and graphic content from a third-party website and, under the heading “Meet Our Team”, Respondent seems to have copied the photograph of an unrelated individual that appears on the popular LinkedIn.com social media site. Complainant submits copies of Respondent’s website, the third-party site, and the concerned LinkedIn page. In view of this evidence, Complainant argues that consumers apply for jobs with Respondent, wrongly thinking that the employment listing belongs to Complainant, and then Respondent seeks to harvest personal information from such applicants through a phishing scheme without ever offering any jobs with Complainant or any other company. In light of this evidence, the Panel finds that Respondent is using the disputed domain names in connection with a phishing scheme and that it fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use thereof per Policy ¶¶ 4(c)(i) or (iii).
Complainant contends that Respondent registered and uses the <bcqualitycontrol.com> and <bc-qualitycontrol.com> domain names in bad faith as Respondent uses the disputed domain names to offer competing services. Using a confusingly similar domain name to offer competing services can demonstrate bad faith per Policy ¶¶ 4(b)(iii) and (iv). See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA 1762308 (Forum Jan. 9, 2018) (Finding that Respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under Policy ¶ 4(b)(iii)); see also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”) As noted above, Complainant submits evidence and argues that Respondent’s resolving website offers services closely related to Complainant’s ecommerce platform. Therefore, the Panel finds that Respondent registered and uses the disputed domain names in bad faith per Policy ¶¶ 4(b)(iii) and (iv).
Complainant also contends that Respondent registered and uses the <bcqualitycontrol.com> and <bc-qualitycontrol.com> domain names in bad faith to pass itself off as Complainant in furtherance of a phishing scheme. Using a confusingly similar domain to pass oneself off as a complainant in furtherance of a phishing scheme can demonstrate bad faith per Policy ¶¶ 4(b)(iv) and 4(a)(iii). See Qatalyst Partners LP v. Devimore, FA 1393436 (Forum July 13, 2011) (finding that using the disputed domain name as an e-mail address to pass itself off as the complainant in a phishing scheme is evidence of bad faith registration and use). As noted above, Complainant fails to provide screenshots of any phishing emails but it does submit other evidence to show that Respondent attempts to pass itself off as Complainant and solicit banking and other personal information from potential job applicants as part of a job search phishing scheme. Respondent has submitted no defense to explain its actions and so, upon a preponderance of the evidence presented, the Panel finds that Respondent registered and uses the disputed domain names in bad faith per Policy ¶¶ 4(b)(iv) and 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 <bcqualitycontrol.com> and <bc-qualitycontrol.com> domain names be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: November 30, 2020
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