Charles Schwab & Co., Inc. v. WhoisGuard Protected / WhoisGuard, Inc.
Claim Number: FA2012001925873
Complainant is Charles Schwab & Co., Inc. (“Complainant”), represented by Craig E. Radoci, Jr. of Holland & Hart LLP, Colorado, USA. Respondent is WhoisGuard Protected / WhoisGuard, Inc. (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <schwab.uk.com>, registered with NameCheap, Inc.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant participated in the mandatory CentralNic Mediation, and the mediation process was terminated on December 20, 2020.
Complainant submitted a Complaint to the Forum electronically on December 21, 2020; the Forum received payment on December 22, 2020.
On December 22, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <schwab.uk.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the CentralNic Dispute Resolution Policy (the “CDRP Policy”).
On December 23, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 12, 2021 by which Respondent could file a Response to the Complaint, via e-mail addressed to all entities and persons listed on Respondent’s registration as technical, administrative or billing contacts, and to postmaster@schwab.uk.com. Also, on December 23, 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 January 15, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 to the CDRP 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 CDRP Policy, CDRP Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a worldwide financial services firm doing business under the name and mark SCHWAB.
Complainant holds a registration for the SCHWAB service mark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 3,597,849, first registered on March 31, 2009, and renewed on June 2, 2018.
Respondent registered the domain name <schwab.uk.com> on or about October 8, 2020.
The domain name is identical or confusingly similar to Complainant’s SCHWAB service mark.
Respondent has not been commonly known by the domain name.
Complainant has not licensed or otherwise authorized Respondent to use its SCHWAB mark in a domain name.
Respondent does not use the domain name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use.
Respondent lacks both rights to and legitimate interests in the domain name.
Respondent’s use of the domain name disrupts Complainant’s business.
Respondent uses the domain name to acquire commercial gain.
Respondent registered the domain name with knowledge of Complainant’s rights in the SCHWAB mark.
Respondent registered and uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is substantively identical and confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name 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:
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered or is being used by Respondent in bad faith.
The CDRP also requires that Complainant have participated in a CentralNic Mediation, and that such mediation must have been terminated prior to the consideration of the Complaint.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the CDRP Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
In the absence of a response, the Panel is entitled to accept all reasonable allegations set out in a complaint. Therefore, in view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this administrative proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. 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 has rights in the SCHWAB service mark sufficient for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See, for example, DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum December 30, 2018):
Complainant’s ownership of a USPTO registration for … [its mark]… demonstrate[s] its rights in such mark for the purposes of Policy ¶ 4(a)(i).
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Panama). See, for example, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum August 24, 2010):
[T]he Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <schwab.uk.com> is substantively identical and confusingly similar to Complainant’s SCHWAB service mark.
The domain name incorporates the mark in its entirety, with only the addition of the country code Top Level Domain (“ccTLD”) “.uk” and the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See, for example, Dansko, LLC v. zhang wu, FA 1757745 (Forum December 12, 2017), a panel there finding the domain name <danskoshoes.us.com> to be confusingly similar to the DANSKO mark under Policy ¶ 4(a)(i), despite the inclusion in the domain name of the ccTLD “.us” and the gTLD “.com.” See also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum September 27, 2002):
[I]t is a well-established principle that … top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.
This is because every domain name requires a gTLD or other TLD.
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent lacks rights to or legitimate interests in the <schwab.uk.com> domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it has such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c)(i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <schwab.uk.com> domain name, and that Complainant has not licensed or otherwise authorized Respondent to use the SCHWAB mark in a domain name. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “WhoisGuard Protected / WhoisGuard, Inc.,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(ii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as “Bhawana Chandel,” and nothing in the record showed that that respondent was authorized to use a UDRP Complainant’s mark in any manner).
We next observe that Complainant asserts, without objection from Respondent, that Respondent employs the <schwab.uk.com> domain name to pass itself off as Complainant in furtherance of an email “phishing” scheme by means of which Respondent sends fraudulent solicitations to Complainant’s unsuspecting customers purporting to offer, on behalf of Complainant, to sell them bonds in a company which bonds Complainant does not in fact offer to its customers and despite the fact that Complainant has not authorized Respondent to do any business on its behalf. This employment is neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it 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, for example, Microsoft Corporation v. Terrence Green / Whois Agent / Whois Privacy Protection Service, Inc., FA 1661030 (Forum April 4, 2016) (finding a respondent’s use of disputed domain names to send fraudulent emails purportedly from agents of a UDRP complainant to be neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii)).
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
It is plain from the evidence that Respondent uses the <schwab.uk.com> domain name to pass itself off as Complainant in furtherance of a scheme by which Respondent seeks to profit illicitly by sending fraudulent email solicitations to Complainant’s unsuspecting customers purporting to offer, on behalf of Complainant, to sell them bonds in a company which bonds Complainant does not in fact offer to its customers and notwithstanding that Complainant has not authorized Respondent to do any business on its behalf. This demonstrates that Respondent has registered and uses the domain name in bad faith within the meaning of Policy ¶ 4(a)(iii). See, for example, Zoetis Inc. and Zoetis Services LLC v. VistaPrint Technologies Ltd, FA1506001623601 (Forum July 14, 2015):
Respondent’s attempt to use the … domain name … in fraudulent emails … constitutes bad faith [registration and use of the domain name] pursuant to Policy ¶ 4(a)(iii).
It is also plain from the evidence that Respondent knew of Complainant’s rights in the SCHWAB mark when it registered the <schwab.uk.com> domain name. This further illustrates Respondent’s bad faith in registering it. See, for example, Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum January 5, 2018):
[T]he fact Respondent registered a domain name that looked identical to the [Complainant’s] mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration [and thus registered the domain name in bad faith].
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <schwab.uk.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: January 22, 2021
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