McCartney Construction Company, Inc. v. maison Francis
Claim Number: FA2105001948855
Complainant is McCartney Construction Company, Inc. (“Complainant”), represented by Jake M. Gipson of Bradley Arant Boult Cummings LLP, Alabama, USA. Respondent is maison Francis (“Respondent”), New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mccartneyconstructionco.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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 May 27, 2021; the Forum received payment on May 27, 2021.
On May 28, 2021, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <mccartneyconstructionco.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 June 1, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 21, 2021 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@mccartneyconstructionco.com. Also on June 1, 2021, 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 June 24, 2021, 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant, McCartney Construction Company, Inc., operates a road and highway construction company in connection and offers aggregates for use in road construction. Complainant asserts common law rights in the MCCARTNEY CONSTRUCTION CO. mark based on its use in commerce since 1956. Respondent’s <mccartneyconstructionco.com> domain name, registered on October 21, 2020, is identical to Complainant’s mark, only differing by the omission of spaces and the addition of the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <mccartneyconstructionco.com> domain name as it is not commonly known by the disputed domain name and is neither an authorized user or licensee of the MCCARTNEY CONSTRUCTION CO. mark. Respondent also does not use the disputed domain name for any bona fide offering of goods or services, nor does it make a legitimate noncommercial or fair use thereof. Instead, Respondent resolves the disputed domain to a website that displays Complainant’s logo and physical address, but which shows a phone number and email address that do not lead to Complainant, all in an effort to pass Respondent off as Complainant in furtherance of a phishing scheme.
Respondent registered and uses the <mccartneyconstructionco.com> domain name in bad faith. Respondent attempts to pass itself off as Complainant to operate a phishing scheme in pursuit of commercial gain based upon confusion with Complainant’s mark. Additionally, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the MCCARTNEY CONSTRUCTION CO. mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name 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 name; and
(3) the disputed 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:
(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 common law rights in the MCCARTNEY CONSTRUCTION CO. mark. A showing of common law rights in a mark is sufficient to demonstrate rights in lieu of a registered trademark under Policy ¶ 4(a)(i). See Dickinson Financial Corporation v. DOMAIN MANAGER / WEB D. G. LTD., FA 1619461 (Forum June 19, 2015) (“The Policy does not require that Complainant’s trademark be registered by a government authority or agency to establish rights in the mark under ¶ 4(a)(i).”) Common law rights may be demonstrated through secondary meaning, or evidence of longtime use, public recognition, and advertising and marketing expenditures, among other factors. See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”). Here, Complainant provides evidence of its success in the road construction industry through current and archival screenshots of its own website, photographs of its construction equipment which have its logo affixed for display at job sites, samples of correspondence on its letterhead, and a list of over twenty awards it has won, all prior to Respondent’s creation of the disputed domain name. Based upon this evidence, the Panel finds that Complainant has demonstrated rights in the MCCARTNEY CONSTRUCTION CO. mark under Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <mccartneyconstructionco.com> domain name is identical to Complainant’s MCCARTNEY CONSTRUCTION CO. mark as the domain name merely omits the spaces within the mark and adds the “.com” gTLD. Such changes do not negate the otherwise identical or confusingly similar nature of a domain name under Policy ¶ 4(a)(i). See Rockwell Automation v. Zhao Ke, FA 1760051 (Forum Jan. 2, 2018) (“The disputed domain name <rockwellautomation.co> corresponds to Complainant's registered ROCKWELL AUTOMATION mark, with the space omitted and the ".co" top-level domain appended thereto. These alterations do not distinguish the domain name from Complainant's mark for purposes of the Policy.”) The Panel therefore finds that the disputed domain name is identical or at least confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name 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 argues that Respondent lacks rights and legitimate interests in the <mccartneyconstructionco.com> domain name as it is not commonly known by the disputed domain name and is neither an authorized user or licensee of the MCCARTNEY CONSTRUCTION CO. mark. In considering this issue relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name 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 name). The WHOIS information of record identifies “maison Francis” as the registrant of the disputed domain and Respondent has not come forward with any evidence that it is known otherwise. Thus, the Panel finds no basis upon which to conclude that Respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Additionally, Complainant argues that Respondent does not use the <mccartneyconstructionco.com> domain name for any bona fide offering of goods or services and that it does not make any legitimate noncommercial or fair use thereof, but instead attempts to pass itself off as Complainant as part of a phishing scheme. Use of an infringing domain name to pass oneself off as a Complainant in furtherance of a phishing scheme does not qualify as either a bona fide offer of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (”Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”). Complainant provides screenshots of the resolving website for the disputed domain name as evidence of Respondent’s attempts at impersonation and passing off. The site displays Complainant’s logo as well as an image of a construction site and text such as “McCarney Construction Co, Inc. is an information technology and services company based out of 331 N Albert Rains Blvd, Gadsden, Alabama, United States. We specialize in construction works for all industries.” While the referenced address is actually the location of one of Complainant’s facilities, a phone number and email address listed further down the page are not related to Complainant. Respondent has not filed a Response or made any other submission in this case and so it does not seek to rebut Complainant’s prima facie case or otherwise explain its actions. Based on a preponderance of the evidence submitted, the Panel concludes that Respondent is passing itself off as Complainant and very likely phishing for users’ personal and financial information. As such, it lacks rights or legitimate interests in the disputed domain under Policy ¶¶ 4(c)(i) and (iii).
Complainant asserts that Respondent registered the <mccartneyconstructionco.com> domain name with actual knowledge of Complainant’s rights in the MCCARTNEY CONSTRUCTION CO. mark. Under Policy ¶ 4(a)(iii), actual knowledge of another’s rights in a mark provides a solid foundation upon which to build a case of bad faith, and can be shown through Respondent’s use of the disputed domain. See Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum Jan. 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS 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.”). Here, the disputed domain name is identical to Complainant’s mark, and resolves to a website with Complainant’s logo and physical address. The Panel thus finds that actual knowledge was present on the part of Respondent.
Additionally, Complainant argues that Respondent registered and uses the <mccartneyconstructionco.com> domain name in bad faith because Respondent uses the disputed domain to pass itself off as Complainant and operate a phishing scheme. Such use constitutes bad faith attraction of users for commercial gain based on trademark confusion under Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”). As previously noted, Complainant provides screenshots of Respondent’s website at the disputed domain name as evidence of Respondent’s bad faith registration and use. The page clearly impersonates Complainant but provides phone and email contact information that is not associated with Complainant, most likely in an attempt at having potential customers contact Respondent. Respondent has not participated in this case and so it does not refute Complainant’s assertions or evidence. Based on the evidence and information before it, the Panel finds it highly likely that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mccartneyconstructionco.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: June 25, 2021
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