Brian Ullrich on behalf of Impact Fulfillment Services v. Maria N. Mattina
Claim Number: FA2106001951278
Complainant is Brian Ullrich on behalf of Impact Fulfillment Services (“Complainant”), North Carolina, USA. Respondent is Maria N. Mattina (“Respondent”), Michigan, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <impactfulfillmentservices.com>, registered with Fastdomain 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 16, 2021; the Forum received payment on June 16, 2021.
On June 16, 2021, Fastdomain Inc. confirmed by e-mail to the Forum that the <impactfulfillmentservices.com> domain name is registered with Fastdomain Inc. and that Respondent is the current registrant of the name. Fastdomain Inc. has verified that Respondent is bound by the Fastdomain 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 June 23, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 13, 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@impactfulfillmentservices.com. Also on June 23, 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 July 19, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 made the following contentions.
Complainant, Brian Ulrich on behalf of Impact Fulfillment Services, Inc, has common law rights in the IMPACT FULFILLMENT SERVICES mark. The disputed domain name is identical or confusingly similar because it wholly incorporates Complainant’s mark while adding in the “.com” generic top-level domain (“gTLD”) to form the domain name.
Respondent does not have any rights or legitimate interests in the <impactfulfillmentservices.com> domain name because the disputed domain name was created recently.
Respondent registered and uses the <impactfulfillmentservices.com> in bad faith because the resolving website is nonfunctional and Respondent’s use of the disputed domain name confuses potential consumers.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company incorporated by the North Carolina Secretary of State in 1998 that is a full-service logistics and fulfillment company and which changed its name to IMPACT FULFILLMENT SERVICES, Inc. in 2007 and has retained that name since then.
2. Complainant has established and is entitled to common law trademark rights in the IMPACT FULFILLMENT SERVICES mark by its use in commerce since at least 2007 and by virtue of establishing secondary meaning in the mark.
3. Respondent registered the disputed domain name on December 14, 2020.
4. The evidence established that the resolving website is nonfunctional and Respondent does not make any legitimate use of the domain name.
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 first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the IMPACT FULFILLMENT SERVICES mark based on common law rights. Under Policy ¶ 4(a)(i), a complainant is not required to own a registered trademark prior to the registration of the disputed domain name if the complainant can establish common law rights in the mark. See Psyonix Inc. v. robert gray / notpsyonix, FA 1759780 (Forum Jan. 3, 2018) (“Policy ¶ 4(a)(i) does not require a complainant to own a trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”). Therefore, the Panel agrees that Complainant need not provide evidence of a trademark registration to show its rights in the IMPACT FULFILLMENT SERVICES mark.
Complainant claims to have common law rights in the IMPACT FULFILLMENT SERVICES mark based on the use of mark in commerce. In that regard, Complainant was incorporated in 1998 and its name was changed to Impact Fulfillment Services, Inc., in 2007. At least since then Complainant has been associated in its business with that name. Common law rights in a mark may be established through evidence that the mark has acquired a secondary meaning. See Marquette Golf Club v. Al Perkins, 1738263 (Forum July, 27, 2017) (finding that Complainant had established its common law rights in the MARQUETTE GOLF CLUB mark with evidence of secondary meaning, including “longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising.”); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Forum Apr. 10, 2007) (finding that the complainant had common law rights in the JERRY DAMSON ACURA mark because it provided sufficient evidence of its continuous use of the mark since 1989 in connection with a car dealership). Here, Complainant has been in business since 1998 and provides copies of its articles of incorporation which show Complainant filed a name change with the North Carolina Secretary of State in 2007 and since then has been operating under the “Impact Fulfillment Services, Inc.” name. See Compl. Email Attachments 1-3. Therefore, the Panel finds that Complainant has rights in the IMPACT FULFILLMENT SERVICES mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s IMPACT FULFILLMENT SERVICES mark. Complainant argues that the <impactfulfillmentservices.com> domain name is identical or confusingly similar to Complainant’s IMPACT FULFILLMENT SERVICES mark because it wholly incorporates Complainant’s mark while adding the “.com” gTLD to form the domain name. The mere addition of a gTLD to a domain name is irrelevant in differentiating a domain name from a complainant’s mark. See SCOLA v. Wick, FA 1115109 (Forum Feb. 1, 2008) (concluding that “the domain name at issue is identical to [the] complainant’s SCOLA mark, as the only alteration to the mark is the addition of the generic top-level domain “.com.”). Therefore, the Panel finds that the <impactfulfillmentservices.com> domain name is identical or confusingly similar under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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), then 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”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a)Respondent has chosen to take Complainant’s IMPACT FULFILLMENT SERVICES mark and to use it in its domain name;
(b) Respondent registered the disputed domain name on December 14, 2020;
(c) The evidence established that the resolving website is nonfunctional and Respondent does not make any legitimate use of the domain name.
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name 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)). Here, the WHOIS information identifies “Maria N. Mattina” as the registrant. See Registrar Verification Email. Thus, the Panel finds that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii);
(f) Complainant does not make any specific arguments with regard to Policy ¶ 4(a)(ii). The Panel notes that use of a domain name to divert users from a complainant’s website to a respondent’s inactive website may be evidence of a domain name not being used in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also CrossFirst Bankshares, Inc. v. Yu-Hsien Huang, FA 1785415 (Forum June 6, 2018) (“Complainant demonstrates that Respondent fails to actively use the disputed domain name as it resolves to an inactive website. Therefore, the Panel finds that Respondent fails to actively use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).”). Complainant submits that the resolving website displays a phone number that is not answered nor may a message be left on it – only a pre-recorded message referencing an unrelated company. Therefore, the Panel finds that Respondent is not using the <impactfulfillmentservices.com> domain name in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and uses the <impactfulfillmentservices.com> domain name in bad faith because Respondent’s use of the disputed domain name may confuse potential consumers. Use of a disputed domain name to create confusion may be considered evidence of bad faith under Policy ¶ 4(b)(iv). See AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Forum Mar. 21, 2000) (finding bad faith where the respondent registered and used a domain name confusingly similar to the complainant’s mark to attract users to a website sponsored by the respondent). Here, Complainant states that when the user attempted to call Respondent at the phone number displayed on the resolving website, the message heard on the line identifying the organization as “Select Medical”, an organization unrelated to Complainant. Therefore, the Panel finds bad faith per Policy ¶ 4(b)(iv).
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the IMPACT FULFILLMENT SERVICES mark and in view of the conduct that Respondent has engaged in since acquiring the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <impactfulfillmentservices.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated July 20, 2021
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