Woodruff-Sawyer & Co. v. lucky wyne
Claim Number: FA2107001956454
Complainant is Woodruff-Sawyer & Co. (“Complainant”), represented by Janie L. Thompson of Hanson Bridgett LLP, California, USA. Respondent is lucky wyne (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <woodsruffsawyers.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 submitted a Complaint to the Forum electronically on July 23, 2021; the Forum received payment on July 23, 2021.
On July 26, 2021, NameCheap, Inc. confirmed by e-mail to the Forum that the <woodsruffsawyers.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 ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 27, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 16, 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, as well as to the attention of postmaster@woodsruffsawyers.com. Also, on July 27, 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 August 19, 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 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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is one of the largest insurance brokerage and consulting firms in the United States.
Complainant has rights in the WOODRUFF SAWYER service mark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 5,752,824, registered May 14, 2019.
Respondent registered the domain name <woodsruffsawyers.com> on March 2, 2021.
The domain name is confusingly similar to Complainant’s WOODRUFF SAWYER mark.
Complainant has not licensed or otherwise authorized Respondent to use the WOODRUFF SAWYER mark.
Respondent has not been commonly known by the domain name.
Respondent is not using the domain name in connection with either a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Instead, Respondent uses the domain name to pass itself off as Complainant’s senior account manager via contrived e-mail messages in furtherance of a fraudulent phishing scheme by which it seeks to divert wire transfers in payment for fake invoices.
The domain name resolves to a parked webpage with pay-per-click hyperlinks.
Respondent has no rights to or legitimate interests in the domain name.
The domain name is an example of typo-squatting.
Respondent registered the domain name with knowledge of Complainant’s rights in the WOODRUFF SAWYER mark.
Respondent both registered and now 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 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 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
Complainant has rights in the WOODRUFF SAWYER service mark sufficient for purposes of Policy ¶ 4(a)(i) by virtue 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).
Turning to the core question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <woodsruffsawyers.com> domain name is confusingly similar to Complainant’s WOODRUFF SAWYER service mark. The domain name incorporates the mark in its entirety, merely eliminating the space between its terms and adding two extraneous letters “s,“ plus 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, Western Alliance Bancorp. v. Brandon, FA 1783001 (Forum June 5, 2018):
Respondent’s … domain name is confusingly similar to Complainant’s … mark because it merely appends the gTLD ‘.info’ to a misspelled version of Complainant’s mark.
See also Vanguard Trademark Holdings USA LLC v. Shuai Wei Xu / Xu Shuai Wei, FA 1784238 (Forum June 1, 2018):
Respondent arrives at each of the disputed domain names by merely misspelling each of the disputed domain names and adding the gTLD ‘.com.’ This is insufficient to distinguish the disputed domain names from Complainant’s trademark.
Further see Gurney’s Inn Resort & Spa Ltd. v. Whitney, FA 140656 (Forum February 19, 2003):
[S]paces between words are not significant in determining the similarity of a domain name and a mark because … spaces are not reproducible in a domain name.
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent has neither rights to nor legitimate interests in the contested <woodsruffsawyers.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 does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 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 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 challenged domain name, and that Complainant has not licensed or otherwise authorized Respondent to use the WOODRUFF SAWYER mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Lucky Wyne,” 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 uses the <woodsruffsawyers.com> domain name to pass itself off as Complainant’s senior account manager via contrived e-mail messages in furtherance of a fraudulent “phishing” scheme by which it seeks to divert wire transfers in payment of fake invoices. 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, Abbvie, Inc. v. James Bulow, FA 1701075 (Forum November 30, 2016):
Respondent uses the at-issue domain name to pose as Complainant’s CEO by means of email addresses at the confusingly similar domain name in an attempt to determine Complainant’s ability to process a transfer. Using the domain name in this manner is neither a bona fide offering of goods and services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Further to the point, see Microsoft Corporation v. Terrence Green / Whois Agent, FA 1661030 (Forum April 4, 2016) (finding a respondent’s use of disputed domain names to send fraudulent email messages purportedly originating from agents of a UDRP complainant to be 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)).
Finally, under this head of the Policy, we take note of Complainant’s allegation to that the <woodsruffsawyers.com> domain name also resolves to a parked webpage featuring pay-per-click hyperlinks, from the operation of which Respondent presumably receives revenues in the form of pay-per-click fees. This employment is likewise 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). See, for example, Bloomberg Finance L.P. v. Syed Hussain / Domain Management, FA1582912 (Forum Nov. 10, 2014) (finding that a respondent’s use of a disputed domain name to host hyperlinks unrelated to a UDRP complainant’s business did not constitute either a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii)).
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s use of the challenged <woodsruffsawyers.com> domain name to resolve to a parked webpage featuring pay-per-click hyperlinks, from the operation of which Respondent presumably receives revenues in the form of pay-per-click fees, is an attempt by Respondent to profit illicitly from the confusion thus caused among Internet users as to the possibility of Complainant’s association with the domain name. Under Policy ¶ 4(b)(iv), this stands as proof of Respondent’s bad faith in registering and using the domain name. See, for example, Dovetail Ventures, LLC v. Klayton Thorpe, FA1625786 (Forum August 2, 2015) (finding that a respondent acted in bad faith under Policy ¶ 4(b)(iv) where it used a disputed domain name to host a variety of hyperlinks, unrelated to a UDRP complainant’s business, through the operation of which links that respondent presumably profited).
We are also convinced that Respondent’s use of the domain name in furtherance of a fraudulent “phishing” scheme disrupts Complainant’s business. Under Policy ¶ 4(b)(iii), this too stands as proof of Respondent’s bad faith in registering and using the domain name. See, for example, Abbvie, Inc. v. James Bulow, FA 1701075 (Forum November 30, 2016):
Respondent uses the … domain name to impersonate Complainant’s CEO. Such use is undeniably disruptive to Complainant’s business and demonstrates bad faith pursuant to Policy ¶ 4(b)(iii) ….
Moreover, it is plain from the record that the <woodsruffsawyers.com> domain name is an instance of typo-squatting, i.e.: the deliberate misspelling of the mark of another in a domain name, done in order to take advantage of common typing errors made by Internet users in entering into a web browser the name of an enterprise with which they wish to do business online. Typo-squatting is independent evidence of bad faith in the registration and use of a domain name. See, for example, Cost Plus Management Services, Inc. v. xushuaiwei, FA 1800036 (Forum Sept. 7, 2018); see also Homer TLC, Inc. v. Artem Ponomarev, FA1623825 (Forum July 20, 2015).
For these reasons, the Panel finds that Complainant has met 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 <woodsruffsawyers.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: August 30, 2021
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page