Makita Corporation v. Jason A. Apodaca / De kill
Claim Number: FA2109001963906
Complainant is Makita Corporation (“Complainant”), represented by Deborah A. Wilcox of Baker & Hostetler LLP, Ohio, USA. Respondent is Jason A. Apodaca / De kill (“Respondent”), New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <makitaus.store> and <makita-us.store>, both of which are registered with Dynadot, Llc.
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 September 15, 2021; the Forum received payment on September 15, 2021.
On September 23, 2021, Dynadot, Llc; confirmed by e-mail to the Forum that the domain names <makitaus.store> and <makita-us.store> are registered with Dynadot, Llc; and that Respondent is the current registrant of the names. Dynadot, Llc; has verified that Respondent is bound by the Dynadot, Llc. 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 September 29, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 19, 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@makitaus.store and postmaster@makita-us.store. Also on September 29, 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 October 25, 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 names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
1. both of the domain names are registered with the same registrar;
2. they were registered within a month of each other;
3. each of the domain names resolves to a website which displays Complainant’s MAKITA trademark and alludes to Complainant’s primary goods – tools and tool sets; and
4. both of the domain names have, from time to time, resolved to an identical website that touts Makita® as being the owner of the website and has an appearance very similar to that of its authorized website found at: https://www.makitatools.com/.
To this may be added the fact that the two domain names are identical in composition save for the insertion of a hyphen in one of them. Because the identified respondents do not refute any of this, and because it appears from the evident facts that they cannot be explained by reference to mere coincidence, the Panel concludes that Complainant’s request must be granted. Accordingly, this Decision will refer to the pair of identified respondents throughout as a single Respondent. See, for example, Caterpillar v. Arendt, FA1789701 (Forum July 2, 2018):
The Panel finds that the domain names are under common control because the three domain names are constructed in the same manner, were registered on the same date with the same registrar, have been used in the same way, and use … [the same]… servers…. These elements are sufficient to find that the domain names were registered by the same domain name holder.
A. Complainant
Complainant is a manufacturer of power tools headquartered headquartered in Japan.
Complainant holds a registration for the MAKITA trademark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 3,798,357, registered June 8, 2010, and renewed as of June 20, 2020.
Respondent registered the domain name <makitaus.store> on August 11, 2021, and the domain name <makita-us.store> on September 1, 2021.
The domain names are confusingly similar to Complainant’s MAKITA mark.
Respondent is not licensed or otherwise authorized to use Complainant’s MAKITA mark.
Respondent has not been commonly known by either of the domain names.
Respondent fails to use either of the domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Instead, Respondent uses the domain names to pass itself off as Complainant online by mimicking Complainant’s official webpage in furtherance of a scheme to collect sensitive personal and financial information from Internet users.
Respondent thus uses the domain names to acquire illicit commercial gain.
Respondent has neither rights to nor legitimate interests in the domain names.
Respondent’s use of the domain names disrupts Complainant’s business.
Respondent knew of Complainant’s rights in the MAKITA mark at the time the disputed domain names were registered.
Respondent both registered and now uses the domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain names registered by Respondent are confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain names; and
(3) the same domain names were registered and are 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 MAKITA trademark 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 central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <makitaus.store> and <makita-us.store> domain names are confusingly similar to Complainant’s MAKITA trademark. Each of the domain names incorporates the mark in its entirety, with only the addition of a hyphen in one of them, and the inclusion in each of the country code “us,” an abbreviation for “United States,” and the generic Top Level Domain (“gTLD”) “.store,” the latter serving to underscore the commercial character of Respondent’s use of the domain names, as to which see the discussion of Respondent’s rights and bad faith in the registration and use of the domain names, below. These alterations of the mark, made in forming the domain names, do not save them from the realm of confusing similarity under the standards of the Policy.
See, for example, Ant Small and Micro Financial Services Group Co., Ltd. v. Ant Fin, FA 1759326 (Forum January 2, 2018):
Respondent’s … Domain Name is confusingly similar to Complainant’s … mark. It incorporates the mark entirely. It adds a hyphen, the descriptive terms “investor relations,” [which describes a facet of Complainant’s business] and the “.com” gTLD, but these additions are insufficient to distinguish the Domain name from complainant’s mark for the purposes of Policy ¶ 4(a)(i).
Specifically, Respondent’s inclusion of a hyphen (-) in one of the domain names is of no consequence to our analysis because a hyphen adds nothing to the meaning, nor does it change the phonetic character, of the result.
And, as to Respondent’s addition of a gTLD to Complainant’s mark in forming the domain names, see, for example, Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum September 27, 2002):
[I]t is a well-established principle that generic 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.
Finally, with respect to Respondent’s addition of the country designation “us” in the domain names, geographic references are perforce ignored in analyses conducted under Policy ¶ 4(a)(i). See, for example, Dollar Fin. Grp., Inc. v. Jewald & Assocs. Ltd., FA 96676 (Forum April 6, 2001):
The addition of ‘US’ or ‘USA’ does not alter the underlying mark held by the complainant.
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent has neither rights to nor legitimate interests in the <makita-us.store> and <makitaus.store> domain names, 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 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 <makitaus.store> and <makita-us.store> domain names, and that Complainant has not licensed or otherwise authorized Respondent to use the MAKITA trademark. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Jason A. Apodaca” and “De kill,” neither of which resembles one or the other of the domain names. 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 also observe that Complainant asserts, without objection from Respondent, that Respondent uses the <makitaus.store> and <makita-us.store> domain names to pass itself off as Complainant online by mimicking Complainant’s official webpage in furtherance of a scheme to collect sensitive personal and financial information from Internet users, a fraudulent practice commonly called “phishing,” and that Respondent thus uses the domain names to acquire illicit commercial gain. This employment is neither a bona fide offering of goods or services by means of the domain names under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of them 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, Morgan Stanley v. Zhange Sheng Xu / Zhang Sheng Xu, FA1600534 (Forum February 26, 2015):
The Panel agrees that the respondent’s apparent phishing attempt provides further indication that the respondent lacks any rights [to] or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
See also Dell Inc. v. Devesh Tyagi, FA 1785301 (Forum June 2, 2018):
Respondent replicates Complainant’s website and displays Complainant’s products. The Panel finds that this use is not a bona fide offering of goods or services under Policy ¶¶ 4(c)(i) & (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 employs the <makita-us.store> and <makitaus.store> domain names to operate a fraudulent phishing scheme in order to acquire illicit financial gain. This is without question proof of Respondent’s bad faith in registering and using the domain names. See, for example, Juno Online Servs., Inc. v. Iza, FA 245960 (Forum May 3, 2004) (concluding that a UDRP respondent’s use of a domain name that was “confusingly similar to Complainant’s mark, redirects Internet users to a website that imitates Complainant’s billing website, and is used to fraudulently acquire personal information from Complainant’s clients” was evidence of bad faith registration and use of that domain name).
It is also plain from the record that Respondent knew of Complainant and its rights in the MAKITA mark when it registered the challenged domain names. This further demonstrates Respondent’s bad faith in registering them. See, for example, Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum February 6, 2014):
The Panel … here finds actual knowledge [of a complainant’s mark at the time a UDRP respondent registered a confusingly similar domain name, and, therefore, its bad faith in registering it] through the name used for the domain and the use made of it.
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 domain names <makitaus.store> and <makita-us.store> be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: October 27, 2021
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