Woodruff-Sawyer & Co. v. boo yang
Claim Number: FA2109001964846
Complainant is Woodruff-Sawyer & Co. (“Complainant”), represented by Garner Weng of Hanson Bridgett LLP, California, USA. Respondent is boo yang (“Respondent”), Malta.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <woodruffssawyer.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 22, 2021; the Forum received payment on September 22, 2021.
On September 25, 2021, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <woodruffssawyer.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 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@woodruffssawyer.com. 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 Sandra J. Franklin 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
1. Respondent’s <woodruffssawyer.com> domain name is confusingly similar to Complainant’s WOODRUFF SAWYER mark.
2. Respondent does not have any rights or legitimate interests in the <woodruffssawyer.com> domain name.
3. Respondent registered and uses the <woodruffssawyer.com> domain name in bad faith.
B. Respondent did not file a Response.
Complainant, Woodruff-Sawyer & Co., operates an insurance brokerage and consulting firm. Complainant holds a registration for the WOODRUFF SAWYER mark with the United States Patent and Trademark Office (“USPTO”) (Reg. 5,752,824, registered May 14, 2019).
Respondent registered the <woodruffssawyer.com> domain name on July 27, 2021, and uses it to conduct a phishing scheme and to offer it for sale.
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 Panel finds that Complainant has rights in the WOODRUFF SAWYER mark under Policy ¶ 4(a)(i) through its registration with the USPTO. See Ecolab USA Inc. v. (name redacted), FA 2003001888902 (Forum Apr. 20, 2020) (“Complainant’s ownership of a USPTO registration for ECOLAB is sufficient to demonstrate its rights in a mark for the purposes of Policy ¶ 4(a)(i).”).
Respondent’s <woodruffssawyer.com> domain name uses the WOODRUFF SAWYER mark and simply adds an “s” and the “.com” gTLD. Such changes are not sufficient to distinguish a domain name from a mark under Policy ¶ 4(a)(i). See Twitch Interactive, Inc. v. Antonio Teggi, FA 1626528 (Forum Aug. 3, 2015) (finding the <twitcch.tv> domain name confusingly similar to the TWITCH TV trademark because the domain name consisted of a common misspelling of the mark by merely adding the letter “c”); see also KW KONA INVESTORS, LLC v. Privacy.co.com / Privacy.co.com, Inc Privacy ID# 923815, FA 1784456 (Forum June 11, 2018) (“[T]he omission of spacing and addition of a gTLD are irrelevant in determining whether the disputed domain name is confusingly similar.”). Thus, the Panel finds that Respondent’s <woodruffssawyer.com> domain name is confusingly similar to Complainant’s WOODRUFF SAWYER mark.
The Panel finds that complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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”).
Complainant argues that Respondent lacks rights and legitimate interests in the <woodruffssawyer.com> domain name as it is not commonly known by the disputed domain name and is not an authorized user the WOODRUFF SAWYER mark. The WHOIS information of record identifies “boo yang” as the registrant of the disputed domain name. The Panel therefore finds that Respondent is not commonly known by the disputed domain name, and thus has no rights under Policy ¶ 4(c)(ii). See Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name).
Complainant also argues that Respondent does not use the <woodruffssawyer.com> domain name for a bona fide offer of goods or services or a legitimate noncommercial or fair use, because it uses the domain name to host an inactive website. Failing to make active use of an infringing domain name does not qualify as a bona fide offering or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Dell Inc. v. link growth / Digital Marketing, FA 1785283 (Forum June 7, 2018) (“Respondent’s domain names currently display template websites lacking any substantive content. The Panel finds that Respondent has does not have rights or legitimate interests with respect of the domain name per Policy ¶¶ 4(c)(i) or (iii).”). Complainant provides screenshots demonstrating that the website at <woodruffssawyer.com> is inactive. Therefore, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶¶ 4(c)(i) and (iii).
Complainant also points to Respondent’s use of an email account associated with the <woodruffssawyer.com> domain name as evidence of Respondent’s lack of rights and legitimate interests. Previous Panels have noted that passing off in an attempt to phish for an internet user’s personal and financial information does not constitute a bona fide offer or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Microsoft Corporation v. Terrence Green / Whois Agent / Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr. 4, 2016) (finding the respondent’s use of the disputed domain names to send fraudulent emails purportedly from agents of 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)). Complainant provides copies of emails sent by Respondent using the disputed domain name fraudulently. The Panel finds that this further demonstrates Respondent’s lack of rights and legitimate interests in the disputed domain name under Policy ¶¶ 4(c)(i) and (iii).
Complainant also provides copies of emails between the parties as evidence that Respondent offered to sell the disputed domain name. The Panel finds that this is also not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or 4(c)(iii). See Collective Brands Cooperatief U.A. v. ecole c/o Eric Cole, FA1006001328023 (Forum July 8, 2010) (“The Panel finds that general offers to sell the disputed domain name do not establish a bona fide offering of goods or services or a legitimate noncommercial or fair use in keeping with Policy ¶¶ 4(c)(i) or 4(c)(iii).”).
Complainant further contends that Respondent’s <woodruffssawyer.com> domain name shows typosquatting, the intentional misspelling of a domain name to divert traffic from Complainant’s to Respondent’s website. The Panel agrees and finds further evidence that Respondent lacks rights and legitimate interests in the disputed domain name. See Webster Financial Corporation and Webster Bank, National Assocation v. Pham Dinh Nhut, FA1502001605819 (Forum Apr. 17, 2015) (“Respondent’s acts of typosquatting provide additional evidence that respondent lacks rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii).”).
The Panel finds that complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent’s use of an email account associated with the <woodruffssawyer.com> domain name, to pass off as an agent of Complainant and obtain payment from Internet users, demonstrates bad faith. Under similar circumstances, previous Panels have found bad faith disruption and attraction for commercial gain under Policy ¶¶ 4(b)(iii) and (iv). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the <abbuie.com> 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), and/or Policy ¶ 4(b)(iv)”). Accordingly, the Panel finds bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Complainant claims that the <woodruffssawyer.com> domain name constitutes typosquatting of its WOODRUFF SAWYER mark, as it simply adds an “s.” The Panel agrees and finds bad faith under Policy ¶ 4(a)(iii). See Under Armour, Inc. v. JEFF RANDALL, FA1410001585022 (Forum Nov. 18, 2014) (finding that the respondent’s <unerarmour.com> domain name constitutes typosquatting of the complainant’s UNDER ARMOUR mark, which is evidence of bad faith pursuant to Policy ¶ 4(a)(iii)).
Complainant claims that Respondent’s failure to make active use of the disputed <woodruffssawyer.com> domain name is a further indication of bad faith. Pursuant to Policy ¶ 4(a)(iii), inactive holding of an infringing domain name may demonstrate bad faith. See Regions Bank v. Darla atkins, FA 1786409 (Forum June 20, 2018) (“Respondent registered and is using the domain name in bad faith under Policy ¶ 4(a)(iii) because Respondent uses the domain name to host an inactive website.”). The Panel therefore finds further bad faith under Policy ¶ 4(a)(iii).
Complainant argues that Respondent’s bad faith is also evident from its attempt to sell the disputed domain name to Complainant for profit. The Panel agrees and finds bad faith under Policy ¶ 4(b)(i). See Airbnb, Inc. v. Super Privacy Service LTD c/o Dynadot, FA 1821386 (Forum Jan. 10, 2019) (“Complainant argues that Respondent registered and uses the <airbnbb.com> domain name in bad faith by offering it for sale. The Panel agrees and finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(i).”).
Complainant also argues that Respondent registered the <woodruffssawyer.com> domain name with actual knowledge of Complainant’s rights in the WOODRUFF SAWYER mark. Registering an infringing domain name with actual knowledge of another’s trademark rights is sufficient to establish bad faith, and can be demonstrated by the notoriety of a mark and the use Respondent makes of the disputed domain name. 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.”) Respondent uses an email account associated with the disputed domain name to conduct a phishing scheme. Therefore, the Panel finds further bad faith under Policy ¶ 4(a)(iii).
The Panel finds that complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <woodruffssawyer.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: October 25, 2021
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