Supply Link, LLC v. Benson Andrew
Claim Number: FA2110001967738
Complainant is Supply Link, LLC (“Complainant”), represented by James W. McConkie of Workman Nydegger, Utah, USA. Respondent is Benson Andrew (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <suppiylinkusa.com> (the “disputed domain name”), registered with NameCheap, Inc. (the “Registrar”).
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.
Lynda M. Braun as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 5, 2021; the Forum received payment on October 5, 2021.
On October 5, 2021, NameCheap, Inc. confirmed by e-mail to the Forum that the <suppiylinkusa.com> disputed domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. The Registrar 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 October 7, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 27, 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@suppiylinkusa.com. Also on October 7, 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 November 1, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Lynda M. Braun 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a reseller of copier, fax, and printer supplies. Complainant contends that it has common law rights in the SUPPLY LINK trademark due to its longstanding use of the mark in commerce since 2003 (hereinafter referred to as the “SUPPLY LINK Mark”). Further, Complainant claims that Respondent’s <suppiylinkusa.com> disputed domain name is confusingly similar to Complainant’s SUPPLY LINK Mark as there is a slight misspelling of the disputed domain name, that Respondent lacks rights or legitimate interests in the disputed domain name, and that Respondent registered and used the disputed domain name in bad faith because, among other things, Respondent attempts to pass off as Complainant by sending fraudulent emails to Complainant’s customers to create consumer confusion that Respondent is affiliated with Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that Complainant has common law rights in the SUPPLY LINK Mark. In addition, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s SUPPLY LINK Mark, that Respondent has no rights or legitimate interests in respect of the disputed domain name, and the disputed domain name was registered and is being used 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 disputed domain name should be cancelled or transferred:
(1) the disputed 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 disputed domain name; and
(3) the disputed 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 the disputed domain name is confusingly similar to the SUPPLY LINK Mark as set forth below.
The Panel concurs that Complainant has common law rights in the SUPPLY LINK Mark based on continuous use of the mark in commerce since 2003. Registration of a mark is not necessary under Policy ¶ 4(a)(i) if a complainant can establish common law rights in the mark. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding that “The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”). To establish common law rights in a mark, a complainant must show that the mark has developed secondary meaning. See Lokai Holdings, LLC v. Domain Admin / Whois Privacy Corp., 1763598 (Forum Jan. 22, 2018). Here, Complainant has provided evidence of the use of the mark since 2003. Thus, the Panel finds that Complainant has rights in the SUPPLY LINK Mark.
The Panel also concludes that Respondent’s disputed domain name is confusingly similar to the SUPPLY LINK Mark under Policy ¶ 4(a)(i). The disputed domain name consists of the SUPPLY LINK Mark in its entirety, with a misspelling[i] of the term “supply”, substituting the letter “i” for the letter “l”, followed by the term “usa”, the abbreviation for the United States of America, and is then followed by the generic Top-Level Domain (“gTLD“) “.com“.
Registration of a domain name that replaces a single letter in a mark and adds a geographic descriptor along with a gTLD does not distinguish the disputed domain name from the mark per Policy ¶ 4(a)(i). See Staples, Inc. v. Whois Privacy Shield Services, FA 1617690 (Forum June 5, 2015) (“Changing a single letter (especially when it is the final letter) is a minor enough change to support a finding of confusing similarity under Policy ¶ 4(a)(i).”), see also Dell Inc. v. Suchada Phrasaeng, FA 1745812 (Forum Sept. 28, 2017) (“Adding geographical terms does not sufficiently distinguish a domain name from a mark to prevent a finding of confusingly similarity under a Policy ¶4(a)(i) analysis.”); See, e.g., BHP Billiton Innovation Pty Ltd v. Oloyi, WIPO Case No. D2017-0284 (finding the addition of “usa” alone to the mark was not sufficient to distinguish the disputed domain name from the mark in question). The use of a gTLD such as “.com” is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a disputed domain name is identical or confusingly similar to a trademark. See Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.”)
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been established by Complainant.
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name. Under the Policy, Complainant is required to make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, Respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. See 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”).
In this case, Respondent did not carry its burden to come forward with evidence of its rights or legitimate interests in the disputed domain name as it did not respond to the Complaint, but given the facts of this case, the Panel finds that Respondent would have been hard pressed to furnish availing arguments had it chosen to respond:
Specifically, Respondent is not commonly known by the disputed domain name, Complainant has not authorized, licensed, or otherwise permitted Respondent to use its mark and Respondent has no relationship, affiliation, connection, endorsement or association with Complainant.[ii]
Furthermore, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services, or in connection with a legitimate noncommercial or fair use because here, Respondent is using the disputed domain name to perpetuate a phishing scheme in which Respondent sends fraudulent emails to Complainant’s customers using the disputed domain name to form such emails to deceive those customers to believe that Complainant sent them.
Finally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent holds the disputed domain name passively, which is not deemed a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See 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).”).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been established by Complainant.
The Panel concludes that Respondent registered and is using the disputed domain name in bad faith.
First, Respondent registered and is using the disputed domain name in bad faith as Respondent engaged in typosquatting. See Cost Plus Management Services, Inc. v. xushuaiwei, FA 1800036 (Forum Sept. 7, 2018) (“Typosquatting itself is evidence of relevant bad faith registration and use.”). Here, Respondent engaged in typosquatting by substituting the letter “l” in the term “supply” with the letter “i” in the disputed domain name. Therefore, the Panel finds that Respondent registered and is using the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Second, it is evident that Respondent had actual knowledge of Complainant’s trademark when registering the disputed domain name. For one thing, the use of typosquatting in the disputed domain name demonstrates Respondent’s actual knowledge of the Complainant’s Mark. A respondent’s use of typosquatting to create a confusingly similar domain name may demonstrate a respondent’s actual knowledge of a complainant’s rights to the mark per Policy ¶ 4(a)(iii). See Homer TLC, Inc. v. Artem Ponomarev, FA1506001623825 (Forum July 20, 2015) (“[I]t is evident that the <homededpot.com> domain name is an instance of typosquatting, which is the deliberate misspelling of the mark of another in a domain name, done 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 would like to do business online. Typosquatting is independent evidence of bad faith in the registration and use of a domain name.”).
Respondent’s acts also demonstrate actual knowledge of Complainant’s SUPPLY LINK Mark in that Respondent is a former employee of Complainant. The Panel therefore concludes that it strains credulity to believe that Respondent had not known of the Complainant or its SUPPLY LINK Mark when registering the disputed domain name and chose to misspell it and add the abbreviation “usa” to deceive Internet users.
Finally, the Panel concludes that Respondent registered and is using the disputed domain name in bad faith because Respondent attracts users for commercial gain through fraudulent email solicitation. Use of a disputed domain name to capitalize on a complainant’s reputation for commercial gain by using it in an email to pass off as Complainant is evidence of bad faith under Policy ¶ 4(b)(iv). See Qatalyst Partners LP v. Devimore, FA 1393436 (Forum July 13, 2011) (finding that using the disputed domain name as an e-mail address to pass itself off as the complainant in a phishing scheme is evidence of bad faith registration and use). Complainant provides copies of Respondent’s emails as an example of Respondent’s bad faith activity. Therefore, the Panel finds that Respondent registered and is using 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 <suppiylinkusa.com> disputed domain name be TRANSFERRED from Respondent to Complainant.
Lynda M. Braun, Panelist
Dated: November 8, 2021
[i] This misspelling is an example of typosquatting, a situation in which a disputed domain name includes a misspelled trademark.
[ii] Although Respondent is a former employee (probably disaffected) of Complainant, it has no permission to use the disputed domain name.
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page