The Morningside Group Limited v. Rene Cruz
Claim Number: FA2110001968346
Complainant is The Morningside Group Limited (“Complainant”), represented by Tricia L. Schulz of Foley & Lardner LLP, Wisconsin, USA. Respondent is Rene Cruz (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <themorningsidefoundation.org> and <morningsidefoundation-hk.org>, registered with Network Solutions, LLC.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 8, 2021; the Forum received payment on October 8, 2021.
On October 13, 2021, Network Solutions, LLC confirmed by e-mail to the Forum that the <themorningsidefoundation.org> and <morningsidefoundation-hk.org> domain names are registered with Network Solutions, LLC and that Respondent is the current registrant of the names. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, 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 October 20, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 9, 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@themorningsidefoundation.org, postmaster@morningsidefoundation-hk.org. Also on October 20, 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 14, 2021, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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 names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
The Panel finds from Complainant’s uncontested evidence and allegations that the domain names are commonly controlled by Respondent, who has used multiple aliases.
A. Complainant
Complainant, The Morningside Group Limited, is a private investment group, also operating charitable and philanthropic endeavors. Complainant has rights in the MORNINGSIDE mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,358,945, registered June 20, 2000). Respondent’s <themorningsidefoundation.org> and <morningsidefoundation-hk.org> domain names are confusingly similar to Complainant’s MORNINGSIDE mark since they each feature the mark along with the generic or descriptive terms “the,” “hk,” and/or “foundation,” as well as the “.org” generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <themorningsidefoundation.org> and <morningsidefoundation-hk.org> domain names because Respondent is not commonly known by the disputed domain names. Additionally, Respondent fails to use the disputed domain names in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent passively holds the disputed domains. Further, Respondent uses the disputed domain names to impersonate Complainant in furtherance of an e-mail phishing scheme.
Respondent registered and uses the <themorningsidefoundation.org> and <morningsidefoundation-hk.org> domain names in bad faith. Respondent impersonates Complainant for the fraudulent purpose of soliciting information from consumers. Additionally, the disputed domain names fail to resolve to active webpages. Finally, Respondent had actual knowledge of Complainant’s rights in the MORNINGSIDE mark at the time the domain name was registered.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, based upon the uncontested allegations and evidence, the Panel finds that Complainant is entitled to the requested relief of transfer of the <themorningsidefoundation.org> and <morningsidefoundation-hk.org> domain names.
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”).
Complainant asserts rights in the MORNINGSIDE mark based upon registration with the USPTO. Registration with the USPTO is sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Complainant provides evidence of its registration with the USPTO (e.g., Reg. No. 2,358,945, registered June 20, 2000). The Panel finds that Complainant has rights in the MORNINGSIDE mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <themorningsidefoundation.org> and <morningsidefoundation-hk.org> domain names are confusingly similar to Complainant’s MORNINGSIDE mark since they each feature the mark along with the generic or descriptive terms “the,” “hk,” and/or “foundation,” as well as the “.org” gTLD. Addition of generic or descriptive terms and a gTLD to a mark is generally insufficient to negate confusing similarity between a domain name and the mark it incorporates per Policy ¶ 4(a)(i). See YETI Coolers, LLC v. Randall Bearden, FA 16060016880755 (Forum Aug. 10, 2016) (finding that the words “powder coating” in the <yetipowdercoating.com> domain name are “merely explicative and directly refer to some of the services rendered by the Complainant” and, therefore, create an “irrefutable confusing similarity” to complainant’s YETI mark). The Panel finds that the disputed domain names are confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has proved this element.
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 a prima facie case.
Complainant argues that Respondent does not have rights or legitimate interests in the <themorningsidefoundation.org> and <morningsidefoundation-hk.org> domain names because Respondent is not commonly known by the disputed domain names. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.). The WHOIS information of record lists the registrant as “Rene Cruz” and no other available information suggests that Respondent is known by either of the disputed domain names. The Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).
Complainant also argues that Respondent fails to use the <themorningsidefoundation.org> and <morningsidefoundation-hk.org> domain names in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent passively holds the disputed domains. Failure to make active use of a domain name does not constitute as a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or (iii). See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). Complainant provides screenshots of the webpages resolving at the disputed domains, which display no substantive content. The Panel finds that this use does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Complainant argues that Respondent uses the <themorningsidefoundation.org> and <morningsidefoundation-hk.org> domain names to impersonate Complainant in furtherance of an e-mail phishing scheme. Use of an email address associated with a disputed domain name to pass off as a complainant in furtherance of phishing is not indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 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)”). Complainant claims that Respondent impersonates Complainant and its employees to solicit commercially or personally sensitive information via speaking engagement contracts and donations from Complainant’s customers and/or donors. Complainant provides copies of emails sent from Respondent as part of this fraudulent scheme. The Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain names per Policy ¶¶ 4(c)(i) and (iii).
Complainant has proved this element.
Complainant claims that Respondent registered and uses the <themorningsidefoundation.org> and <morningsidefoundation-hk.org> domain names in bad faith since it impersonates Complainant for the fraudulent purpose of soliciting information from consumers. Use of a disputed domain name to impersonate a complainant in furtherance of a fraudulent scheme may constitute bad faith pursuant to 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)”). Complainant claims that Respondent impersonates Complainant and its employees to solicit commercially or personally sensitive information via speaking engagement contracts and donations from Complainant’s customers and/or donors. Complainant provides copies of emails sent from Respondent as part of this fraudulent scheme. This is evidence that Respondent registered and uses the disputed domain names in bad faith per Policy ¶ 4(b)(iii) and or (iv).
Complainant claims that Respondent’s inactive holding of the <themorningsidefoundation.org> and <morningsidefoundation-hk.org> domain names suggests bad faith. Inactively holding a disputed domain may evidence bad faith per Policy ¶ 4(a)(iii). See CommScope, Inc. of North Carolina v. Zhuang Yan / WANGYONG, FA 1764026 (Forum Feb. 14, 2018) (“Respondent’s domain names do not have resolving websites. Using a domain name to resolve to an inactive website (or no website at all) indicates bad faith registration and use.”). Complainant provides screenshots of the webpages resolving at the disputed domains, which display no substantive content. This is evidence that Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(a)(iii).
Complainant argues that Respondent had actual knowledge of Complainant’s rights in the MORNINGSIDE mark at the time the <themorningsidefoundation.org> and <morningsidefoundation-hk.org> domain names was registered. Actual knowledge of a Complainant’s rights in a mark evidences bad faith per Policy ¶ 4(a)(iii) and may be shown through the manner in which a respondent uses 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.”). Complainant argues that Respondent’s use of Complainant’s mark in its attempt to impersonate Complainant through email displays actual knowledge of Complainant’s rights in the MORNINGSIDE mark. The Panel finds that Respondent knew of Complaint’s rights in its mark and registered and uses the disputed domain names in bad faith under Policy ¶ 4(a)(iii).
Complainant has proved this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the themorningsidefoundation.org> and <morningsidefoundation-hk.org> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
November 16, 2021
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