NY and Co IP, LLC v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA2110001969021
Complainant is NY and Co IP, LLC (“Complainant”), represented by Renee Reuter, Missouri, USA. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nyzndcompany.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Petter Rindforrth as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 14, 2021; the Forum received payment on October 14, 2021.
On October 15, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <nyzndcompany.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 18, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 8, 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@nyzndcompany.com. Also on October 18, 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 12, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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
The Complainant supports a leading specialty manufacturer and retailer of women’s fashion apparel and accessories. Complainant has rights in the NEW YORK & COMPANY trademark and other related trademarks based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,446,405, registered June 10, 2008). Respondent’s <nyzndcompany.com> domain name is confusingly similar to Complainant’s NEW YORK & COMPANY trademark because it abbreviates the term “New York,” replaces the “a” with a “z” in the word “and,” and adds the “.com” generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <nyzndcompany.com> domain name because Respondent did not have permission to use Complainant’s trademarks. Additionally, 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 uses the domain name to spread malware to users.
Respondent registered and uses the <nyzndcompany.com> domain name in bad faith. Respondent has engaged in a pattern of abuse by registering numerous infringing domain names. Further, Respondent uses the disputed domain name to spread malicious software. Respondent also engaged in typosquatting in bad faith. Finally, Respondent had knowledge of Complainant’s trademark rights when it registered the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner a number of trademark registrations, including, but not limited to the following trademarks registered with the United States Patent and Trademark Office (“USPTO”):
- No. 3,446,405 NEW YORK & COMPANY (word), registered on June 10, 2008 for goods in Intl Class 3;
- No. 2,026,644 NEW YORK & COMPANY (word), registered on December 13, 2005 for goods in Intl Classes 9, 14, 18, 25 and 26;
- No. 2,507,567 NEW YORK & COMPANY (word), registered on November 13, 2001 for services in Intl Class 35;
- No. 2,629,986 NEW YORK & COMPANY (word, with disclaimer for “NEW YORK”), registered on October 8, 2002 for goods and services in Intl Classes 18, 25 and 36.
The Complainant is also owner of a number of other trademarks registered with the United States Patent and Trademark Office (“USPTO”), including the words NEW YORK & COMPANY as well as short versions thereof.
Further, the Complainant has provided a list of national and international trademark registrations outside the USA, including the trademark version “NY & CO” in Panama, the home country of the Respondent.
The disputed domain name <nyzndcompany.com> was registered on May 3, 2021.
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 NEW YORK & COMPANY trademark and other related trademarks based upon registration with the USPTO. Registration of a trademark with a governmental authority such as the USPTO is generally sufficient to establish rights in the mark per Policy ¶ 4(a)(i). See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). In support of the said assortment, the Complainant provides evidence of registration with the USPTO (e.g., Reg. No. 3,446,405, registered June 10, 2008). Thus, the Panel finds that Complainant has rights in the trademark under Policy ¶ 4(a)(i).
Complainant contends that Respondent’s <nyzndcompany.com> domain name is confusingly similar to Complainant’s NEW YORK & COMPANY trademark because it abbreviates the term “New York,” replaces the “a” with a “z” in the word “and,” and adds the “.com” gTLD. Abbreviating a trademark and/or replacing a symbol with its corresponding word is generally insufficient to distinguish a domain name from a trademark under Policy ¶ 4(a)(i). See SEMCO Prods., LLC v. dmg world media (uk) ltd, FA 913881 (Forum Apr. 9, 2007) (finding that the <atlhomeshow.com> domain name was confusingly similar to the complainant’s ATLANTA HOME SHOW mark, as “atl” was a common abbreviation for the city of Atlanta); see also Wright & Lato, Inc. v. Epstein, D2000-0621 (WIPO Sept. 2, 2000) (finding that the <wrightandlato.com> domain name is identical to the complainant’s WRIGHT & LATO mark, because the ampersand symbol (&) is not reproducible in a URL). Further, misspelling a trademark and adding a gTLD does not negate confusing similarity. See 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.”). Complainant notes that the disputed domain name is not only confusingly similar to Complainant’s trademarks, but also nearly identical to Complainant’s own <nyandcompany.com> domain name. The Panel agree with Complainant that the disputed domain name is confusingly similar to the NEW YORK & COMPANY trademark per Policy ¶ 4(a)(i), especially also based on the fact that the Complainant has also registered short versions of the NEW YORK part (“NY”).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first 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, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
Complainant argues that Respondent does not have rights or legitimate interests in the <nyzndcompany.com> domain name because Respondent did not have permission to use Complainant’s trademarks. Lack of authorization to use a trademark, along with available WHOIS information, may suggest that a respondent is not commonly known by a disputed domain name per Policy ¶ 4(c)(ii). See SPTC, Inc. and Sotheby’s v. Tony Yeh shiun, FA 1810835 (Forum Nov. 13, 2018) (finding no rights or legitimate interests in the <sothebys.email> domain name where the WHOIS identified Respondent as “Tony Yeh shiun,” Complainant never authorized or permitted Respondent to use the SOTHEBY’S mark, and Respondent failed to submit a response.). Here, the WHOIS information of record lists “Carolina Rodrigues / Fundacion Comercio Electronico” as the registrant of the disputed domain name and Complainant contends it never gave Respondent permission to use its trademarks. Thus the Panel finds that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii).
Additionally, Complainant argues that Respondent fails to use the <nyzndcompany.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use and instead spreads malware to users. Use of a domain name to disseminate malware is not considered 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 Snap Inc. v. Domain Admin / Whois Privacy Corp., FA 1735300 (Forum July 14, 2017) (“Use of a disputed domain name to offer malicious software does not constitute a bona fide offering or a legitimate use per Policy ¶ 4(c)(i) & (iii).”). Complainant provides a screenshot of the resolving webpage at the disputed domain, which displays a warning regarding a phishing threat. Therefore, the Panel finds that Respondent is not using the domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Complainant claims that Respondent registered and uses the <nyzndcompany.com> domain name in bad faith as Respondent has engaged in a pattern of abuse by registering numerous infringing domain names. A respondent’s history of bad faith domain name registration may create an presumption of bad faith per Policy ¶ 4(b)(ii). See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“Complainant has provided evidence that Respondent has a history of UDRP and USDRP decisions decided against it. This establishes bad faith within the meaning of Policy ¶ 4(b)(ii).”). Complainant notes that hundreds of domain names have been transferred from Respondent through WIPO and UDRP proceedings. Thus, the Panel finds that Respondent registered and uses the disputed domain name pursuant to Policy ¶ 4(b)(ii).
Further, Complainant argues that Respondent’s use of the <nyzndcompany.com> domain name to spread malicious software constitutes bad faith. Use of a disputed domain name in connection with the dissemination of malware evidences bad faith under Policy ¶ 4(a)(iii). See Twitter, Inc. v. Kiribati Media / Kiribati 200 Media Limited, FA1502001603444 (Forum Mar. 19, 2015) (“Using the disputed domain name to download malicious software into unsuspecting viewers’ computers evidences Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). As noted above, Complainant provides a screenshot of the resolving webpage at the disputed domain, which displays a warning regarding a phishing threat. Complainant claims that Respondent receives fees for engaging in this behavior or uses information gained from the malware software for commercial gain. Thus, the Panel agree that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant also argues that Respondent engaged in typosquatting in bad faith. Typosquatting may indeed act as independent evidence of bad faith per Policy ¶ 4(a)(iii). See Finish Line, Inc. and its subsidiary Spike’s Holdings, Inc. v. XU SHUAI WEI / XUSHUAIWEI, FA1409001577968 (Forum Oct. 9, 2014) (“The <finishlne.com> domain name is a typosquatted version of the FINISH LINE mark, which further supports a finding of bad faith under Policy ¶ 4(a)(iii).”). Complainant notes that the disputed domain name differs from Complainant’s own <nyandcompany.com> domain name by only a single letter. The Panel agrees that this misspelling of Complainant’s trademark, as well as of the domain name, constitutes typosquatting. The Panel therefore further finds bad faith under Policy ¶ 4(a)(iii).
Finally, Complainant claims that Respondent had constructive knowledge of Complainant’s trademark rights when it registered the <nyzndcompany.com> domain name. While constructive knowledge of a complainant’s rights in a trademark is insufficient, actual knowledge evidences bad faith per Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). Complainant only argues that Respondent has constructive knowledge of Complainant’s rights in the trademark, but from the further general information provided by the Complainant, the Panel notes that the Complainant has registered trademark rights in the home country of the Respondent, even if those versions of the trademark is the short “NY & CO” version. This fact, in combination with the Respondent’s use of the disputed domain name clearly indicates that the Respondent had actual knowledge of the Complainant’s prior rights at the time of registration of the disputed domain name. The Panel thereby finds bad faith per 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 <nyzndcompany.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: November 26, 2021
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