OutRight Action International v. Jonel Mendoza
Claim Number: FA2111001972603
Complainant is OutRight Action International (“Complainant”), represented by Fabricio Vayra of Perkins Coie LLP, District of Columbia, USA. Respondent is Jonel Mendoza (“Respondent”), Philippines.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <internationaloutright.com>, registered with GMO Internet, Inc. d/b/a Onamae.com.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 9, 2021; the Forum received payment on November 9, 2021. The Complaint was received in English.
On November 9, 2021, GMO Internet, Inc. d/b/a Onamae.com confirmed by e-mail to the Forum that the <internationaloutright.com> domain name is registered with GMO Internet, Inc. d/b/a Onamae.com and that Respondent is the current registrant of the name. GMO Internet, Inc. d/b/a Onamae.com has verified that Respondent is bound by the GMO Internet, Inc. d/b/a Onamae.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 November 15, 2021, the Forum served the English language Complaint and all Annexes, including a Japanese and English language Written Notice of the Complaint, setting a deadline of December 6, 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@internationaloutright.com. Also on November 15, 2021, the Japanese and English language 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 December 13, 2021 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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.
Preliminary Issue: Language of Proceeding
The Panel notes that the Registration Agreement is written in Japanese, thereby making the language of the proceedings the Japanese language. However, Complainant has submitted that pursuant to Rule 11(a) the proceeding should be conducted in the English language.
Complainant has alleged that because Respondent is conversant and proficient in English, the proceeding should be conducted in English. The Panel has the discretion under UDRP Rule 11(a) to determine the appropriate language of the proceedings taking into consideration the particular circumstances of the administrative proceeding. See FilmNet Inc. v. Onetz, FA 96196 (Forum Feb. 12, 2001) (finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and English). Complainant contends that the proceedings should be in English since the <internationaloutright.com> domain name consists of English terms and resolving to a website in English. See Amend. Compl. Ex. G. Additionally, Complainant argues that Respondent’s social media posts indicate Respondent is fluent in English. See Amend. Compl. Ex. H.
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides that the proceeding should be in English.
A. Complainant
Complainant made the following contentions.
Complainant, Outright Action International, provides LGBTIQ public advocacy services. Complainant has rights in the OUTRIGHT ACTION INTERNATIONAL mark (hereinafter the OUTRIGHT mark) based on registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 5,333,436, registered Nov. 14, 2017). See Amend. Compl. Ex. D. Respondent’s <internationaloutright.com> domain name consists of the dominant portion of Complainant’s OUTRIGHT mark, merely adding the disclaimed term “international” and the “.com” generic top level domain (“gTLD”) to form the disputed domain name.
Respondent does not have rights or legitimate interests in the <internationaloutright.com> domain name. Respondent is not commonly known by the disputed domain name and Complainant has not authorized Respondent to use the OUTRIGHT mark. Additionally, Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses the domain to phish for financial information via a fraudulent dating app scheme.
Respondent registered and uses the <internationaloutright.com> domain name in bad faith. Respondent uses the disputed domain name to phish for financial information as part of a fraudulent dating app scheme. Additionally, Respondent had actual knowledge of Complainant’s rights in the OUTRIGHT mark based on the notoriety of the mark and the Respondent’s use of the mark on the resolving website for the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that provides LGBTIQ public advocacy services.
2. Complainant has established its trademark rights in the OUTRIGHT ACTION INTERNATIONAL mark (hereinafter “the OUTRIGHT mark”) based on registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 5,333,436, registered Nov. 14, 2017).
3. Respondent registered the disputed domain name on September 22, 2021.
4. Respondent uses the domain name to phish for financial information via a fraudulent dating app scheme.
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 first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the OUTRIGHT mark based on registration of the mark with the USPTO (e.g., Reg. No. 5,333,436, registered Nov. 14, 2017). See Amend. Compl. Ex. D. Registration of a mark with the USPTO is a valid showing of rights in a mark. See Recreational Equipment, Inc. v. Liu Chan Yuan, FA 2107001954773 (Forum Aug. 9, 2021) (“Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i)”). Since Complainant provides evidence of registration of the OUTRIGHT mark with the USPTO, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s OUTRIGHT mark. Complainant argues that Respondent’s <internationaloutright.com> domain name consists of the dominant portion of Complainant’s OUTRIGHT mark, merely adding the disclaimed term “international” so that it precedes the word “OUTRIGHT”, deleting the word “ACTION” and adding the “.com” gTLD to form the disputed domain name. The addition or deletion of a term of a mark and the addition of the “.com” gTLD is not sufficient to differentiate a disputed domain name from the mark under Policy ¶ 4(a)(i). See Pioneer Investment Management USA Inc. v. Josh Tillman, FA 1731280 (Forum June 22, 2017) (“The domain name contains the mark in its entirety, merely eliminating the space between its terms and appending the geographic term “international” and the generic Top Level Domain (“gTLD”) “.com”. These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy.”). Thus, the Panel finds that the disputed domain name is confusingly similar to the OUTRIGHT mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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”).
(a) Respondent has chosen to take Complainant’s OUTRIGHT mark trademark and to use it in its domain name, adding the disclaimed term “international” and deleting the word “ACTION “ which does not negate the confusing similarity between the domain name and the trademark;
(b) Respondent registered the disputed domain name on September 22, 2021;
(c) Respondent uses the domain name to phish for financial information via a fraudulent dating app scheme;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent does not have rights or legitimate interests in the <internationaloutright.com> domain name because Respondent is not commonly known by the disputed domain name and Complainant has not authorized Respondent to use the OUTRIGHT mark. When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name 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). Additionally, lack of authorization to use a mark constitutes a further showing that a respondent is not commonly known by the disputed domain name. See Bittrex, Inc. v. Operi Manaha, FA 1815225 (Forum Dec. 10, 2018) (concluding that the respondent was not commonly known by the <appbittrex.com> domain name where the WHOIS information listed Respondent as “Operi Manaha,” and nothing else in the record suggested Respondent was authorized to use the BITTREX mark.). Here, the WHOIS information lists “Jonel Mendoza” as the registrant and no other information suggests Complainant authorized Respondent to use the OUTRIGHT mark in any way. See Amend. Compl. Ex. A. Thus, the Panel finds that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses the domain to phish for financial information via a fraudulent dating app scheme. Use of a disputed domain name as part of a phishing or fraudulent scheme does not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Enterprise Holdings, Inc. v. I S / Internet Consulting Services Inc., FA 1785242 (Forum June 5, 2018) (“On its face, the use of a domain name that is confusingly similar to the mark of another in order to facilitate a phishing scheme cannot be described as either 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).”); see also Google Inc. v. Pritam Singh / Pandaje Technical Services Pvt Ltd., FA 1660771 (Forum Mar. 17, 2016) (agreeing that respondent has not shown any bona fide offering of goods or services or any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii) as the respondent used the complainant’s mark and logo on a resolving website containing offers for technical support and password recovery services, and soliciting Internet users’ personal information). Complainant submits that Respondent uses the disputed domain name as part of a phishing scheme that directs users of a dating app to the resolving website for the domain name which then prompts users for financial information. See Amend. Compl. Ex. G. Thus, the Panel agrees with Complainant and 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).
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and uses the <internationaloutright.com> domain name in bad faith because Respondent uses the disputed domain name to phish for financial information as part of a fraudulent dating app scheme. Using a disputed domain name to engage in phishing is evidence of bad faith registration and use under Policy ¶ 4(a)(i). See Wells Fargo & Co. v. Maniac State, FA 608239 (Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers); see also Google Inc. v. Domain Admin / Whois Privacy Corp., FA1506001622862 (Forum Aug. 10, 2015) (finding that the respondent’s apparent use of the disputed domain name in furtherance of a ‘phishing’ scheme further established its bad faith registration and use of the disputed domain name under Policy ¶ 4(a)(iii)). The Panel recalls that Complainant provides evidence that Respondent uses the disputed domain name to phish for users’ financial information via a fraudulent scheme. See Amend. Compl. Ex. G. Therefore, the Panel finds bad faith registration and use under Policy ¶ 4(a)(iii).
Secondly, Complainant contends that Respondent had actual knowledge of Complainant’s rights in the OUTRIGHT mark based on the notoriety of the mark and the Respondent’s use of the mark on the resolving website for the disputed domain name. Per Policy ¶ 4(a)(iii), actual knowledge of a complainant’s trademark rights is sufficient to establish bad faith and can be demonstrated by the fame of the mark and the use the respondent makes of the domain name. See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”); see also Twentieth Century Fox Film Corporation and Fox International Channels (US), Inc. v. Daniel Pizlo / HS, FA1412001596020 (Forum Jan. 27, 2015) (finding that the respondent must have had actual knowledge of the complainant and its rights in the FOX LIFE mark, where the respondent was using the disputed domain name to feature one of the complainant’s videos on its website, indicating that the respondent had acted in bad faith under Policy ¶ 4(a)(iii)). Therefore, as the Panel agrees and finds that Respondent had actual knowledge of Complainant’s rights in the OUTRIGHT mark, the Panel also finds bad faith.
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the OUTRIGHT mark and in view of the conduct that Respondent has engaged in when using the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <internationaloutright.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: December 14, 2021
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page