Trijicon, Inc. v. lusanga jeandidier lusanga jeandidier
Claim Number: FA2111001975251
Complainant is Trijicon, Inc. (“Complainant”), represented by Bryant E. Wade of Harness, Dickey & Pierce, P.L.C., Michigan, USA. Respondent is lusanga jeandidier lusanga jeandidier (“Respondent”), Georgia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <trijiicon.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 30, 2021; the Forum received payment on November 30, 2021.
On December 3, 2021, GMO Internet, Inc. d/b/a Onamae.com confirmed by e-mail to the Forum that the <trijiicon.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 December 10, 2021, the Forum served the Complaint and all Annexes, including a Japanese and English language Written Notice of the Complaint, setting a deadline of December 30, 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@trijiicon.com. Also on December 10, 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 January 5, 2022, 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 THE PROCEEDINGS
The Panel notes that the Registration Agreement is written in Japanese, thereby making the language of the proceedings to be Japanese. However, the Panel has a discretion under Rule 11 to determine that in all the circumstances, the proceeding should be conducted in a different language. Complainant has requested that such a finding should be made.
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 relies on Respondent’s use of English words in emails, suggesting that Respondent is at least proficient in the English language. Further, Complainant is not conversant nor proficient in the Japanese language and would require delay and unnecessary costs to translate the document.
Accordingly, the Panel finds that the proceeding shall be conducted in the English language.
A. Complainant
Complainant made the following contentions.
Complainant is a rifle scope manufacturer. Complainant has rights in the TRIJICON mark through its registrations with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. 1,390,617, registered Apr. 22, 1986; Reg. 2,528,848, registered Jan. 15, 2002). See Compl. Ex. E. Respondent’s <trijiicon.com> domain name is identical or confusingly similar to Complainant’s mark as it incorporates the mark in its entirety and adds an extra “I” along with the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <trijiicon.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its TRIJICON mark in the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use, but instead passes off as Complainant in emails.
Respondent registered and uses the <trijiicon.com> domain name in bad faith. Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the TRIJICON mark. Respondent phishes for user information and inactively holds the disputed domain name’s resolving website. Respondent typosquats with the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the manufacture of weapon gunsights and related goods and services.
2. Complainant has established its trademark rights in the TRIJICON mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. 1,390,617, registered Apr. 22, 1986; Reg. 2,528,848, registered Jan. 15, 2002).
3. Respondent registered the <trijiicon.com> domain name on November 29, 2021.
4. Respondent has caused the disputed domain name to be used to pass itself off as Complainant in emails and to engage in phishing for user information.
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 claims rights in the TRIJICON mark through its registrations with the USPTO (e.g. Reg. 1,390,617, registered Apr. 22, 1986; Reg. 2,528,848, registered Jan. 15, 2002). See Compl. Ex. E. Registration with the USPTO is generally sufficient in demonstrating rights in a mark under Policy ¶ 4(a)(i). 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).”). Therefore, the Panel finds 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 TRIJICON mark. Complainant argues that Respondent’s <trijiicon.com> domain name is identical or confusingly similar to Complainant’s TRIJICON mark. Under Policy ¶ 4(a)(i), adding an extra letter and the “.com” gTLD is generally insufficient in differentiating a disputed domain name from the mark it wholly incorporates. See Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018) (“The [<morganstonley.com> and <morganstainley.com>] Domain Names are confusingly similar to Complainant’s marks, as they fully incorporate the MORGAN STANLEY mark, varying it only by subtle misspellings, omitting a space between the words, and adding the generic top-level domain (“gTLD”) ‘.com.’”). The disputed domain name incorporates the TRIJICON mark in its entirety and adds an extra “I” as well as the “.com” gTLD. Therefore, the Panel finds that Respondent’s domain name is confusingly similar to Complainant’s 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 TRIJICON trademark and to use it in its domain name, adding an extra letter “I” which does not negate the confusing similarity between the domain name and the trademark;
(b) Respondent registered the <trijiicon.com> domain name on November 29, 2021;
(c) Respondent has caused the disputed domain name to be used to pass itself off as Complainant in emails and to engage in phishing for user information;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent is not commonly known by the <trijiicon.com> domain name, nor has Complainant authorized or licensed Respondent to use its TRIJICON mark in the disputed domain name. Under Policy ¶ 4(c)(ii), where a response is lacking, relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The WHOIS of record identifies Respondent as “lusanga jeandidier lusanga jeandidier”. See Registrar Verification Email. Therefore, as the Panel agrees, it finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent does not use the <trijiicon.com> domain name for any bona fide offerings of goods or services, nor any legitimate noncommercial or fair use. Under Policy ¶¶ 4(c)(i) and (iii), using a disputed domain name’s resolving website to pass off as a Complainant and phish for user information and inactively holding a disputed domain name’s resolving website are both not considered bona fide offerings of goods or services, nor legitimate noncommercial or fair uses. 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)”); see also Nutri/System IPHC, Inc. v. Usama Ayub, FA1725806 (Forum June 5, 2017) (holding that “Respondent does not use the <nutrisystemturbo.us> domain for a bona fide offering of goods or services because the domain name resolves to a website that currently is designated as ‘under construction.’”). Complainant provides screenshots of the disputed domain name’s resolving website, which features no content but an error message. See Compl. Ex. 5. Complainant also provides screenshots of emails from the disputed domain name to Complainant’s customers from a fraudulent “account executive”. See Compl. Ex. 7. Therefore, as the Panel agrees, it finds Respondent does not use the disputed domain name for any bona fide offerings of goods or services, nor any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (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 the <trijiicon.com> domain name with bad faith actual knowledge of Complainant’s rights in the TRIJICON mark. Under Policy ¶ 4(a)(iii), actual knowledge is generally sufficient in demonstrating bad faith, and may be established through incorporation of a mark into a domain name, as well as Respondent’s use of the disputed domain name. See 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)). The Panel recalls Complainant’s TRIJICON mark is wholly incorporated into the domain name, as well as Complainant’s screenshots of emails which appear to show Respondent attempting to pass itself off as Complainant. See Compl. Ex 7. Therefore, as the Panel agrees, it finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Secondly, Complainant argues that Respondent registered and uses the <trijiicon.com> domain name in bad faith by phishing for user information. Under Policy ¶ 4(a)(iii), using a disputed domain name to phish for user information is generally considered evidence of bad faith registration and use. See Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA1506001625750 (Forum July 17, 2015) (“Respondent uses the <klabzuba-oilgas.com> domain to engage in phishing, which means Respondent registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii).”). The Panel recalls Complainant’s screenshots of emails from the disputed domain name which appear to show Respondent attempting to pass itself off as an agent of Complainant to customers. See Compl. Ex. 7. Therefore, as the Panel agrees, it finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Thirdly, the Panel finds Respondent registered and uses the <trijiicon.com> domain name in bad faith by inactively holding the disputed domain name’s resolving website. Under Policy ¶ 4(a)(iii), inactively holding a disputed domain name’s resolving website may be evidence of bad faith. See State Farm Mutual Automobile Insurance Company v. Dr. Keenan Cofield, FA 1799574 (Forum Sept. 10, 2018) (finding bad faith under Policy ¶ 4(a)(iii) where “the domain name initially resolved to a web page with a “website coming soon” message, and now resolves to an error page with no content.”). The Panel recalls the screenshot of the disputed domain name’s resolving website, which features no content. See Compl. Ex. 5. Therefore, as the Panel agrees, it finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Fourthly, Complainant argues that Respondent typosquats with the <trijiicon.com> domain name. Typosquatting or misspelling a disputed domain name slightly to take advantage of users who act on the misspelling is generally considered evidence of bad faith registration and use under Policy ¶ 4(a)(iii). 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.”). The Panel notes that the disputed domain name simply adds an extra “I” to the TRIJICON mark it incorporates. Therefore, as the Panel agrees, it finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
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 TRIJICON 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 <trijiicon.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: January 6, 2022
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page