Sprint Communications Company L.P. v. Adrian Joslin
Claim Number: FA2202001983674
Complainant is Sprint Communications Company L.P. (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Adrian Joslin (“Respondent”), North Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sprintpacecargiveaway.com>, registered with 1API GmbH.
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 Honorable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 8, 2022; the Forum received payment on February 8, 2022.
On February 11, 2022, 1API GmbH confirmed by e-mail to the Forum that the <sprintpacecargiveaway.com> domain name is registered with 1API GmbH and that Respondent is the current registrant of the name. 1API GmbH has verified that Respondent is bound by the 1API GmbH 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 February 11, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 3, 2022 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@sprintpacecargiveaway.com. Also on February 11, 2022, 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 March 9, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honorable 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.
A. Complainant
Complainant made the following contentions.
Complainant provides and engages in a variety of communication services. Complainant asserts rights in the SPRINT mark through its registration of the mark with the United States Patent and Trademark Office (USPTO) (e.g., Reg. No. 1,104,943, registered on October 24, 1978). See Compl. Ex. C. Respondent’s <sprintpacecargiveaway.com> domain name is identical or confusingly similar to Complainant’s SPRINT mark, as it incorporates the mark in its entirety, only adding the generic terms “pace”, “car”, and “giveaway”, as well as the “.com” generic top-level domain (gTLD).
Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not authorized or licensed Respondent to use the SPRINT mark, nor is Respondent commonly known by the disputed domain name. Further, Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services or legitimate noncommercial or fair use as Respondent attempts to pass off as Complainant. Similarly, Respondent uses the disputed domain name to engage in a phishing scheme.
Respondent registered and uses the disputed domain name in bad faith. Respondent disrupts Complainant’s business by using the confusingly similar domain name to engage in a phishing scheme. Further, Respondent attempts to benefit commercially from this phishing scheme. Respondent also had actual knowledge of Complainant’s rights in the SPRINT mark, evidenced by the fame of the mark and Respondent’s use of the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that provides and engages in a variety of communication services.
2. Complainant has established its rights in the SPRINT trademark through its registration of the mark with the United States Patent and Trademark Office (USPTO) (e.g., Reg. No. 1,104,943, registered on October 24, 1978).
3. Respondent registered the <sprintpacecargiveaway.com> domain name on November 15, 2016.
4. Complainant had previously conducted a pace car giveaway promotion.
5. Respondent uses the domain name to attempt to pass itself off as Complainant and to engage in a phishing 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 SPRINT mark through its registration of the mark with the USPTO (e.g., Reg. No. 1,104,943, registered on October 24, 1978). See Compl. Ex. C. When a complainant registers a mark with the USPTO, it is sufficient to establish rights in the 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)”); see also H-D Michigan, LLC v. Private Whois Service, FA 1006001328876 (Forum July 12, 2010) (finding that “Complainant has sufficiently registered its HARLEY-DAVIDSON mark with the USPTO to prove Complainant’s rights in the mark according to Policy ¶ 4(a)(i), regardless of the fact that Respondent lives or operates outside the United States.”). Therefore, the Panel finds Complainant has established its rights in the SPRINT mark.
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s SPRINT mark. Complainant argues Respondent’s <sprintpacecargiveaway.com> domain name is identical or confusingly similar to Complainant’s SPRINT mark, as it incorporates the mark in its entirety, only adding the generic terms “pace”, “car”, and “giveaway”, as well as the “.com” gTLD. The mere addition of a generic term and gTLD is not enough to differentiate a disputed domain name from a mark. See MTD Products Inc. v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”); see also Morgan Stanley v. Eugene Sykorsky / private person, FA 1651901 (Forum Jan. 19, 2016) (concluding that the addition of a generic term and top level domain to a trademark is inconsequential under a Policy ¶ 4(a)(i) analysis.). The Panel therefore finds the <sprintpacecargiveaway.com> domain name is confusingly similar to Complainant’s SPRINT mark.
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”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s SPRINT mark and to use it in its domain name adding only the generic words “pace”, “car”, and “giveaway” to the mark which do not negate the confusing similarity between the domain name and the trademark that is present;
(b) Respondent registered the <sprintpacecargiveaway.com> domain name on November 15, 2016;
(c) Complainant had previously conducted a pace car giveaway promotion;
(d)Respondent uses the domain name to attempt to pass itself off as Complainant and to engage in a phishing scheme;
(e) Respondent has engaged in these activities without the consent or approval of Complainant;
(f) Complainant contends Respondent lacks rights and legitimate interests in the <sprintpacecargiveaway.com> domain name because Respondent is not authorized to use the SPRINT mark, nor is Respondent commonly known by the disputed domain name. Past panels have looked at the available WHOIS information to determine whether a Respondent is commonly known by the disputed domain name. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Furthermore, lack of authorization to use a mark serves as further indication that a respondent is not commonly known by the disputed domain name. See Radio Flyer Inc. v. er nong wu, FA 2011001919893 (Forum Dec. 16, 2020) (“Here, the WHOIS information lists “er nong wu” as the registrant and no information suggests Complainant has authorized Respondent to use the RADIO FLYER mark in any way. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).”); see also 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 shows Respondent is known as “Adrian Joslin” and there is no evidence to suggest Complainant authorized Respondent to use the SPRINT mark in any way. See Registrar Verification Email. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii);
(g) Complainant argue that Respondent does not use the <sprintpacecargiveaway.com> domain name for a bona fide offering of goods and services or legitimate noncommercial or fair use because Respondent attempts to pass itself off as Complainant. Particularly, Respondent imitates Complainant’s previous website, designed for a specific giveaway to Complainant’s users. Using a disputed domain name to redirect users to a website that attempts to pass off as a complainant is not a bona fide offering of goods and services or legitimate noncommercial or fair use. See ShipChain, Inc. v. 谢东东 / 谢东东, FA 1785189 (Forum June 21, 2018) (“The resolving webpages between Complainant’s and Respondent’s websites are virtually the same. Respondent’s use of the disputed domain name does not confer rights and legitimate interests under Policy ¶¶ 4(c)(i) and (iii).”); see also Dell Inc. v. Devesh Tyagi, FA 1785301 (Forum June 2, 2018) (“Respondent replicates Complainant’s website and displays Complainant’s products. The Panel finds that this use is not a bona fide offering of goods or services under Policy ¶¶ 4(c)(i) & (iii).”). Here, Complainant provides screenshots of the resolving website, as well as the previous legitimate giveaway, to show how Respondent attempts to pass itself off as Complainant. See Compl. Exs. E and F. As the Panel agrees Respondent attempts to pass off as Complainant, the Panel finds Respondent does not use the disputed domain name in accordance with Policy ¶¶ 4(c)(i) and (iii);
(h) Complainant submits that Respondent does not use the disputed domain name for a bona fide offering of goods and services or legitimate noncommercial or fair use because it causes the resolving website to attempt to engage in a phishing scheme. Using a disputed domain name to engage in phishing is not a bona fide offering of goods and services or legitimate noncommercial or fair use. See Wells Fargo & Co. v. WhoisGuard, FA 1103650 (Forum Dec. 13, 2007) (“There is no dispute that respondent previously used the disputed domain name to obtain personal and financial information from Internet customers of complainant. This fraudulent use [is] known as ‘phishing’”); see also 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).”). In the present case, the Panel notes the screenshots of the resolving website to see how Respondent has used the domain name to attempt to phish for information. See Compl. Ex. E. Therefore, the Panel finds Respondent does not use the disputed domain name for a bona fide offering of goods and services or legitimate noncommercial or fair use.
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain name.
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 disputed domain name in bad faith because the resolving website disrupts Complainant’s business by redirecting internet users to a phishing scheme. Past panels have found bad faith if the resolving website disrupts a complainant’s business, even if the actions are not directly competing with the Complainant’s business. See PopSockets LLC v. san mao, FA 1740903 (Forum Aug. 27, 2017) (finding disruption of a complainant’s business which was not directly commercial competitive behavior was nonetheless sufficient to establish bad faith registration and use per Policy ¶ 4(b)(iii)); see also Love City Brewing Company v. Anker Fog / Love City Brewing Company, FA 1753144 (Forum Nov. 27, 2017) (Finding that Respondent disrupts Complainant’s business by pointing Internet users to an expired webpage. This may create the perception that Complainant is closed, never existed, or is not a legitimate business. Therefore, the Panel finds that Respondent registered and uses the disputed domain names in bad faith per Policy ¶ 4(b)(iii).). Here, Respondent uses a confusingly similar domain name to redirect users to a website where they are presented with a phishing scheme. See Compl. Ex. E. As the Panel agrees that this conduct disrupts Complainant’s business, the Panel finds Respondent acted in bad faith.
Secondly, Complainant argues that Respondent attempts to attract internet users for commercial gain by passing itself off as Complainant. Using a disputed domain name to redirect users to a website that mimics a complainant’s site for financial gain may indicate bad faith use and by inference bad faith registration of a domain name. See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business); see also Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”). In the present case, the Panel notes the screenshot of Respondent’s resolving website, as well as the advertisement which Respondent attempts to mimic which are in evidence. See Compl. Exs. D and E. Therefore, the Panel finds Respondent registered and used the domain name in bad faith.
Thirdly, Complainant contends that Respondent had actual notice of Complainant’s rights in the SPRINT mark, evidenced by the use of the mark and the notoriety of the mark. Previously, panels have referenced the fame and implemented use of a mark to determine whether a respondent had actual notice of a complainant’s rights. 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 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.”). Here, the Panel notes information on Complainant’s prominent and well known business, as well as media articles that show Respondent attempted to mimic Complainant’s previous giveaway, to determine that Respondent had actual notice of Complainant’s rights in the SPRINT mark. See Compl. Ex. B; see also Compl. Exs. D and E. As the Panel finds Respondent had actual notice of Complainant’s rights in the SPRINT mark, it finds Respondent used the domain name in bad faith and by inference that it was also so motivated in the registration of the domain name.
Fifthly, 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 SPRINT mark and in view of the conduct that Respondent has engaged in when using the 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 <sprintpacecargiveaway.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown QC
Panelist
Dated: March 10, 2022
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