CLARION PARTNERS v. T Bailey
Claim Number: FA2202001984826
Complainant is CLARION PARTNERS (“Complainant”), represented by CORSEARCH, INC, California, USA. Respondent is T Bailey (“Respondent”), Oregon, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <clarionpatners.com>, registered with Wild West Domains, LLC.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 17, 2022; the Forum received payment on February 17, 2022.
On February 18, 2022, Wild West Domains, LLC confirmed by e-mail to the Forum that the <clarionpatners.com> domain name is registered with Wild West Domains, LLC and that Respondent is the current registrant of the name. Wild West Domains, LLC has verified that Respondent is bound by the Wild West Domains, 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 February 22, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 14, 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@clarionpatners.com. Also on February 22, 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.
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, CLARION PARTNERS, provides real estate investment services. Complainant has rights in the CLARION PARTNERS mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., 4,153,784 registered June 5, 2012). The <clarionpatners.com> domain name is confusingly similar to Complainant’s mark because Respondent has incorporated the entire mark with only a slight misspelling and added the “.com” generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <clarionpatners.com> domain because Respondent is not commonly known by the disputed domain name and is not authorized to use Complainant’s CLARION PARTNERS mark. 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 because the disputed domain resolves to an inactive webpage and Respondent uses the domain in furtherance of a phishing scheme.
Respondent has registered and uses the <clarionpatners.com> domain name in bad faith because Respondent uses the disputed domain name to pass itself off as affiliated with Complainant. In addition, Respondent engages in typosquatting and had actual prior knowledge of Complainant’s rights in the mark. Finally, Respondent registered the domain name in bad faith because the name resolves to an inactive webpage.
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 <clarionpatners.com> domain name.
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 CLARION PARTNERS mark based on registration with the United States Patent and Trademark Office. Registration with the USPTO is generally sufficient to establish rights in a 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). Complainant provides evidence of its registration with the USPTO for the CLARION PARTNERS mark (e.g., 4,153,784 registered June 5, 2012). The Panel finds that Complainant has rights in the CLARION PARTNERS mark under Policy ¶ 4(a)(i).
The <clarionpatners.com> domain name is confusingly similar to Complainant’s mark because Respondent has incorporated the entire mark, eliminated the space in the mark, and added the “.com” gTLD. Domain names which incorporate the entire mark are usually considered confusingly similar, while deleting spaces and adding a gTLD generally creates no distinction between a complainant’s mark and a disputed domain name under Policy ¶ 4(a)(i). See Rockwell Automation v. Zhao Ke, FA 1760051 (Forum Jan. 2, 2018) (“The disputed domain name <rockwellautomation.co> corresponds to Complainant's registered ROCKWELL AUTOMATION mark, with the space omitted and the ".co" top-level domain appended thereto. These alterations do not distinguish the domain name from Complainant's mark for purposes of the Policy.”). Respondent has made the changes identified above and these changes may not create a sufficient distinction between Complainant’s mark and the disputed domain name. The Panel finds that that Respondent’s domain name is confusingly similar to Complainant’s mark per 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 claims that Respondent does not have rights or legitimate interests in the <clarionpatners.com> domain name because Respondent is not commonly known by the disputed domain name and is not associated with Complainant or authorized to use Complainant’s CLARION PARTNERS 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 Instron Corp. v. Kaner, FA 768859 (Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute). Additionally, lack of authorization to use a complainant’s mark may demonstrate the respondent is not commonly known by the disputed domain name. 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). There is no evidence available in the WHOIS information to suggest that Respondent is known by <clarionpatners.com> and no information suggests Complainant authorized Respondent to use the CLARION PARTNERS mark. The WHOIS information lists the registrant of the domain as “T Bailey.” The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent does not use the <clarionpatners.com> domain name in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Under Policy ¶¶ 4(c)(i) and (iii), past panels have found no bona fide offering of goods or services, nor any legitimate noncommercial or fair use where the domain name resolves to an inactive webpage. See Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018) (“both Domain Names resolve to a web site that shows the words, ‘Not Found, The requested URL / was not found on this server.’ Inactive holding of a domain name does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii).”). the resolving webpage resolves to an inactive webpage which displays the message “This site can’t be reached.” The Panel finds that Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii).
Complainant also argues that Respondent does not use the <clarionpatners.com> domain name in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent uses the name in furtherance of a phishing scheme. Under Policy ¶¶ 4(a)(ii) past panels have found no bona fide offering of goods or services, nor any legitimate noncommercial or fair use where the domain name was used to phish for financial information via email. See Chevron Intellectual Property LLC v. Thomas Webber / Chev Ronoil Recreational Sport Limited, FA 1661076 (Forum Mar. 15, 2016) (finding that the respondent had failed to provide a bona fide offering of goods or services or any legitimate noncommercial or fair use, stating, “Respondent is using an email address to pass themselves off as an affiliate of Complainant. Complainant presents evidence showing that the email address that Respondent has created is used to solicit information and money on false pretenses. The disputed domain name is being used to cause the recipients of these emails to mistakenly believe Respondent has a connection with Complainant and is one of the Complainant’s affiliates.”). Respondent uses the disputed domain name to send emails to Complainant’s managing partners asking them to make a payment of $50,000 to “Rac Enterprises” to settle an invoice. Therefore, the Panel may find that Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(a)(ii).
Complainant has proved this element.
Complainant argues that Respondent has registered and uses the <clarionpatners.com> domain in bad faith because it registered the domain to pass itself off as affiliated with Complainant which may be evidence of bad faith per Policy ¶ 4(b)(iv). See Qatalyst Partners LP v. Devimore, FA 1393436 (Forum July 13, 2011) (finding that using the disputed domain name as an e-mail address to pass itself off as the complainant in a phishing scheme is evidence of bad faith registration and use); see also Smiths Group plc v. Snooks, FA 1372112 (Forum Mar. 18, 2011) (finding that the respondent’s attempt to impersonate an employee of the complainant was evidence of bad faith registration and use under Policy ¶ 4(a)(iii)). Respondent’s disputed domain name may not be sufficiently distinct from Complainant’s CLARION PARTNERS mark. Additionally, Respondent has sent an email using the email address, sonia.haque@clarionpatners.com, pretending to be Sonia Haque, who is a portfolio accountant who works for Complainant. The Panel finds that Respondent has registered and uses the disputed domain in bad faith under Policy ¶ 4(b)(iv).
Complainant argues that Respondent has registered and uses the <clarionpatners.com> domain in bad faith because it resolves to an inactive webpage which may be evidence of bad faith per Policy ¶ 4(a)(iii). See Regions Bank v. Darla atkins, FA 1786409 (Forum June 20, 2018) (“Respondent registered and is using the domain name in bad faith under Policy ¶ 4(a)(iii) because Respondent uses the domain name to host an inactive website.”). Respondent’s disputed domain name resolves to an inactive webpage. The Panel finds that Respondent has registered and uses the disputed domain in bad faith under Policy ¶ 4(a)(iii).
Complainant argues that Respondent has registered and uses the <clarionpatners.com> domain in bad faith because it had actual knowledge of Complainant’s rights in the mark prior to registering the name, which may be evidence of bad faith per Policy ¶ 4(a)(iii). 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 had prior actual knowledge given Respondent’s use of the domain to impersonate one of Complainant’s employees. The Panel finds that Respondent has registered and uses the disputed domain in bad faith under Policy ¶ 4(a)(iii).
Complainant argues that Respondent has registered and uses the disputed domain in bad faith because it engages in typosquatting. Typosquatting or capitalizing on slight misspellings between the disputed domain name and a mark or a Complainant’s actual domain name, may be evidence of bad faith under Policy ¶ 4(a)(iii) See Under Armour, Inc. v. JEFF RANDALL, FA1410001585022 (Forum Nov. 18, 2014) (finding that the respondent’s <unerarmour.com> domain name constitutes typosquatting of the complainant’s UNDER ARMOUR mark, which is evidence of bad faith pursuant to Policy ¶ 4(a)(iii)). Respondent has removed the second letter “r” found in complainant’s mark, taking advantage of internet users who may attempt to reach Complainant’s domain. The Panel finds that Respondent registered and uses the disputed domain in bad faith.
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 <clarionpatners.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
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