Greystone & Co. II LLC v. Graystone Alloyed
Claim Number: FA2203001990042
Complainant is Greystone & Co. II LLC ("Complainant"), represented by Yuval H. Marcus of Leason Ellis LLP, New York, USA. Respondent is Graystone Alloyed ("Respondent"), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <greystonejobs.com>, registered with Wild West Domains, 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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 28, 2022; the Forum received payment on March 28, 2022.
On March 29, 2022, Wild West Domains, LLC confirmed by email to the Forum that the <greystonejobs.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 March 30, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 19, 2022 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@greystonejobs.com. Also on March 30, 2022, the Written Notice of the Complaint, notifying Respondent of the email 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 April 25, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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 is a commercial real estate company headquartered in New York, with loan servicing offices in Virginia and Texas and over 1,000 commercial real estate experts nationwide. Complainant is the top commercial FHA, Fannie Mae, and Freddie Mac lender, and consistently ranks in Standard & Poor's highest category as a commercial loan servicer. In 2020, Complainant originated $16.6 billion in loans.
Complainant asserts common law rights in GREYSTONE, which Complainant and its affiliates have used to identify their services since 1988. Complainant states that over the years it has invested significant time and resources in developing and protecting its name and mark, and asserts that the mark has become well known in the commercial real estate industry and that consumers have come to associate it with Complainant.
Respondent registered the disputed domain name <greystonejobs.com> in December 2021. Complainant states that the domain name has been used to impersonate employees of Complainant in check fraud schemes, and provides supporting evidence of email correspondence that includes the disputed domain name and Complainant's name and physical address, along with other references to Complainant. Complainant states that Respondent is not commonly known by the domain name, has no affiliation or relationship with Complainant, and is not licensed or authorized to use Complainant's mark.
Complainant contends on the above grounds that the disputed domain name <greystonejobs.com> is confusingly similar to its GREYSTONE mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
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 Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").
To prevail under the Policy, Complainant must show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights. If the claim relies upon common law rights, Complainant must present evidence that the mark has acquired secondary meaning — i.e., that it has become a distinctive identifier associated with Complainant or its goods or services. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, supra, § 1.3.
Complainant asserts that it has common law trademark rights in GREYSTONE arising from its continuous and extensive use in connection with commercial real estate loan services for more than thirty years and Complainant's leading position in that market. The evidence provided by Complainant, at least in the absence of any challenge by Respondent, is sufficient in the view of this Panel to demonstrate common law rights in the mark for purposes of paragraph 4(a)(i) of the Policy. See, e.g., Mary Washington Healthcare v. Domain Administrator / Fundacion Privacy Services LTD, FA 1976877 (Forum Jan. 13, 2022) (finding common law trademark rights in similar circumstances).
The disputed domain name <greystonejobs.com> incorporates Complainant's GREYSTONE mark, adding the generic term "jobs" and the ".com" top-level domain. These additions do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., Accela, Inc. v. Redacted for Privacy, Withheld for Privacy ehf / Alfred Williams, D2021-3775 (WIPO Dec. 31, 2021) (finding <accelajobs.com> confusingly similar to ACCELA); Southwest Airlines Co. v. King Mar / Legal Hasan / Larry Airlines / LaozEllison, FA 1972432 (Forum Dec. 15, 2021) (finding <southwestairlinesjobs.com> confusingly similar to SOUTHWEST AIRLINES). The Panel considers the disputed domain name to be confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's mark without authorization, and its sole apparent use has been to impersonate Complainant and its employees in connection with a fraudulent scheme. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., Accela, Inc. v. Redacted for Privacy, Withheld for Privacy ehf / Alfred Williams, supra (finding lack of rights or interests in similar circumstances); Southwest Airlines Co. v. King Mar / Legal Hasan / Larry Airlines / LaozEllison, supra (same).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent used a privacy registration service to register a domain name incorporating Complainant's name and mark without authorization, and is using the domain name to impersonate Complainant and its employees in connection with a fraudulent scheme. Such conduct is indicative of bad faith registration and use under the Policy. See, e.g., Accela, Inc. v. Redacted for Privacy, Withheld for Privacy ehf / Alfred Williams, supra (finding bad faith registration and use in similar circumstances); Southwest Airlines Co. v. King Mar / Legal Hasan / Larry Airlines / LaozEllison, supra (same). The Panel so finds.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <greystonejobs.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: April 26, 2022
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