Chase Corporation v. Blanca Luna / Chase Corporation
Claim Number: FA2204001993965
Complainant is Chase Corporation (“Complainant”), represented by Ryan Thomas of Fish & Richardson P.C., Minnesota, USA. Respondent is Blanca Luna / Chase Corporation (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chasecorporation.us>, registered with PDR Ltd. d/b/a PublicDomainRegistry.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.
Charles A. Kuechenmeister, Panelist.
Complainant submitted a Complaint to the Forum electronically on April 27, 2022; the Forum received payment on April 27, 2022.
On April 28, 2022, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <chasecorporation.us> domain name (the Domain Name) is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On May 9, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of May 31, 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@chasecorporation.us. Also on May 9, 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 June 6, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister as Panelist.
On June 8, 2022, in response to a Request from the Panel, Complainant submitted an Additional Submission.
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 to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of a Response from Respondent.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a manufacturer of high-performance industrial coatings, tapes, adhesives and sealants. It has rights in the CHASE CORPORATION C-SPRAY mark through its registration of that mark with the United States Patent and Trademark Office. Respondent’s <chasecorporation.us> Domain Name is virtually identical and confusingly similar to Complainant’s mark because it incorporates the CHASE CORPORATION mark in its entirety, merely adding the “.us” country code top-level domain (“ccTLD”).
Respondent has no rights or legitimate interests in the Domain Name. It is not commonly known by the Domain Name and Complainant has not authorized or licensed Respondent to use the Chase mark. Additionally, Respondent does not use the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Instead, the Domain Name resolves to a website that displays the Chase Mark in an attempt to pass off as affiliated with Complainant and phish for personal or private information of site visitors.
Respondent registered or uses the Domain Name in bad faith. Respondent registered or is using the Domain Name in order to pass itself off as affiliated with Complainant and divert customers for commercial gain, and to phish for personal, private information. Finally, Respondent registered the Domain Name with actual knowledge of Complainant’s rights in the Chase Mark.
B. Respondent
Respondent did not submit a Response in this proceeding.
C. Additional Submission--Complainant
Respondent is not the owner or beneficiary of a trade or service mark identical to the 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 a complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:
(1) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) the respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision, except where differences in the two policies require a different analysis.
In view of Respondent's failure to submit a Response, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations 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. Nevertheless, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. 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”), WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), at ¶ 4.3 (“In cases involving wholly unsupported and conclusory allegations advanced by the complainant, . . . panels may find that—despite a respondent’s default—a complainant has failed to prove its case.”).
The Panel finds as follows with respect to the matters at issue in this proceeding:
The CHASE CORPORATION C-SPRAY mark was registered to Complainant with the USPTO (Reg. No. 3,608,923) on April 21, 2009 (USPTO registration certificate included in Complaint Exhibit 5). Complainant’s registration of its mark with the USPTO establishes its rights in that mark for the purposes of Policy ¶ 4(a)(i). DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
Respondent’s <chasecorporation.us> Domain Name is identical or confusingly similar to Complainant’s CHASE CORPORATION C-SPRAY mark. It contains the written CHASE CORPORATION element of the mark in its entirety, merely adding the “.us” ccTLD. This change does not distinguish the Domain Name from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). Am. Express Co. v. McWIlliam, FA 268423 (Forum July 6, 2004) (holding that the ccTLD “.us” does not negate confusing similarity under Policy ¶ 4(a)(i)). The C-SPRAY logo element of Complainant’s mark is not considered in this analysis because domain names do not contain design features. The WIPO Overview 3.0, at ¶ 1.7, states that the test for confusing similarity “typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name.” Notwithstanding the change described above, Complainant’s mark is clearly recognizable within the Domain Name.
For the reasons set forth above, the Panel finds that the Domain Name is identical or confusingly similar to the CHASE CORPORATION C-SPRAY mark, in which Complainant has substantial and demonstrated rights.
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. 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”). If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0, at ¶ 2.1.
Policy ¶ 4(c) lists the following four nonexclusive circumstances, any one of which if proven can demonstrate a respondent’s rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) The respondent is the owner or beneficiary of a trade or service mark that is identical to the domain name;
(ii) Before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;
(iii) The respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iv) The respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name because (i) it is not commonly known by the Domain Name and Complainant has not authorized or licensed Respondent to use its marks, (ii) Respondent does not use the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use because the Domain Name resolves to a website that passes off as affiliated with Complainant and phishes for personal or private information of site visitors, and (iii) Respondent is not the owner or beneficiary of a trade or service mark identical to the Domain Name. These allegations are addressed as follows:
Complainant conducted a search of the records of the Trademark Electronic Search System (TESS) of the USPTO for a record of any trademarks registered with that agency in the name of the Respondent Blanca Luna. The TESS report submitted as Exhibit A to Complainant’s Additional Submission states that no records were found to match the criteria of the inquiry. On this evidence, and in the absence of any evidence to the contrary, the Panel finds that Respondent is not the owner or beneficiary of a valid trade or service mark identical to the Domain Name.
Amended Complaint Exhibit 6 is a screenshot of the pages on the website resolving from the Domain Name. These pages feature the name Chase Corporation and the registered C-Spray logo at the top of each page of the website, appearing in virtually the same style, format and coloring as used by Complainant on its website, shown on Amended Complaint Exhibit 3, and as appearing on the USPTO registration certificates for Complainant’s mark included in Amended Complaint Exhibit 5. The only difference between the two is the location of the written words “Chase Corporation” relative to the C-Spray logo—everything else is identical. The website purports to offer Bitcoin wallet and platform services. It does not advertise the kinds of products offered by Complainant, but its almost exact duplication of Complainant’s CHASE CORPORATION C-SPRAY mark clearly sends the message that this web site is at a minimum affiliated with and endorsed by Complainant, which it is not. This qualifies as passing off, which is neither a bona fide offering of goods or services as contemplated by Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use as contemplated by Policy ¶ 4(c)(iii). Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name), Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business), Nokia Corp. v. Eagle, FA 1125685 (Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)).[i]
Respondent’s website also features a User Login Page which invites the visitor to log in to his or her account by submitting an email address and password. Again, while the business advertised on Respondent’s website is very different from that advertised on Complaint’s site, the extent to which Respondent’s site duplicates Complainant’s mark may well cause the visitor to believe that it is being invited to log in to its account with Complainant and give the password for that account. This qualifies as phishing, which is a fraudulent attempt to obtain sensitive information such as usernames, passwords and credit card details by disguising oneself as a trustworthy entity in an electronic communication, and is evidence of a lack of rights or legitimate interest in the Domain Name. iFinex Inc. v. Yuri Hefetz / Genie-Solution, FA 1789385 (Forum July 9, 2018) (holding that the respondent’s mimicking the complainant’s website in order to cause existing or potential customers to falsely believe they are setting up a new account with the complainant is prima facie evidence of the respondent’s lack of rights and legitimate interests in the disputed domain name).
Complainant states that it has never authorized or permitted Respondent to use its mark. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel. In the absence of evidence that a respondent is authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights or legitimate interests in the domain name. IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name), Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”).
The WHOIS information furnished to the Forum by the registrar and the WHOIS report submitted as Amended Complaint Exhibit 2 both list “Blanca Luna / Chase Corporation” as the registrant of the Domain Name. The first of these names, Blanca Luna, bears no resemblance to the Domain Name. Evidence could, of course, in a given case demonstrate that the respondent is commonly known by a domain name different from the name in which it registered the domain name, e.g., the case of a domain name incorporating the brand name of a specific product offered by and associated with the respondent. In the absence of any such evidence, however, and in cases where no Response has been filed, UDRP panels have consistently held that WHOIS evidence of a registrant name which does not correspond with the domain name is sufficient to prove that the respondent is not commonly known by the domain name. 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), 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). The Panel is satisfied that Respondent Blanca Luna has not been commonly known by the Domain Name for the purposes of Policy ¶ 4(c)(iii).
The second of these names is identical to the Domain Name. This is not conclusive, however, because as discussed above Respondent is not authorized to use Complainant’s mark, and the evidence before the Panel gives no indication that Respondent used the “Chase Corporation” name for any purpose other than to register the Domain Name and pass off as Complainant. Registering a domain name in a name that is similar or identical to the domain name is not, by itself, sufficient to demonstrate that the respondent “has been commonly known by” it for the purposes of Policy ¶ 4(c)(iii). There must be some evidence, independent of the registration and any website resolving from it, that the respondent used the name in a business or some other undertaking, or that persons have by other means come to associate the respondent with that name. If a person could acquire rights or legitimate interests in a domain name under Policy ¶ 4(c)(iii) by the simple expedient of registering it in a similar or identical name, Policy ¶ 4(c)(iii) would be completely nullified. Augusta National, Inc. v. Ryan Carey, FA1758547 (Forum Dec. 21, 2017) (“If a respondent could acquire rights and legitimate interests in a domain name through Policy ¶ 4(c)(ii) by the simple expedient of incorporating the complainant’s mark into the name of his business entity, the intent and purpose of the Policy would be completely frustrated.”), Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding that, although the respondent listed itself as “Jessie McKoy / Ripple Reserve Fund” in the WHOIS contact information, it did not provide any affirmative evidence to support this identity; combined with the fact that the complainant claimed it did not authorize the respondent to use the mark, the respondent is not commonly known by the domain name). The Panel finds that Respondent Chase Corporation has not been commonly known by the Domain Name for the purposes of Policy ¶ 4(c)(iii).
The evidence furnished by Complainant establishes the required prima facie case. On that evidence, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
Policy ¶ 4(b) sets forth a nonexclusive list of four circumstances, any one of which if proven would be evidence of bad faith use and registration of a domain name. They are as follows:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the 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 the respondent’s web site or location or of a product of service on the respondent‘s web site or location.
The evidence of Respondent’s conduct discussed above in the rights or legitimate interests analysis also supports a finding of bad faith registration and use, based upon one or more of the foregoing grounds articulated in the Policy and upon additional grounds adopted by UDRP panels over the years. First, by using the Domain Name to pass off as Complainant and purport to offer its services for remuneration, Respondent is using the Domain Name to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of its web site by Complainant. The evidence does not establish whether Respondent is actually providing the services advertised or fraudulently representing that it does but instead luring the customer into bogus financial transactions. Under either scenario, however, Respondent’s conduct fits squarely within the circumstances described in Policy ¶ 4(b)(iv) and is manifest evidence of bad faith registration and use. Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”).
As discussed above, Respondent is using the Domain Name to pass off as Complainant. Policy ¶ 4(b) recognizes that mischief can manifest in many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (January 5, 2005). The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and passing off as a complainant, in and of itself, is evidence of bad faith. Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith 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.”).
As also discussed above, it is likely that Respondent is using the website resolving from the Domain Name to phish for sensitive personal and private information from visitors. Such a use can only be described as exhibiting bad faith in the registration and use of the domain name. Juno Online Servs., Inc. v. Iza, FA 245960 (Forum May 3, 2004) (finding that a UDRP respondent’s use of a domain name that “is confusingly similar to Complainant’s mark, redirects Internet users to a website that imitates Complainant’s … website, and is used to fraudulently acquire personal information from Complainant’s clients” was evidence of bad faith registration and use).
Finally, it is evident that Respondent had actual knowledge of Complainant and its mark when it registered the Domain Name in April 2016 (WHOIS report submitted as Amended Complaint Exhibit 2 shows creation date). Complainant has been using its CHASE CORPORATION C-SPRAY mark at least as early as 1980 (USPTO registration certificate included in Amended Complaint Exhibit 5 shows a first use in 1980) and Respondent is using a virtually exact duplicate of it on its website. There is no question that it knew of Complainant and its mark when it registered the Domain Name. Given the non-exclusive nature of Policy ¶ 4(b), registering a confusingly similar domain name with actual knowledge of a complainant’s rights in its mark is evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii). Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Name in bad faith within the meaning of Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <chasecorporation.us> Domain Name be TRANSFERRED from Respondent to Complainant
Charles A. Kuechenmeister, Panelist
June 10, 2022
[i] The cases cited in this section were decided under the Uniform Dispute Resolution Policy (UDRP), which does not include usTLD Policy ¶ 4(c)(i). The usTLD Policy ¶¶ 4(c)(ii), (iii) and (iv) are identical to UDRP Policy ¶¶ 4(c)(i)(ii) and (iii).
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