Vulcan Materials Company v. Ned Hatchinson / Milen Radumilo
Claim Number: FA2207002003227
Complainant is Vulcan Materials Company (“Complainant”), represented by Jake M. Gipson of Bradley Arant Boult Cummings LLP, Alabama, USA. Respondent is Ned Hatchinson / Milen Radumilo (“Respondent”), Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names listed in the complaint are <vulcanmaterials.co> and <vulcan-materials.com>, registered with Porkbun LLC; Tucows Domains Inc..
For the reasons given below, the Panel finds that the only relevant domain name for this case is <vulcanmaterials.co>.
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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 6, 2022; the Forum received payment on July 7, 2022.
On July 8, 2022, Porkbun LLC; Tucows Domains Inc. confirmed by e-mail to the Forum that the <vulcanmaterials.co> and <vulcan-materials.com> domain names are registered with Porkbun LLC; Tucows Domains Inc. and that Respondent is the current registrant of the names. Porkbun LLC; Tucows Domains Inc. has verified that Respondent is bound by the Porkbun LLC; Tucows Domains Inc. 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 July 14, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 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@vulcanmaterials.co, postmaster@vulcan-materials.com. Also on July 14, 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 August 10, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. In support of this allegation it states, in pertinent part:
a) Each of the disputed domain names are similar variants of Complainant’s VULCAN Mark and <vulcanmaterials.com> domain name;
b) The timing of registration corroborates the common ownership. The <vulcan-materials.com> domain name was registered on June 30, 2022, only eight days after Complainant notified the registrar Porkbun of phishing or other fraudulent activity associated with the <vulcanmaterials.co> domain name and Porkbun suspended that domain name;
Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
The Panel finds that allegations (a) and (b) above do not necessarily indicate that the domain names are under common control, nor do the other arguments set forth in the Complaint. The evidence in the record shows that the disputed domain names are registered with different registrars. One domain name is used in furtherance of a fraudulent email phishing scheme, the other resolves to a parked page with click-through advertising links. For these reasons, the Panel finds that Complainant has not presented sufficient evidence to find that both disputed domain names were registered by the same person or entity.
Under the Forum’s Supplemental Rule 4(c), the Panel must determine which domain names are commonly owned and elect which Respondent to proceed against, as a UDRP decision can proceed against only one Respondent. The Panel is then required to dismiss the Complaint in relation to the domain names not commonly owned by the chosen Respondent.
Accordingly, the Panel will rule only on the <vulcanmaterials.co> domain name, and it will dismiss, without prejudice, the complaint regarding the <vulcan-materials.com> domain name. See Brian Renner v. Contactprivacy.com, FA1007001335211 (Forum Aug. 26, 2010); see also Amazon Technologies, Inc. v. M M / shanwang chen / feifei lin / HUA ZHANG / L H / Eddie Nash / Heather Brooker, FA2111001973471 (Forum Dec. 17, 2021).
A. Complainant
Complainant states that it produces construction aggregates. Complainant has been using its VULCAN mark since at least as early as December 1973. In connection with its VULCAN mark and related marks, Complainant operates a website at <vulcanmaterials.com>. Complainant asserts rights in the VULCAN mark based upon its registration in the United States in 2019.
Complainant alleges that the disputed domain name is confusingly similar to its VULCAN mark because it incorporates the mark in its entirety, merely adding the generic/descriptive term “materials” and the country-code top-level domain (ccTLD) “.co”:
According to Complainant, Respondent does not have rights or legitimate interests in the disputed domain name. Respondent is not licensed or authorized to use Complainant’s VULCAN mark and is not commonly known by the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services nor for a legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to pass off as Complainant in furtherance of a fraudulent email phishing scheme. Specifically, an individual purporting to be one of Complainant’s employees sent an email using the disputed domain name to a potential customer of Complainant, advising the potential customer of a new project and sending a “commercial offer”. The fraudulent email displayed Complainant’s mark, logo, corporate office address, company website, and tagline.
Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith because it is used to send fraudulent emails, disrupting Complainant’s business and seeking commercial gain. Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the VULCAN mark. Respondent registered the disputed domain names using a privacy service.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the mark VULCAN and uses it to market construction material.
Complainant’s rights in its mark date back to at least 2019.
The disputed domain name was registered in 2022.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The disputed domain name is used in furtherance of a fraudulent email phishing scheme; the fraudulent emails display Complainant’s mark, logo, and business address.
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 disputed domain name incorporates Complainant’s VULCAN mark in its entirety, merely adding the generic/descriptive term “materials” and the country-code top-level domain (ccTLD) “.co”. The addition of descriptive terms and TLDs to a mark does not distinguish the disputed domain names from the mark incorporated therein per Policy ¶ 4(a)(i). See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”); see also 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.”). Therefore the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Respondent is not licensed or otherwise authorized to use Complainant’s VULCAN mark. Respondent is not commonly known by the disputed domain name: under Policy ¶ 4(c)(ii), WHOIS information may be used to determine whether a respondent is commonly known by a disputed domain name. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Here, the WHOIS information for the disputed domain name lists the registrant as “Ned Hatchinson”. Therefore the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Respondent uses the disputed domain name to pass off as Complainant by impersonating one of Complainant’s employees in furtherance of an email phishing scheme. This is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Emerson Electric Co. v. Adilcon Rocha, FA 1735949 (Forum July 11, 2017) (finding that respondent’s attempt to pass off as complainant through emails does not constitute a bona fide offering of goods or services and, as such, respondent lacked rights or legitimate interests in the disputed domain name); see also DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (”Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”). Therefore the Panel finds that Respondent fails to use the disputed domain name to make 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). And the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, as already noted, Respondent uses the disputed domain name to send fraudulent emails in furtherance of a phishing scheme. Such conduct is evidence of bad faith registration and use per Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the <abbuie.com> domain name to impersonate Complainant’s CEO. Such use is undeniably disruptive to Complainant’s business and demonstrates bad faith pursuant to Policy ¶ 4(b)(iii), and/or Policy ¶ 4(b)(iv)”); see also Chevron Intellectual Property, LLC v. Jack Brooks, FA 1635967 (Forum Oct. 6, 2015) (finding that Respondent’s use of <chevron-corps.com> to impersonate an executive of Complainant in emails is in opposition to Complainant and is therefore in bad faith under Policy ¶ 4(b)(iii)). Thus the Panel finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iii) and/or Policy ¶ 4(b)(iv).
Further, Respondent registered the disputed domain names with actual knowledge of Complainant’s mark: the fraudulent emails display Complainant’s mark, logo, and business address. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant’s rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark prior to Respondent’s registration of the disputed domain name and that this constitutes bad faith registration and use under Policy ¶ 4(a)(iii).
The Panel dismisses, without prejudice, the Complaint against the <vulcan-materials.com> domain name.
Having established all three elements required under the ICANN Policy for the domain name <vulcanmaterials.co>, the Panel concludes that relief shall be GRANTED for that domain name.
Accordingly, it is Ordered that the <vulcanmaterials.co> domain name be TRANSFERRED from Respondent to Complainant and that the <vulcan-materials.com> domain name REMAIN WITH Respondent.
Richard Hill, Panelist
Dated: August 10, 2022
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