Twilio Inc. v. bopbh brown
Claim Number: FA2207002005828
Complainant is Twilio Inc. (“Complainant”), represented by Tsan Abrahamson of Cobalt LLP, California, USA. Respondent is bopbh brown (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sendgrid-okta.com>, registered with Porkbun LLC.
PANEL
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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 26, 2022; the Forum received payment on July 26, 2022.
On July 26, 2022, Porkbun LLC confirmed by e-mail to the Forum that the <sendgrid-okta.com> domain name is registered with Porkbun LLC and that Respondent is the current registrant of the name. Porkbun LLC has verified that Respondent is bound by the Porkbun 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 July 29, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 18, 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@sendgrid-okta.com. Also on July 29, 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 20, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury 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, Twilio Inc., offers electronic mail and messaging services and delivery of messages by electronic transmission for others. Complainant has rights in the SENDGRID mark through registration of the mark around the world including with the United States Patent and Trademark Office (“USPTO”). Respondent’s <sendgrid-okta.com> domain name is virtually identical and confusingly similar to Complainant’s mark.
Respondent has no legitimate interests in the <sendgrid-okta.com> domain name. Respondent is not commonly known by the domain name and Complainant has not authorized or licensed to Respondent any rights in the SENDGRID mark. Additionally, Respondent does not use the domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain name in conjunction with a phishing scheme which directs Complainant’s employees to a website that makes unauthorized use of the SENDGRID mark in order to collect personal information
Respondent has engaged in a longstanding pattern of identical cybersquatting, by registering the trademark of a third party along with the term “okta” in numerous phishing attempts, all of which infringe on the trademarks of brand owners. Respondent registered the <sendgrid-okta.com> domain name in bad faith with actual knowledge of Complainant’s rights in the SENDGRID mark and uses it in bad faith in order to disrupt Complainant’s business and to participate in phishing. Respondent made use of a privacy service and provided false contact information when registering the domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has established all the elements entitling it to relief.
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 has shown that it has rights in the SENDGRID mark through many registrations of the mark including with the USPTO (e.g., Reg. No. 3,988,652 registered July 5, 2011). The Panel finds Respondent’s <sendgrid-okta.com> domain name to be virtually identical and confusingly similar to Complainant’s mark because it incorporates the SENDGRID mark in its entirety and adds a hyphen, the term “okta”, which refers to a third-party security service used by Complainant, and the inconsequential “.com” generic top-level domain (“gTLD”), which may be ignored.
Complainant has established this element.
(i) before any notice to Respondent of the dispute, the use by Respondent 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; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The <sendgrid-okta.com> domain name was registered on July 20, 2022, many years after Complainant registered its SENDGRID mark with the USPTO. It has been used to send to Complainant’s employees the text message:
“Alert! Your SendGrid Schedule has changed! Please tap sendgrid-okta.com [link] to see changes!
These circumstances, together with Complainant’s assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain name on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the <sendgrid-okta.com> domain name. See JUUL Labs, Inc. v. Dryx Emerson / KMF Events LTD, FA1906001849706 (Forum July 17, 2019).
Respondent has made no attempt to do so.
The Panel finds that Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has established this element.
Registration and Use in Bad Faith
The four illustrative circumstances set out in paragraph 4(b) of the Policy as evidence of the registration and use of a domain name in bad faith for purposes of paragraph 4(a)(iii) are not exclusive.
The circumstances set out above in relation to the second element satisfy the Panel that Respondent was fully aware of Complainants’ SENDGRID mark when Respondent registered the <sendgrid-okta.com> domain name and that Respondent has registered and is using the domain name in bad faith for the purpose of obtaining personal information from Complainant’s employees by impersonating Complainant.
Complainant has established this element.
In support of its contention that Respondent has previously been found to have registered and used domain names in bad faith, Complainant cites:
Twitter, Inc. v. ILove MYGF, FA2206002001155 (Forum July 20, 2022) <twitter-okta.com>;
Epic Games, Inc. v. Hillary Putin, FA2206001999351 (Forum July 18, 2022) <epicgames-okta.com>;
Twentieth Century Fox Film Corporation v. Ian, FA1802001772894 (Forum March 26, 2018) <foxgroup-okta.com>;
Varian Medical Systems, Inc. v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, D2020-1638 (WIPO August 24, 2020) <varianokta.com>; and
Carvana, LLC v. Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / Lenny Mathewson, D2020-3405 (WIPO February 8, 2021) <carvanaokta.com>.
However, because the registrant names, whether genuine or fictitious, in which those domain names were registered are all different, the Panel is unable to accept that they were registered by the present Respondent.
DECISION
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 <sendgrid-okta.com> domain name be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: August 22, 2022
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