Reed Elsevier Inc. and LexisNexis Risk Data Management Inc. v. Dmitriy Kolobanov
Claim Number: FA1010001354985
Complainant is Reed Elsevier Inc. and LexisNexis Risk Data Management Inc. (“Complainant”), represented by Tracy N. Stewart of Fulbright & Jaworski L.L.P., District of Columbia, USA. Respondent is Dmitriy Kolobanov (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <securedaccurint.com>, registered with WEB COMMERCE COMMUNICATIONS LIMITED d/b/a WEBNIC.CC.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 27, 2010; the National Arbitration Forum received payment on October 28, 2010.
On October 27, 2010, WEB COMMERCE COMMUNICATIONS LIMITED d/b/a WEBNIC.CC confirmed by e-mail to the National Arbitration Forum that the <securedaccurint.com> domain name is registered with WEB COMMERCE COMMUNICATIONS LIMITED d/b/a WEBNIC.CC and that Respondent is the current registrant of the name. WEB COMMERCE COMMUNICATIONS LIMITED d/b/a WEBNIC.CC has verified that Respondent is bound by the WEB COMMERCE COMMUNICATIONS LIMITED d/b/a WEBNIC.CC 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 October 29, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 18, 2010 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@securedaccurint.com. Also on October 29, 2010, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 22, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 makes the following assertions:
1. Respondent’s <securedaccurint.com> domain name is confusingly similar to Complainant’s ACCURINT mark.
2. Respondent does not have any rights or legitimate interests in the <securedaccurint.com> domain name.
3. Respondent registered and used the <securedaccurint.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, LexisNexis Risk Data Management Inc., is a wholly owned subsidiary of Complainant, Reed Elsevier Inc. The Panel elects to consider these two complainants as a single entity, and will refer to them as “Complainant” for the rest of the decision. Complainant owns registration in the ACCURINT mark through registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,624,319 issued September 24, 2002). Complainant provides computerized background information for law enforcement, attorneys, and other similar clients through its LexisNexis operating division under its mark since April, 2001.
Respondent, Dmitriy Kolobanov, registered the <securedaccurint.com> domain name on August 10, 2010. The domain name resolves to a website which acquires personal information of Internet users who access the domain.
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."
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
Complainant asserts its trademark rights in the ACCURINT mark through its registrations with the USPTO (Reg. No. 2,624,319 issued Sept. 24, 2002). The Panel finds that Complainant’s registration of its mark with the USPTO is sufficient to establish Complainant’s rights in the ACCURINT mark pursuant to Policy ¶ 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant contends that Respondent’s <securedaccurint.com> domain name is confusingly similar to its ACCURINT mark. Respondent’s disputed domain name adds the term “secured” and the generic top-level domain (“gTLD”) “.com” to Complainant’s mark. The Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”); see also Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).”).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
The Panel finds a prima facie case has been established by Complainant’s assertion that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). With a prima facie case established, the burden shifts to Respondent to prove the allegations wrong. Respondent has failed to respond to these proceedings, thereby declining to provide any evidence to the Panel of Respondent’s rights or legitimate interests in the disputed domain name. However, the Panel may choose, in its discretion, to review the case under Policy ¶ 4(c). See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”); see also Euromarket Designs, Inc. v. Domain For Sale VMI, D2000-1195 (WIPO Oct. 26, 2000) (“In the absence of direct evidence, the complainant and the panel must resort to reasonable inferences from whatever evidence is in the record. In addition . . . Paragraph 14(b) of the Rules [authorizes] a panel to draw such inferences from respondent’s failure to respond ‘as it considers appropriate.’”).
The WHOIS information lists “Dmitriy Kolobanov” as registrant of the disputed domain name. Complainant contends that Respondent is not commonly known by the <securedaccurint.com> domain name. Complainant asserts that it has not given license nor authorization to Respondent to use its ACCURINT mark. The Panel finds that Respondent is not commonly known by the <securedaccurint.com> domain name pursuant to Policy ¶ 4(c)(ii). See G.D. Searle & Co. v. Cimock, FA 126829 (Nat. Arb. Forum Nov. 13, 2003) (“Due to the fame of Complainant’s mark there must be strong evidence that Respondent is commonly known by the disputed domain name in order to find that Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). However, there is no evidence on record, and Respondent has not come forward with any proof to establish that it is commonly known as CELEBREXRX or <celebrexrx.com>.”); see also DIMC, Inc. v. Phan, D2000-1519 (WIPO Feb. 20, 2001) (rejecting the claim that the respondent was commonly known by the “Krylon” nickname since there was no evidence indicating when the alleged nickname was adopted and how it was used).
Respondent’s disputed domain name resolves to a website which downloads a virus on to Internet users’ computers to acquire personal information of Internet users who access the domain name. Complainant asserts that Respondent uses the <securedaccurint.com> domain name to “phish” for personal information. Further, Complaisant asserts that this use is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. The Panel finds that “phishing” for personal information does not constitute 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). See Allianz of Am. Corp. v. Bond, FA 690796 (Nat. Arb. Forum June 12, 2006) (holding that the respondent’s use of the <allianzcorp.biz> domain name to fraudulently acquire the personal and financial information of Internet users seeking Complainant’s financial services 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)); see also Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (finding that using a domain name to redirect Internet users to a website that imitated the complainant’s credit application website and attempted to fraudulently acquire personal information from the complainant’s clients was not a bona fide offering of goods or services or a legitimate noncommercial or fair use).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant asserts that Respondent is using the confusingly similar disputed domain name in order to intentionally attract Internet users to its website to “phish” for users’ personal information. The Panel presumes that Respondent then profits by using such information for fraudulent purposes. See Wells Fargo & Co. v. Maniac State, FA 608239 (Nat. Arb. Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers); see also H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness). Thus, the Panel finds Respondent’s use of the <securedaccurint.com> domain name is evidence of bad faith registration and use under Policy ¶ 4(b)(iv).
Complainant asserts that Respondent is using the confusingly similar <securedaccurint.com> domain name in order to intentionally attract Internet users to its website to “phish” for users’ personal information. The Panel finds Respondent’s use of the disputed domain name for phishing purposes is evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Wells Fargo & Co. v. Maniac State, FA 608239 (Nat. Arb. Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers); see also Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (finding that the respondent demonstrated bad faith registration and use because it was attempting to acquire the personal and financial information of Internet users through a confusingly similar domain name).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <securedaccurint.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: November 24, 2010
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