EnginePoint Marketing, LLC v. TOM SOLDO
Claim Number: FA1208001457681
Complainant is EnginePoint Marketing, LLC (“Complainant”), represented by Bret S. Moore of Bret S. Moore, Attorney at Law, LLC, Georgia, USA. Respondent is TOM SOLDO (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <enginepoint.net>, registered with DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 10, 2012; the National Arbitration Forum received payment on August 10, 2012.
On August 13, 2012, DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM confirmed by e-mail to the National Arbitration Forum that the <enginepoint.net> domain name is registered with DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM and that Respondent is the current registrant of the name. DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM has verified that Respondent is bound by the DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM 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 August 14, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 4, 2012 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@enginepoint.net. Also on August 14, 2012, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 11, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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
Statement of Facts
Complainant provides consulting and marketing services in the field of internet marketing and search engine optimization, as well as related services, and is based in Columbus, Ohio. Complainant’s managing partner, Mr. Mark Scholl, is active in the local business community, and is a member of the board of directors for the Central Ohio Better Business Bureau. Mr. Scholl takes great pride in operating his company in an ethical manner. Complainant’s business services are primarily advertised and conducted through its online web site presence at enginepoint.com, which was originally registered on July 23, 2004.
On June 13, 2012, several years after Complainant began operations at its enginepoint.com domain name, the unknown Respondent registered enginepoint.net. Concurrently, Complainant began to be inundated with telephone calls from individuals across the United States, relating to a “mystery shopper” scam that Respondent was apparently conducting, using enginepoint.net as a means to project legitimacy to the illegal scheme. The Declaration of Mark A. Scholl, managing partner of EnginePoint Marketing, provides additional relevant detail of the substance of these calls and the scam perpetrated by the registrant of enginepoint.net. By way of explanation, Complainant is cognizant of the fact that copies of the letters and checks used in the scam would be helpful evidence of the scam activity. However, counsel for Complainant attempted to contact all of the telephone numbers identified by Complainant, to see if copies of the letters or checks used in the scam were available, but the individuals counsel spoke with all stated they either (1) no longer had the letters, (2) had been instructed by law enforcement to shred the letters and checks, or (3) the bank they’d attempted to negotiate the checks at had shredded them there.
A. Enginepoint.net is confusingly similar to, and fully incorporates, Complainant’s registered ENGINEPOINT MARKETING trademark.
Absent some rights or legitimate interests, or a good faith basis for its action, a Respondent may not register a domain name that is confusingly similar to a trademark owned by a Complainant.[1] Numerous decisions under the UDRP have held that registration with a national governmental body, such as USPTO, conclusively establishes a right in the mark at issue.[2] Moreover, where a domain name fully incorporates a Complainant’s mark in its entirety, many decisions under the UDRP have likewise held that incorporation to create confusing similarity by definition.[3] Of course, confusion is also likely to naturally arise where a domain name incorporates a Complainant’s mark as its dominant element,[4] and generic top-level domain descriptors (gTLDs) such as .com or .net are irrelevant for the purposes of analysis under this prong of the UDRP.[5]
Leaving aside the fact that there is a strong likelihood of confusion as a matter of law, there has been documented, actual confusion among members of the public in this case. Because the variation of the gTLD suffix is insufficient to distinguish the Respondent’s web site from Complainant’s mark or abate consumer confusion, the disputed domain name is, by definition, confusingly similar to Complainant’s registered trademark ENGINEPOINT MARKETING.
B. Respondent has no rights or legitimate interests in enginepoint.net.
A Respondent may not retain a domain name in which it has no rights or legitimate interests.[6] A non-exhaustive list of the ways in which a Respondent may show such rights or legitimate interests is contained in the UDRP Policy, at Paragraph 4(c):
(i) before any notice to you of the dispute, your 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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.
So far as Complainant is aware, Respondent has never made any legitimate noncommercial or fair use of the domain name. Respondent used the domain name solely to provide an air of legitimacy for its illegal “mystery shopper” scam. A search for “Paradysz M. EnginePoint” reveals several scam-related informational web sites and an apparently fake LinkedIn profile.[7] Currently there is no web page displayed at enginepoint.net, likely because the registrar was alerted to complaints about Respondent and had been requested to remove the offending page. And even if Respondent were somehow covertly preparing to use the domain name to make an offering of goods or services, such offering could not possibly be in good faith, because Respondent is placed on notice of Complainant’s registered trademark rights in its ENGINEPOINT MARKETING mark.[8] Respondent’s use is purely commercial, as well as entirely unethical and illegal, and such use is not the sort of rights or legitimate interests contemplated by the UDRP.[9]
C. Respondent registered and used enginepoint.net in bad faith.
Finally, a Respondent may not retain a domain name which it has registered and used in bad faith.[10] Decisions under the UDRP have held that the intentional registration of a domain name, known by the Respondent to be confusingly similar to a registered mark, is sufficient for a finding of bad faith registration.[11] Bad faith may also be demonstrated by a Respondent’s deliberate choice of a domain name that contains a Complainant’s mark in its entirety.[12] Tarnishing a registered mark by associating the mark with illegal activity or activity of a dubious nature, even if legal (i.e., pornographic material), has also been widely held by Panels considering the issues in the UDRP context to be persuasive evidence that a Respondent has acted in bad faith.[13]
Although the domain name at issue here does not currently resolve to any web site, in the immediate past it was directly used as part of a “mystery shopper” scam which targeted unsuspecting consumers across the U.S. and caused significant harm to Complainant’s business reputation. Such activity is analogous to the decisions under the UDRP involving disputed domain names linking legitimate trademarks to pornographic or other unrelated material; certainly the potential tarnish a mark owner’s business reputation is present in both cases, even though pornography is presumptively legal in the U.S. In any case, Complainant has been forced by Respondent’s illegal and bad faith registration and use of the enginepoint.net domain name to expend significant resources and time in dealing with that use, and the harm to Complainant’s reputation that it has caused.
Conclusion
Respondent registered enginepoint.net with the actual or constructive knowledge of Complainant’s federally registered rights in its ENGINEPOINT MARKETING trademark, and used the domain name to provide an air of legitimacy to its illegal “mystery shopper” fraudulent scheme. Respondent’s actions are the very definition of bad faith, and its actions have caused Complainant significant harm. The disputed domain name should be immediately transferred to Complainant to prevent any further illegal use by Respondent.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 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 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(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.”).
Complainant registered the ENGINEPOINT MARKETING mark with the United States Patent & Trademark Office (“USPTO”) (Reg. No. 3,760,748 registered March 16, 2010). Complainant submitted a printout from the USPTO website to substantiate its claim. This Panel finds this sufficient evidence to prove Complainant’s rights in the ENGINEPOINT MARKETING mark for the purposes of Policy ¶4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶4(a)(i).”).
Complainant claims Respondent’s <enginepoint.net> domain name is confusingly similar to Complainant’s ENGINEPOINT MARKETING mark. The disputed domain name includes the “ENGINEPOINT” portion of the mark, removing the term “MARKETING” while adding the generic top-level domain (“gTLD”) “.net.” Respondent has failed to sufficiently differentiate the disputed domain name from Complainant’s ENGINEPOINT MARKETING mark, leading the Panel to conclude the two are confusingly similar under Policy ¶4(a)(i) (especially considering the line of business Respondent claims to be in). See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (holding that “the Domain Name is confusingly similar to Complainant’s ‘TESCO PERSONAL FINANCE’ mark in that it merely omits the descriptive term ‘personal.’”). In this case, there is actual confusion between the disputed domain name and Complainant’s mark.
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Although Complainant failed to make any arguments related to Policy ¶4(c)(ii), this Panel choses to conduct a sua sponte analysis of the issue. Respondent did not offer any evidence to support a finding it is commonly known by the disputed domain name. The WHOIS information identifies the registrant of the disputed domain name as “Tom Soldo,” which is not similar to the disputed domain name. The Panel concludes Respondent is not commonly known by the disputed domain name under Policy ¶4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant claims Respondent is not making a legitimate or noncommercial fair use of the disputed domain name. The disputed domain name resolved to an illegal “mystery shopper” scam website (and is used to send emails regarding that scam). Complainant’s managing partner states in Complainant’s supporting Declaration that many individuals were being defrauded into believing Complainant (a legitimate marketing company) is offering a mystery shopper program. The mystery shoppers receive bogus checks from Respondent, are told to go purchase certain items and then review the items purchased at the website offered at <enginepoint.net>. The mystery shoppers return some portion of the funds to Respondent, who disappears before the bogus checks are dishonored (forcing the mystery shoppers to reimburse their banks). The mystery shoppers cannot recover the money sent to Respondent. Based upon this evidence and the lack of a response from Respondent, it appears clear the disputed domain is being used for illegal purposes. Using a domain name for illegal purposes means Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶4(c)(i) and Policy ¶4(c)(iii), respectively.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant contends Respondent confused individuals into believing Respondent was associated with Complainant and then commercially benefiting from that confusion. Respondent caused the disputed domain name to resolve to a website offering an illegal “mystery shopper” scam to defraud Internet users. The disputed domain name was also used to send a large quantity of emails. Respondent profited from the mystery shopper scheme by giving these individuals bogus checks to purchase items and return a portion of the proceeds to Respondent. Respondent absconded with the funds, leaving the mystery shoppers to reimburse their banks. This Panel finds Respondent is attempting to gain commercially by confusing individuals into believing Respondent is affiliated with Complainant (not a big assumption since Complainant is a bona fide marketing company). This means Respondent registered and used the disputed domain name in bad faith under Policy ¶4(b)(iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <enginepoint.net> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, September 17, 2012
[1] UDRP ¶4(a)(i).
[2] See, e.g., Enter. Rent-A-Car Co. v. Language Direct, FA 306586 (Nat. Arb. Forum Oct. 25, 2004) (finding complainant successfully established rights in USPTO registered ENTERPRISE RENT-A-CAR mark); Mattel, Inc. v. KPF, Inc., FA 244073 (Nat. Arb. Forum Apr. 26, 2004) (finding registration of BARBIE mark with USPTO established complainant’s rights); LF, LLC v. Sugarman Studios, FA 610161 (Nat. Arb. Forum Jan. 23, 2006) (finding complainant established rights in LOWE’S mark); Vivendi Universal Games v. XBNetVentures, Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (finding complainant established rights in BLIZZARD mark); Uniroyal Engineered Products, Inc. v. Nauga Network Services, D2000-0503 (WIPO July 18, 2000) (registration on Principal Register at USPTO establishes presumption of validity in U.S. law); F. Hoffmann-La Roche AG v. Relish Enterprises, D2007-1629 (WIPO Dec. 17, 2007) (citing WIPO Panel Views on Selected UDRP Questions (original version) § 1.1: “If the complainant owns a registered trademark then it satisfies the threshold requirement of having trademark rights....”).
[3] See, e.g., Magnum Piering v. The Mudjackers, D2000-1525 (WIPO Jan. 29, 2001) (“[W]hen a domain name wholly incorporates a complainant’s registered mark, that is sufficient to establish identity or confusing similarity for purposes of the [UDRP].”); Toastmasters Int’l v. Bealo Group S.A., FA 167968 (Nat. Arb. Forum Aug. 25, 2003) (citing Magnum, fining that toastmastersd57.org was confusingly similar to TOASTMASTERS trademark); Diners Club Int’l Ltd. v. SPS, FA 149414 (Nat. Arb. Forum Apr. 21, 2003) (finding aboutdinersclub.com to be confusingly similar to DINER’S CLUB).
[4] See, e.g., Citigroup Inc. v. Acme Mail, FA 241987 (Nat. Arb. Forum Apr. 12, 2004) (finding CITI mark was dominant element of disputed citiban.com domain name), Europcar Int’l SA v. New Media Research in Romania SRL, FA 123906 (Nat. Arb. Forum Nov. 4, 2002) (finding europcar.ro fully incorporated complainant’s EUROPCAR mark in its entirety).
[5] See, e.g., Microsoft Corp. v. Mehrotra, D2000-0053 (WIPO Apr. 10, 2003) (finding that microsoft.org is identical to complainant’s mark). See also Citigroup Inc. and Primerica Financial Servces, Inc. v. Marc Gahary and gahary.com, FA 1298515 (Nat. Arb. Forum Feb. 3, 2010) (citing Europcar, FA 123906).
[6] UDRP Policy ¶4(a)(ii).
[7] See http://www.linkedin.com/pub/woodie-taylor/53/a60/934 (last visited August 7, 2012).
[8] See, e.g., Am. Int’l Group, Inc. v. Speyer, FA 422815 (Nat. Arb. Forum Apr. 7, 2005) (“Registration of a domain name with actual or constructive knowledge of its use as a mark suggests no rights or legitimate interests [in the domain name] and can serve as evidence of bad faith.”); Amazon.com, Inc. v. Rayaneh Net, FA 196217 (Nat. Arb. Forum Oct. 28, 2003) (finding no rights or legitimate interests in the amazoniran.com domain name in part because complainant did not grant respondent a license to use AMAZON.COM mark); Nokia Corp. v. Nokiagirls.com, D2000-0102 (WIPO Apr. 18, 2000) (finding absence of license permitting respondent to use complainant’s trademark in domain name evidence of respondent’s illegitimate interests). See also Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (listing the minimum factors required for a respondent to successfully show “bona fide” offering of goods or services in a reseller context).
[9] See, e.g., Christian Dior Couture v. Paul Farley, D2008-0008 (WIPO Feb. 8, 2008) (finding annadior.com domain linked to pornographic activities targeted famous DIOR mark, was commercial in nature, and not a fair or legitimate use of the mark).
[10] UDRP Policy ¶4(a)(iii).
[11] See, e.g., Travelzoo Inc. v. Viper a/k/a Slavik Viner, FA 117866 (Nat. Arb. Forum Sept. 18, 2002) (“It is proper to infer bad faith registration when a [r]espondent intentionally registers a domain name he knows to be confusingly similar to another’s mark.”); Bank of America Corp. v. BanofAmerica, FA 105885 (Nat. Arb. Forum Apr. 12, 2002) (finding bad faith where, among other things, respondent was aware of complainant’s famous mark before registering the disputed domain name).
[12] See, e.g., The Neiman Marcus Group, Inc. v. Huh Jinwang, FA 109047 (Nat. Arb. Forum May 17, 2002) (finding neimanmarcus.net was registered in bad faith because it contained the entire trademarked name); Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding bad faith in part because “the Domain Name contains in its entirety, and is for all essential purposes only, [c]omplainant’s trademark.”).
[13] See, e.g., V&V Supremo Foods, Inc. v. pxlchk1@gmail.com, D2006-1373 (WIPO Jan. 22, 2007) (finding use of a domain name to divert consumers to a pornographic web site is evidence of bad faith, citing Six Continents Hotels, Inc. v. Seweryn Nowak, D2003-0022 (WIPO Mar. 4, 2003) and America Online, Inc. v. Viper, D2000-1198 (WIPO Nov. 28, 2000)). See also Christian Dior Couture, D2008-0008, citing The Perfect Potion v. Domain Administrator, D2004-0743 (WIPO Nov. 6, 2004), among several other cases.
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