Scottrade, Inc. v Domain Admin / Taranga Services Pty Ltd
Claim Number: FA1405001559226
Complainant is Scottrade, Inc. (“Complainant”), represented by Amy L. Pauls of Scottrade, Inc., Missouri, USA. Respondent is Domain Admin / Taranga Services Pty Ltd (“Respondent”), New Zealand.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sscottrade.com>, registered with MONIKER ONLINE SERVICES LLC.
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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 13, 2014; the National Arbitration Forum received payment on May 14, 2014.
On May 19, 2014, MONIKER ONLINE SERVICES LLC confirmed by e-mail to the National Arbitration Forum that the <sscottrade.com> domain name is registered with MONIKER ONLINE SERVICES LLC and that Respondent is the current registrant of the name. MONIKER ONLINE SERVICES LLC has verified that Respondent is bound by the MONIKER ONLINE SERVICES 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 May 21, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 10, 2014 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@sscottrade.com. Also on May 21, 2014, 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 June 17, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon Karl V. Fink (Ret.) 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.
Complainant
a) Complainant has rights in the SCOTTRADE mark, used in connection with financial services via online computer connections. Complainant owns a registration for the SCOTTRADE mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,140,963 registered March 3, 1998).
b) Respondent’s <sscottrade.com> domain name is confusingly similar to Complainant’s SCOTTRADE mark. The disputed domain name adds the letter “s” to the beginning of Complainant’s mark.
c) Respondent does not have any rights or legitimate interests in the <sscottrade.com> domain name.
a. Respondent is not authorized to use Complainant’s SCOTTRADE mark in any way.
b. Respondent uses the <sscottrade.com> domain name in connection with a phishing scam that utilizes malware or spam.
c. Respondent’s conduct constitutes typosquatting.
d) Respondent registered and is using the <sscottrade.com> domain name in bad faith.
a. Respondent is using the disputed domain name to conduct a phishing operation that utilizes malware or spam in order to create financial gains for Respondent.
b. Respondent’s conduct constitutes typosquatting.
Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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(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 contends it has rights in the SCOTTRADE mark, used in connection with financial services via online computer connections. Complainant owns a registration for the SCOTTRADE mark with the USPTO (Reg. No. 2,140,963 registered March 3, 1998). The Panel notes that Respondent resides or operates in a different country than that in which Complainant holds its trademark registration; however, past panels have determined that a complainant need not own a registration in a respondent’s country of operation, and it is sufficient that a complainant own a registration in a different country. See 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). Therefore, the Panel finds that Complainant has rights in the SCOTTRADE mark within the meaning of Policy ¶ 4(a)(i) because Complainant holds a valid registration for the mark with the USPTO. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).
Complainant alleges that Respondent’s <sscottrade.com> domain name is confusingly similar to Complainant’s SCOTTRADE mark. Complainant claims that the disputed domain name adds the letter “s” to the beginning of Complainant’s mark. The Panel notes that that the disputed domain name also adds the generic top-level domain (“gTLD”) “.com.” First, the Panel finds that a disputed domain name that differs from a trademark by a single letter does not negate a finding of confusing similarity. See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”). Second, the Panel finds that the addition of a gTLD is irrelevant for the purposes of confusing similarity. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Therefore, the Panel finds that Respondent’s <sscottrade.com> domain name is confusingly similar to Complainant’s SCOTTRADE mark pursuant to Policy ¶ 4(a)(i).
Complainant has proven this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have 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.”).
Complainant contends Respondent does not have any rights or legitimate interests in the <sscottrade.com> domain name. Complainant alleges that Respondent is not authorized to use Complainant’s SCOTTRADE mark in any way. The Panel notes that the WHOIS record for the disputed domain name lists “Domain Admin redgrape@fastmail.fm” as the domain name registrant. Past panels have looked to the WHOIS record, whether the respondent was authorized to use the trademark, and the evidence on record as whole in determining whether the respondent is commonly known by the disputed domain name. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in [the respondent’s] WHOIS information implies that [the respondent] is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply). Therefore, because Respondent was not authorized by Complainant to use the SCOTTRADE mark, and neither the WHOIS information nor the other evidence on record indicates otherwise, the Panel finds that Respondent is not commonly known by the <sscottrade.com> domain name under Policy ¶ 4(c)(ii).
Complainant asserts that Respondent uses the <sscottrade.com> domain name in connection with a phishing scam that utilizes malware or spam. Previous panels have found that phishing schemes are not deemed a bona fide offering of goods and services or a legitimate noncommercial or fair use. See Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (finding that using a domain name in a fraudulent scheme to deceive Internet users into providing their credit card and personal information is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use) (Response); see also Reed Elsevier Inc. v. Kolobanov, FA 1354985 (Nat. Arb. Forum Nov. 24, 2010) (finding no rights and legitimate interests when the disputed domain name resolved to a website that downloaded a virus on Internet users’ computers to acquire personal information). Therefore, the Panel finds that Respondent is not making a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) because Respondent is using the <sscottrade.com> domain name in connection with a phishing scam that utilizes malware or spam.
Complainant claims Respondent’s conduct constitutes typosquatting. In Liberty Mut. Ins. Co. v. Domain Park Ltd., FA 1189049 (Nat. Arb. Forum June 23, 2008), the panel defined typosquatting as the “registration of a disputed domain name that capitalizes on Internet users’ typographical errors.” The Panel notes that the <sscottrade.com> domain name differs from Complainant’s SCOTTRADE mark by the addition of the letter “s” to the beginning of Complainant’s mark. Past panels have found that typosquatting provides further evidence that a respondent does not have rights and legitimate interests in the disputed domain name. See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, the respondent had “engaged in typosquatting, which provides additional evidence that [the] respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”). The Panel determines that Respondent is typosquatting and finds Respondent lacks rights and legitimate interests in the <sscottrade.com> domain name pursuant to Policy ¶ 4(a)(ii).
Complainant has proven this element.
The Panel may look outside the illustrations of bad faith listed in Policy ¶ 4(b). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”). Those illustrations are not meant to be an exhaustive list. See Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence). Therefore, although Complainant’s contentions fall outside Policy ¶ 4(b), the Panel may still find bad faith under Policy ¶ 4(a)(iii), if the Panel determines that Complainant’s contentions have merit.
Complainant claims that Respondent registered and is using the <sscottrade.com> domain name in bad faith. Complainant asserts that Respondent is using the disputed domain name to conduct a phishing operation that utilizes malware or spam. In previous cases, panels have held that operation of a phishing scheme constitutes bad faith. See Reed Elsevier Inc. v. Kolobanov, FA 1354985 (Nat. Arb. Forum Nov. 24, 2010) (finding bad faith registration and use when the resolving website downloaded a virus on Internet users’ computers to acquire personal information); see also Australia & New Zealand Banking Group Ltd. v. Kim, FA 1366558 (Nat. Arb. Forum Feb. 18, 2011) (finding bad faith registration and use when the respondent’s disputed domain name resolved to a website that promoted a phishing scheme). Therefore, the Panel finds that Respondent registered and is using the <sscottrade.com> domain name in bad faith under Policy ¶ 4(a)(iii) because Respondent is using the disputed domain name in connection with a phishing scheme.
Complainant argues that Respondent’s conduct constitutes typosquatting. In Liberty Mut. Ins. Co. v. Domain Park Ltd., FA 1189049 (Nat. Arb. Forum June 23, 2008), the panel defined typosquatting as the “registration of a disputed domain name that capitalizes on Internet users’ typographical errors.” The Panel notes that the <sscottrade.com> domain name differs from Complainant’s SCOTTRADE mark by the addition of the letter “s” to the beginning of Complainant’s mark. Past panels have found that typsquatting is evidence of bad faith under Policy ¶ 4(a)(iii). See Vanguard Group, Inc. v. IQ Mgmt. Corp., FA 328127 (Nat. Arb. Forum Oct. 28, 2004) (“By engaging in typosquatting, [r]espondent has registered and used the <vangard.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).”). Therefore, the Panel finds that Respondent is typosquatting, and finds that Respondent registered and is using the <sscottrade.com> domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant has proven this element.
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 <sscottrade.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
Dated: June 19, 2014
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