Scottrade, Inc. v. Private Registration / WhoisGuardService.com
Claim Number: FA1405001559238
Complainant is Scottrade, Inc. (“Complainant”), represented by Amy L. Pauls of Scottrade, Inc., Missouri, USA. Respondent is Private Registration / WhoisGuardService.com (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <scottrad.com>, registered with Nanjing Imperiosus Technology Co. Ltd.
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 May 13, 2014; the National Arbitration Forum received payment on May 14, 2014. The Complaint was received in both Chinese and English.
On May 19, 2014, the Complaint was withdrawn and dismissed without prejudice. On June 12, 2014, this proceeding resumed with Complainant’s filing of a compliant Chinese language Complaint.
On June 12, 2014, Nanjing Imperiosus Technology Co. Ltd. confirmed by e-mail to the National Arbitration Forum that the <scottrad.com> domain name is registered with Nanjing Imperiosus Technology Co. Ltd. and that Respondent is the current registrant of the name. Nanjing Imperiosus Technology Co. Ltd. has verified that Respondent is bound by the Nanjing Imperiosus Technology Co. Ltd. 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 June 13, 2014, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of July 3, 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@scottrad.com. Also on June 13, 2014, the Chinese language 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 July 9, 2014, 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’s request to withdraw its Complaint without prejudice was granted by the National Arbitration Forum on May 19, 2014. Complainant refiled the Complaint in accordance with Rule 12(a), so this matter is ripe for adjudication.
Pursuant to Rule 11(a), the Panel determines the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant holds a registration with the United States Patent and Trademark Office ("USPTO") for the SCOTTRADE trademark (Reg. No. 2140963 issued March 3, 1998) in connection with its financial services, namely, securities brokerage services via direct, on-line computer connections and via multi-user global computer information networks.
Respondent has no license from or agreement with Complainant authorizing Respondent to use the SCOTTRADE mark.
Respondent registered the scottrad.com domain name on October 10, 2002.
Respondent uses the disputed domain name to redirect traffic to websites hosting malware or serving SPAM.
Respondent's scottrad.com domain name is confusingly similar to Complainant's SCOTTRADE mark.
Respondent does not have any rights to or legitimate interests in the scottrad.com domain name.
Respondent registered and uses the scottrad.com domain name in bad faith.
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds:
[a.] By registering its SCOTTRADE mark with the USPTO, Complainant has established rights in the mark pursuant to Policy 4(a)(i).
See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that a complainant established rights in the PAISLEY PARK mark under Policy 4(a)(i) through registration of the mark with the USPTO).
The scottrad.com domain name is a misspelling of Complainant's SCOTTRADE mark. The name removes the letter “e”. Such minor changes result in confusing similarity between Complainant's distinctive mark and Respondent's domain names pursuant to Policy4(a)(i). See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004):
[b.] Complainant asserts that Respondent has no license or agreement with Complainant authorizing Respondent to use the SCOTTRADE mark.
Respondent uses the disputed domain name to redirect traffic to websites hosting malware or serving SPAM. This use is not a use in connection with a bona fide offering of goods or services pursuant to Policy 4(c)(i), or a noncommercial or fair use of the disputed domain names pursuant to Policy 4(c)(iii). See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that a respondent's diversionary use of a complainant's marks to send Internet users to a website which displayed links to a complainant's competitors, was not a bona fide offering of goods or services); see also Glaxo Group Ltd v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that a respondent was not using a domain name within the parameters of Policy 4(c)(i) or (iii) where that respondent used the domain name to take advantage of a complainant's mark by diverting Internet users to a competing commercial site).
Additionally, the respondent is using a form of typo-squatting, which occurs where a respondent purposefully includes typographical errors in a domain name in order to divert Internet users who commit those errors. The scottrad.com domain name plainly takes advantage of the typo-squatting technique to redirect Internet users who inadvertently mistype Complainant's SCOTTRADE mark. Respondent's typo-squatting behavior is further evidence that it does not have rights to or legitimate interests in the disputed domain names pursuant to Policy 4(a)(ii). See LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of a complainant's LTD COMMODITIES mark and this '"typosquatting' is evidence that Respondent lacks rights or legitimate interests in the disputed domain names"); see also IndyMac Bank FSB. v: Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that a respondent lacked rights and legitimate interests in disputed domain names because it "engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter 'x' instead of the letter 'c"').
[c.] Respondent uses the disputed domain name to redirect traffic to websites hosting malware or serving SPAM.
Respondent is using the scottrad.com domain name in connection with a phishing scam that leads consumers away from Complainant’s website to Respondent’s website for Respondent’s financial gain. See Juno Online Servs., Inc. v. Iza, FA 245960 (Nat. Arb. Forum May 3, 2004) (concluding that using a domain name that “is confusingly similar to Complainant’s mark, redirects Internet users to a website that imitates Complainant’s billing website, and is used to fraudulently acquire personal information from Complainant’s clients” is evidence of bad faith registration and use); see also Anne of Green Gable Licensing Auth., Inc. v. Internetworks, AF-0109 (eResolution June 12, 2000) (finding that the respondent violated Policy 4(b)(iv) because the respondent admittedly used the complainant’s well-known mark to attract users to the respondent's website).
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 must prove 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 claims rights in the SCOTTRADE mark through its registration with the United States Patent & Trademark Office (“USPTO”) (Reg. No. 2,140,963 registered March 3, 1998). Complainant uses the SCOTTRADE mark in connection with its financial services, namely, securities brokerage services via direct, on-line computer connections and multi-user global computer information networks. Respondent resides in China according to the WHOIS record. A complainant’s registration with a national trademark agency is normally sufficient to establish the complainant’s rights in the registered trademark, regardless of whether the respondent resides in the registration agency’s jurisdiction. In W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010), the panel wrote that, “[the Respondent’s] USPTO registration is sufficient to establish these [Policy ¶4(a)(i)] rights even when Respondent lives or operates in a different country.”). The question is not whether Complainant has better rights than Respondent, but merely that Complainant has some rights. Complainant’s USPTO registrations sufficiently establish Complainant’s rights in the SCOTTRADE mark pursuant to Policy ¶4(a)(i).
Complainant claims Respondent’s <scottrad.com> domain name is confusingly similar to Complainant’s SCOTTRADE mark. Respondent’s <scottrad.com> domain name is a misspelling of Complainant’s SCOTTRADE mark because Respondent removes the letter “e.” Respondent adds the generic top-level domain (“gTLD”) “.com.” Adding a TLD (whether a gTLD or a ccTLD) is not sufficient to distinguish a disputed domain name from a mark under Policy ¶4(a)(i) because domain name syntax require TLDs, Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007). If there is a slight misspelling between a disputed domain name and a mark, there may be confusion. In this case, the confusion seems evident. In Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000), where the panel found that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive. Respondent’s spelling of Complainant’s SCOTTRADE mark without the letter “e” and adding the gTLD “.com” does not prevent a finding of confusing similarity. The Panel finds Respondent’s <scottrad.com> domain name is confusingly similar to Complainant’s SCOTTRADE mark under Policy ¶4(a)(i).
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.”).
Complainant claims Respondent has no rights or legitimate interests in the <scottrad.com> domain name. Respondent has no license or agreement with Complainant authorizing Respondent to use the SCOTTRADE mark. The WHOIS information for Respondent’s disputed domain name lists “Private Registration” as the Registrant. Respondent failed to submit a response in the proceeding, and therefore, does not contest Complainant’s contentions. It seems evident Respondent is not commonly known by the disputed domain name pursuant to Policy ¶4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶4(c)(ii) based on the WHOIS information and other evidence in the record). Pretending “Private Registration” has any reference to any particular person (whether natural or juridical) would be silly.
Complainant claims Respondent uses the disputed domain name to redirect Internet traffic to websites hosting malware or serving SPAM. In Dell Inc. v. Versata Software, Inc., FA 1246916, (Nat. Arb. Forum Apr. 10, 2009) the panel found the respondent was using the disputed domain name to resolve to a website that attempted to download malware onto Internet users’ computers was not 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). This Panel would agree and so finds.
Complainant argues Respondent’s use of the <scottrad.com> domain name indicates typosquatting behavior. Once again, this Panel declines to find Respondent has no rights on this basis because the UDRP does not list “typosquatting” as such under Policy ¶4(a)(ii).
Respondent registered the domain name using a privacy service. This means Respondent is not publicly associating itself with the disputed domain name. Therefore, Respondent cannot normally get any rights to the disputed domain name by its use as a domain name, as long as the registration is held this way.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent registered and is using the <scottrad.com> domain name in bad faith. Respondent uses the disputed domain name in connection with a phishing scam that leads consumers away from Complainant’s website to Respondent’s website for Respondent’s financial gain. While Complainant has not provided a screen shot of the website resolving from Respondent’s <scottrad.com> domain name, Respondent has not claimed otherwise. Phishing schemes aimed at misleading Internet users and taking advantage of Complainant’s well known mark to achieve (i) a wrongful competitive advantage and (ii) commercial gain indicates bad faith use and registration 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).”). Respondent’s use of the disputed domain name to resolve to a website allegedly displaying content aimed at confusing Internet users for Respondent’s commercial gain (including downloading malware), indicates bad faith use and registration under Policy ¶4(b)(iv).
Phishing schemes generally indicate bad faith use and registration under Policy ¶4(a)(iii). In Juno Online Servs., Inc. v. Iza, FA 245960 (Nat. Arb. Forum May 3, 2004) the panel concluded that using a domain name that “is confusingly similar to Complainant’s mark, redirects Internet users to a website that imitates Complainant’s billing website, and is used to fraudulently acquire personal information from Complainant’s clients” is evidence of bad faith registration and use. This Panel agrees and finds Respondent’s phishing scheme establishes bad faith use and registration under Policy ¶4(a)(iii).
Finally, Respondent registered the disputed domain name using a privacy service. This Panel has repeatedly held this raises a rebuttable presumption of bad faith registration and use under the UDRP in a commercial context. Respondent has done nothing to rebut that presumption.
ICANN requires registrars to remind domain name purchasers they are obligated to provide accurate WHOIS information. Every purchaser of a domain name agrees in UDRP Policy ¶2 “[b]y applying to register a domain name,…, you hereby represent and warrant to us that (a) the statements that you made in your Registration Agreement are complete and accurate…”. This obviously includes the WHOIS information (which is the primary part of any purchase, other than the picking the domain name and paying for it). Arguments respondents use a privacy service to reduce the amount of SPAM they receive is unconvincing because respondents can still be reached through the email address the privacy service displays. In the commercial context, honest merchants disclose their identity. Dishonest merchants do not disclose their identity. There may be a valid reason to conceal an identity in a personal or public policy context. If Respondent had a valid reason to conceal its identity, it could have argued its case. Respondent did not. Therefore, the presumption stands. This unrebutted presumption alone is sufficient to prove bad faith registration and use under Policy ¶4(b).
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 <scottrad.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Friday, July 18, 2014
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