Koch Industries, Inc. v. UCY KAY
Claim Number: FA1410001585797
Complainant is Koch Industries, Inc. (“Complainant”), represented by Darin L. Brown of Holland & Hart LLP, Colorado. Respondent is UCY KAY (“Respond-ent”), Nigeria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kochcareers.net>, registered with ENOM, INC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on October 20, 2014; the National Arbitration Forum received payment on October 20, 2014.
On October 21, 2014, ENOM, INC. confirmed by e-mail message addressed to the National Arbitration Forum that the <kochcareers.net> domain name is reg-istered with ENOM, INC. and that Respondent is the current registrant of the name. ENOM, INC. has verified that Respondent is bound by the ENOM, INC. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accord-ance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 22, 2014, the Forum served the Complaint and all Annexes, includ-ing a Written Notice of the Complaint, setting a deadline of November 12, 2014 by which Respondent could file a Response to the Complaint, via e-mail to all en-tities and persons listed on Respondent’s registration as technical, administrat-ive, and billing contacts, and to postmaster@kochcareers.net. Also on October 22, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respond-ent via post and fax, to all entities and persons listed on Respondent’s registra-tion 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 19, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant has used the KOCH mark since 1925 in connection with the mark-eting of engineering services.
Complainant is the parent company of numerous subsidiaries and affiliates doing business under the KOCH mark in the manufacturing, trading and investment industries.
Complainant has spent considerable resources to promote its goods and servic-es under the KOCH mark, including through television, radio, print and Internet advertising campaigns.
Complainant maintains an active Internet presence and owns a portfolio of do-main name registrations consisting of or incorporating the KOCH mark, including <kochcareers.com>.
Complainant also promotes its KOCH brand through social media outlets.
As a result of the widespread and continuous use of the KOCH mark, KOCH is recognized and relied upon by consumers as identifying the goods and services of Complainant and distinguishing them from the goods and services of others.
Respondent registered the <kochcareers.net> domain name on or about January 18, 2014.
The domain name is confusingly similar to Complainant’s KOCH mark.
Respondent has not been commonly known by the domain name.
Complainant has not given Respondent permission to use the KOCH mark.
Respondent uses the <kochcareers.net> domain name as part of a phishing scheme, the purpose of which is to misappropriate the personal information of Internet users by impersonating employees of Complainant.
Respondent has no rights to or legitimate interests in the domain name.
The domain name is an instance of typo-squatting.
Respondent’s use of the domain name disrupts Complainant’s business.
Respondent knew of Complainant and its rights in the KOCH mark when it registered the domain name.
Respondent both registered and uses the domain name in bad faith.
B. Respondent
Respondent did not submit a response.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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 that Complainant must prove each of the following three elements to obtain an order that a domain name should be can-celled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has rights in the KOCH mark for purposes of Policy ¶ 4(a)(i) by reason of its acquisition of common law rights in the mark as described in the Complaint. See, for example, Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a UDRP complainant can establish common law rights in its mark).
A UDRP complainant will show common law rights in a mark by its acquisition of secondary meaning, which is usually accomplished by reference to evidence of advertising, sales and media recognition. See Surecom Corp. NV v. Rossi, FA 1352722 (Nat. Arb. Forum Nov. 29, 2010), the panel there finding that a UDRP complainant had shown secondary meaning in a mark, and, thereby, common law rights in it for purposes of Policy ¶ 4(a)(i), as a consequence of its continuous use in commerce over a period of years. See also Cybertania, Inc. v. Right Mobile, Inc. Do-main Manager, FA 1015411 (Nat. Arb. Forum Aug. 6, 2007) in which a panel found that a UDRP complainant had acquired secondary meaning sufficient to establish common law rights in a mark under Policy ¶ 4(a)(i) where that complainant had invested substantial resources in promoting the goods and services marketed under the mark over an extended period.
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that the <kochcareers.net> domain name is confusingly similar to the KOCH mark. The domain name contains the mark in its entirety, merely adding the term “careers,” which relates to an aspect of complainant’s business, plus the generic Top Level Domain (“gTLD”) “.net.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the add-ition of the generic term “collection” to a UDRP Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark under Policy ¶ 4(a)(i)).
See also Daedong-USA, Inc. v. O’Bryan Implement Sales, FA 210302 (Nat. Arb. Forum Dec. 29, 2003):
Respondent's domain name, …, is identical to Complainant's … mark because adding a top-level domain name is irrelevant for purposes of Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that re-spondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent 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 has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to deter-mine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant asserts, and Respondent does not deny,
that Respondent has not been commonly known by the <kochcareers.net> domain name, and that Complainant has not given Respondent permission to use its KOCH mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Ucy Kay,” which does not resemble the domain name. On this record, we conclude that Respondent has not been com-monly known by the domain name so as to have acquired rights to or legitimate interests in it within the meaning of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (finding that a respondent was not commonly known by the <coppertown.com> domain name, and so failed to show that it had rights to or legitimate interests in it as provided in Policy ¶ 4(c)(ii), where there was no evidence in the record, including the relevant WHOIS information, suggesting that that respondent was commonly known by the domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent uses the <kochcareers.net> domain name to further a phishing scheme by which it seeks to acquire the personal information of Internet users by impersonating employees of Complainant. This use of the domain name is neither a bona fide offering of goods and services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Nat. Arb. Forum Apr. 30, 2010):
The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s use of the contested domain name to further a phishing scheme by which it seeks to acquire, and presumably to exploit, the personal information of Internet users by impersonat-ing employees of Complainant demonstrates its bad faith in the registration and use of the domain name. See Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (finding that a UDRP respondent demonstrated bad faith in the registration and use of a domain name where it attempted to employ it to acquire the personal financial information of Internet users); see also HOPE worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004) (finding that a respondent registered and used a domain name in bad faith where it redirected Internet users to a website fraudulently to acquire their personal information).
We are also convinced by the evidence that Respondent knew of Complainant and its rights in the KOCH mark when it registered the <kochcareers.net> domain name. This too illustrates Respondent’s bad faith in registering the domain name. See, for example, Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. Forum Feb. 6, 2014):
The Panel … finds actual knowledge through the name used for the domain and the use made of it.
For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <kochcareers.net> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: November 21, 2014
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