Klabzuba Oil & Gas, Inc. v. ross micheal
Claim Number: FA1505001619813
Complainant is Klabzuba Oil & Gas, Inc. (“Complainant”), represented by Mike A. McArthur of Haynes and Boone, LLP, Texas, USA. Respondent is ross micheal (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <klabzubaoilgas.com>, registered with PDR 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 Forum electronically on May 15, 2015; the Forum received payment on May 15, 2015.
On May 20, 2015, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <klabzubaoilgas.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR 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 May 27, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 16, 2015 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@klabzubaoilgas.com. Also on May 27, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On June 18, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Policy ¶4(a)(i)
a. Complainant has common law rights in the KLABZUBA mark dating back to its first use in commerce in 1992.
b. Respondent’s <klabzubaoilgas.com> domain name is confusingly similar to Complainant’s KLABZUBA mark because it contains the mark in its entirety and is differentiated by only the addition of the words “oil” and “gas” and the generic top-level domain (“gTLD”) “.com.”
2. Policy ¶4(a)(ii)
a. Respondent is not commonly known by the disputed domain name as the WHOIS information lists “ross micheal” as Registrant. Respondent has not submitted any further evidence to indicate being commonly known by the disputed domain name. Moreover, Respondent is not authorized to use Complainant’s KLABZUBA mark.
b. Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because it uses the domain name to host e-mail addresses to engage in phishing.
c. Respondent lacks rights or legitimate interests in the domain name because it has never used the domain name to resolve to an active website.
3. Policy ¶4(a)(iii)
a. Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the KLABZUBA mark.
b. Respondent uses the domain name for the sole purpose of engaging in phishing.
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 transferring or cancelling 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 does not claim to own a trademark registered with a governmental authority. However, Policy ¶4(a)(i) does not require such registration if a complainant can demonstrate having common law rights. See 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 complainant can establish common law rights in its mark).
Complainant claims rights in the KLABZUBA mark dating back to its first use in commerce in 1997. In order to have common law rights, a complainant must show that the mark has secondary meaning. Relevant evidence of secondary meaning includes (but is not limited to) length of use of the mark, advertising, media recognition, or holding the registration of an identical domain name. See Gourmet Depot v. DI S.A., FA 1378760 (Nat. Arb. Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”); see also Congregation Shuvah Yisrael, Inc. v. Neckonoff, FA 1043126 (Nat. Arb. Forum Sept. 7, 2007) (finding that a complainant’s mark had established secondary meaning where the complainant had previously held the registration for a domain name identical to the mark). Complainant has provided evidence of secondary meaning by providing evidence of length of use in the mark; evidence of holding an identical domain name; media recognition; and promotional material/advertising (including letterhead and business cards). Complainant has used its mark in the oil and gas industry since 1997. Complainant has used its mark in the real estate industry since 2004. Complainant’s evidence is sufficient to establish secondary meaning, which means Complainant has common law rights in the KLABZUBA mark pursuant to Policy ¶4(a)(i).
Complainant claims Respondent’s <klabzubaoilgas.com> domain name is confusingly similar to Complainant’s KLABZUBA mark because it contains the mark in its entirety and is differentiated by only the addition of the descriptive words “oil” and “gas” and the gTLD “.com.” The gTLD “.com” is irrelevant to a Policy ¶4(a)(i) analysis. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). The terms “oil” and “gas” are descriptive of one of Complainant’s business (in fact the phrase “Oil & Gas, Inc.” appears underneath the phrase “Klabzuba” on Complainant’s letterhead and business cards…it is essentially part of Complainant’s logo). Adding descriptive terms to a mark does not adequately differentiate the domain name from the mark. See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶4(a)(i) because the appended term related directly to the complainant’s business). Therefore, Respondent’s <klabzubaoilgas.com> domain name is confusingly similar to Complainant’s KLABZUBA mark pursuant to 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.”).
Respondent is not commonly known as the disputed domain name. The WHOIS information lists “ross micheal” as Registrant. Respondent has failed to provide further evidence to indicate being commonly known by the domain name. There is no obvious relationship between Respondent’s name and the disputed domain name. Respondent is not authorized to use Complainant’s mark. Past panels have found such a lack of evidence sufficient to show that a respondent is not commonly known by a domain name under Policy ¶4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). This Panel agrees. Respondent is not commonly known by the <klabzubaoilgas.com> domain name under Policy ¶4(c)(ii).
Complainant claims Respondent lacks rights and legitimate interests in the disputed domain name because it uses the domain name for phishing through a phony employment scheme. It hosts e-mail addresses Respondent uses to trick Internet users into giving away personal or financial information by impersonating Complainant. Complainant became aware of Respondent and the disputed domain name after being contacted by some of these third parties. Phishing demonstrates a lack of bona fide offering of goods or services or legitimate and noncommercial fair use pursuant to Policy ¶4(c)(i) and 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)). Respondent does not use the <klabzubaoilgas.com> domain to provide a bona fide offering of goods or services or legitimate and noncommercial fair use pursuant to Policy ¶4(c)(i) and Policy ¶4(c)(iii) because Respondents uses the domain names to conduct phishing expeditions.
Complainant claims Respondent lacks rights or legitimate interests in the domain name because Respondent has never used the resolving website at the domain name. Complainant has provided documentation of the resolving website, which merely states “this web page is not available.” This Panel disagrees. It is not necessary to have a web site to use a domain name. While Respondent isn’t using this domain name by hosting a web site, it still acts as an email portal. This would normally constitute a satisfactory use, but for the fact Respondent is impersonating Complainant. A person does not acquire rights to a mark by committing a fraud.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the KLABZUBA mark. Respondent impersonates Complainant, which is rather strong proof Respondent knows about Complainant’s existence. Respondent sends e-mails from the disputed domain name, which provide actual information and links related to Complainant. Respondent must have known about Complainant’s rights in the mark to impersonate Complainant. When respondents have actual knowledge of a complainant’s rights in a mark, the registration and use of a confusingly similar domain name is done in bad faith under Policy ¶4(a)(iii). See Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights). Respondent registered the <klabzubaoilgas.com> domain in bad faith under Policy ¶4(a)(iii) because Respondent had actual knowledge of Complainant’s rights in the KLABZUBA mark at the time of registration…and planned to impersonate Complainant.
Respondent uses the domain name to engage in phishing. Complainant has provided documentation of e-mail correspondence between third parties and an e-mail address hosted at the disputed domain name. Respondent uses the domain name for the purpose of tricking third parties into giving away their private information, by offering employment at Complainant’s business. Complainant learned about Respondent and the <klabzubaoilgas.com> domain name when contacted by some of these third parties, who were suspicious about the process. Phishing constitutes bad faith under Policy ¶4(a)(iii). See Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (determining 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). Respondent uses the <klabzubaoilgas.com> domain to engage in phishing, which means Respondent registered and uses the domain name in bad faith under Policy ¶4(a)(iii).
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 <klabzubaoilgas.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Thursday, July 2, 2015
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