Spectrex Inc. v. Anuoluwapo Kola / Ibhassan
Claim Number: FA1509001638918
Complainant is Spectrex Inc. (“Complainant”), New Jersey, USA. Respondent is Anuoluwapo Kola / Ibhassan (“Respondent”), Nigeria.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <speclrex.net> and <spectronix.org>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 22, 2015; the Forum received payment on September 22, 2015.
On September 23, 2015, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <speclrex.net> and <spectronix.org> domain names are registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the names. 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 September 23, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 13, 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@speclrex.net, postmaster@spectronix.org. Also on September 23, 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 October 20, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant, Spectrex Inc., is a leader in flame and open path gas detection. Complainant owns common law rights in the SPECTREX mark, as Complainant’s mark has acquired secondary meaning through longstanding use since 1981.
The <speclrex.net> and <spectronix.org> domain names are confusingly similar to the SPECTREX mark. The <speclrex.net> domain name contains Complainant’s SPECTREX mark, replaces the letter “t” with the letter “l,” and attaches the generic top-level domain (“gTLD”) “.net” to the domain name. The <spectronix.org> domain name contains the “SPECTR” portion of Complainant’s mark, replaces the suffix “ex” with “onix,” and attaches the gTLD “.org” to the domain name.
Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names, as the WHOIS information for the disputed domain names does not resemble the domain names in any manner. Respondent is not sponsored by or affiliated with Complainant in any way, nor has Complainant permitted Respondent to use its SPECTREX trademark. Further, Respondent has failed to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain names. Respondent uses the disputed domain names to defraud Complainant’s customers through an e-mail phishing scam.
Respondent has registered and is using the <speclrex.net> and <spectronix.org> domain names in bad faith. Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites by creating a likelihood of confusion with Complainant’s mark. Further, it is more likely than not that Respondent knew of Complainant’s mark when it registered the disputed domain names. Additionally, Respondent has failed to make an active use of the <spectronix.org> domain name. Moreover, Respondent attempts to perpetrate an email phishing attack through the <speclrex.net> domain name. Finally, Respondent has engaged in typosquatting, which is additional evidence of bad faith pursuant to Policy ¶ 4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the SPECTREX mark through its unopposed evidence of common law rights in such mark.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain names after Complainant acquired rights in its relevant trademarks.
Respondent uses the at-issue domain names to create email addresses as part of a scheme to support a phishing scam aimed at defrauding third parties.
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.”).
The at-issue domain names are each confusingly similar to a trademark in which Complainant has rights.
The Policy does not require that Complainant’s trademark be registered by a government authority to establish rights in the mark under section 4(a)(i). It is sufficient that Complainant demonstrate that its relevant mark has 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 shows that its SPECTREX mark has acquired secondary meaning by proffering evidence of the mark’s continued use in commerce starting in 1981, including it’s the incorporation into domain names in 1996 and 2006. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding common law rights in the BOND DIAMONDS mark because the complainant had used the mark in commerce for twelve years before the respondent registered the <bonddiamond.com> domain name); see also Palm Desert Nat’l Bank, N.A. v. Manila Indus., Inc., FA 843468 (Nat. Arb. Forum Jan. 17, 2007) (“Complainant’s . . . registrations for the <palmdesertnationalbank.net> and <palmdesertnationalbank.org> domain names serve as further evidence of Complainant’s rights in the mark.”).
Respondent’s <speclrex.net> domain name contains Complainant’s SPECTREX mark with the letter “t” replaced by an “l”. The graphic representations of lowercase “spectrex” and lowercase “speclrex” appear almost identical to each other as the latter only lacks the “t’’’s diminutive horizontal element. Textually they differ only by a single character. Respondent’s <spectronix.org> domain name contains the “spectr” portion of Complainant’s trademark and substitutes “onix” for the somewhat similarly sounding “REX” portion of Complainant’s trademark. Notably, Spectronix is the name of Complainant’s parent company, Spectronix, Ltd. Additionally, each of Respondent’s domain names necessarily has a top level (.net and .org respectively) appended to its second level. With regard thereto, such top-level domain names are immaterial to a panel’s analysis under Policy ¶4(a)(i). Therefore the Panel concludes that each at-issue domain name is confusingly similar to Complainant’s SPECTREX trademark. See Intelius, Inc. v. Hyn, FA 0703175 (NAF July 5, 2006) (Finding the <intellus.com> domain name to be confusingly similar to the complainant’s INTELIUS mark because the domain name differed from the mark by one letter and was visually similar); see also, 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, Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (concluding that the <classicmetalroofing.com> domain name was confusingly similar to the complainant’s CLASSIC METAL ROOFS mark because changing the final term of the mark from “roofs” to “roofing” was a minor alteration and did not sufficiently distinguish the domain name from the mark); see also, Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶4(c) circumstances Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain names. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of either of the at-issue domain name.
WHOIS information for the at-issue domain name lists “yexiaoming / woci famen youxiangongsi” as the domain names’ registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by either the <speclrex.net> or <spectronix.org> domain name. Therefore, the Panel finds that Respondent is not commonly known by either at-issue domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Respondent uses the at-issue domain names, one actively --<speclrex.net> and the other inactively --<spectronix.org>, as part of plan to defraud Complainant’s customers through an e-mail phishing scheme. The <speclrex.net> domain name enables Respondent to pass itself off as Complainant when Respondent’s sends emails to Complainant’s customers. In the hundreds of thousands of such emails Respondent pretends to be an employee of Complainant and commands the email recipients to (re)submit payments destined for Complainant to a bank account which is controlled by Respondent. It is more than reasonable to infer that Respondent has similar plans for the confusingly similar <spectronix.org> domain name notwithstanding that the domain name is currently technically inactive. To be sure, Respondent’s <spectronix.org> domain name is so clearly inextricably bound up in Respondent’s nefarious plot to defraud Complainant’s customers that it is effectively an active participant in the scheme. Using the domain names in this manner 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 Tyco Int’l Services GmbH v. TYCOINT SCOT, FA 1590501 (Nat. Arb. Forum Dec. 22, 2014) (finding no rights or legitimate interests where the disputed domain name was used to impersonate the complainant in email messages in connection with a fraudulent scheme aimed at the complainant’s customers).
Given the forgoing, Complainant satisfies its initial burden under Policy ¶4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of each at-issue domain name.
The domain names were each registered and used in bad faith. As discussed below, Policy ¶4(b) specific bad faith circumstances as well as other circumstance are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy as to each of the at-issue domain names.
As mentioned above Respondent used the <speclrex.net> and <spectronix.org> domain names to support its design to defraud Complainant’s customers by employing the <speclrex.net> domain name as part of an email address in order to cause confusion as to the emails sponsorship --emails in which Respondent, posing as an agent of Complainant, directed the emails’ recipients to make payments to a bank account controlled by Respondent. As also mentioned above, Respondent’s <spectronix.org> domain name although inactive is nevertheless bound up in Respondent’s foul scheme and was undeniably registered to further it. This criminal use of the domain names demonstrates Respondent’s bad faith pursuant to Policy ¶ 4(b)(iv) and otherwise. See SHUAA Capital psc v. SHUAA CAPITAL, FA 1581256 (Nat. Arb. Forum Oct. 29, 2014) (“Respondent’s registration of a domain name obviously intended to create confusion with Complainant, together with its use of that domain name in connection with a fraudulent scheme involving email messages sent to third parties in an attempt to exploit such confusion, is indicative of bad faith”); see also, SHUAA Capital psc v. Oba Junkie / shuaa capital psc, FA 1581255 (Nat. Arb. Forum Oct. 29, 2014) (“Respondent’s use of the domain name’s e-mail suffix for fraudulent purposes illustrates Policy ¶ 4(a)(iii) bad faith.”).
Additionally, it follows that Respondent registered the <speclrex.net> and <spectronix.org> domain names knowing that Complainant had trademark rights in the SPECTREX mark. Respondent’s prior knowledge is evident from Respondent’s foul scheme which relies on fooling Complainant’s customers into believing Respondent’s emails were originating from Complainant. There is no doubt that Respondent intentionally registered the at-issue domain names precisely to improperly exploit their trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <speclrex.net> and <spectronix.org> domain names in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Finally, although Complainant’s suggests that Respondent engages in typosquatting, the Panel disagrees. Typosquatting is a practice whereby a domain name registrant deliberately introduces a common typographical error or misspelling into a trademark and then uses the malformed string in a domain name hoping that Internet users will inadvertently type the string when searching for products or services associated with that trademark and thereby be directed to a web presence controlled by the domain name’s registrant. However, this does not seem to be the case at bar. It is unlikely that any significant number of persons looking for Complainant would type an “l” rather than a “t” when intent on typing Complainant’s SPECTREX mark as part of a URL. Even if one did so, the result would be the Internet user’s arrival at a virtually contentless webpage which was not designed to allow Respondent to take advantage of the unintended visit and would likely cause the Internet user to quickly recognize his or her typing mistake. Respondent did not expect that anyone would try to locate Complainant by typing in one of the at-issue domain names, nor did it care. Instead, Respondent resolved to use the confusingly similar domain name <speclrex.net> in the address of its phishing email to diminish the chance that someone might notice a discrepancy between the email’s feigned author and the email’s originating address and thus expose Respondent’s duplicity. The <spectronix.org> domain name was likely held for a similar future purpose.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <speclrex.net> and <spectronix.org> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: October 21, 2015
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