Department of Veterans Affairs v. Deborah Fiorentino / Qubit Logix, LLC
Claim Number: FA1512001652217
Complainant is Department of Veterans Affairs (“Complainant”), Washington, D.C., United States. Respondent is Deborah Fiorentino / Qubit Logix, LLC (“Respondent”), Arizona, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <post911gibilleducationdecisions.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 14, 2015; the Forum received payment on December 14, 2015.
On December 15, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <post911gibilleducationdecisions.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 December 16, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 5, 2016 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@post911gibilleducationdecisions.com. Also on December 16, 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 January 7, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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 name be transferred from Respondent to Complainant.
A. Complainant’s Contentions
1. Complainant is a Cabinet-level department of the United States, created by an act of Congress in 1988 from the former Veterans Administration, whose mission is to assist veterans in their time after service by providing benefits and support. One of the benefits offered by the VA is education benefits authorized by the Servicemen’s Readjustment Act of 1944, known informally as the GI Bill. Complainant has registered the GI BILL mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,225,784, registered October 16, 2012), which demonstrates Complainant’s rights in its mark. The Panel is directed to Attached Exhibit A for a copy of Complainant’s USPTO registration. The <post911gibilleducationdecisions.com> domain name is confusingly similar to Complainant’s mark as it wholly incorporates Complainant’s mark, eliminates the spacing between the words of Complainant’s mark, adds the generic terms “Post911,” “education,” and “decisions,” and adds the generic top-level domain (“gTLD”) suffix “.com.”
2. Respondent has no rights or legitimate interests in the disputed domain name. First, Respondent is not commonly known by the disputed domain name or any variant of Complainant’s mark. Second, Respondent is not licensed or authorized to use Complainant’s mark. Finally, Respondent did not make a bona fide offering of goods or services through the disputed domain name or a legitimate noncommercial or fair use. Rather, Respondent’s disputed domain name directs Internet users to a page displaying a form which asks for personal information such as zip code, highest level of education completed, high school graduation year, an area of interest, a degree type, number of years worked, when the user plans to start school, whether the user is in school, a campus preference, country of residence, and military affiliation. The user is then asked to input their contact information and to agree to a disclaimer that allows them to be contacted by educational services. Thus, Respondent uses the disputed domain name to generate profit by providing contact information to educational services. The Panel is directed to Attached Exhibit B for a screenshot of Respondent’s resolving webpage.
3. Respondent has registered and is using the disputed domain name in bad faith. First, Respondent’s continued use of the disputed domain name to intentionally attract, for commercial gain, Internet users to its website demonstrates bad faith registration and use pursuant to Policy ¶ 4(b)(iv). Second, Respondent uses the disputed domain name in an attempt to “phish” for Internet users’ personal information. Finally, because of the fame associated with Complainant’s mark, it is clear that Respondent registered the disputed domain name with actual knowledge of the mark.
B. Respondent’s Contentions
1. Respondent did not submit a response in this proceeding.
1. Respondent’s <post911gibilleducationdecisions.com> domain name is confusingly similar to Complainant’s GI BILL mark.
2. Respondent does not have any rights or legitimate interests in the <post911gibilleducationdecisions.com> domain name.
3. Respondent registered or used the <post911gibilleducationdecisions.com> domain name 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 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(f), 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 is a Cabinet-level department of the United States, created by an act of Congress in 1988 from the former Veterans Administration, whose mission is to assist veterans in their time after service by providing benefits and support. One of the benefits offered by the VA is education benefits authorized by the Servicemen’s Readjustment Act of 1944, known informally as the GI Bill. Complainant has registered the GI BILL mark with the USPTO (Reg. No. 4,225,784, registered October 16, 2012). Complainant contends that its USPTO registration demonstrates its rights in its mark. The Panel agrees that Complainant’s trademark registration with the USPTO is sufficient in demonstrating its rights in the GI BILL mark under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”).
Complainant alleges that because the GI BILL mark has been continuously used by Complainant in connection with its educational services for over seventy years, it has demonstrated common law rights in the mark for the purposes of Policy ¶ 4(a)(i). The Panel notes that Complainant has not provided any evidence to support this contention. Past panels have held that the continued use of a mark can establish a complainant’s common law rights. See Surecom Corp. NV v. Rossi, FA 1352722 (Nat. Arb. Forum Nov. 29, 2010) (holding that complainant had acquired secondary meaning in the mark, thereby establishing common law rights in the mark for purposes of Policy ¶ 4(a)(i), as a result of complainant’s continuous use of the CAM4 mark since 1999). Accordingly, the Panel agrees with Complainant’s unsupported contention, and then finds that Complainant has demonstrated common law rights to the GI BILL mark under Policy ¶ 4(a)(i) dating back to the alleged first use of June 22, 1944. See Compl., at Attached Ex. A-1.
Complainant argues that the <post911gibilleducationdecisions.com> domain name is confusingly similar to Complainant’s mark as it wholly incorporates Complainant’s mark, eliminates the spacing between the words of Complainant’s mark, adds the generic terms “Post911,” “education,” and “decisions,” and adds the gTLD “.com.” Previous panels have concluded that the elimination of spacing between the words of a complainant’s mark, the addition of generic terms, and/or the addition of a gTLD do not serve to adequately distinguish a respondent’s disputed domain name from a complainant’s mark. See Warner Bros. Entm’t Inc.; New Line Prods., Inc. & DC Comics v. Procount Bus. Servs., FA 360942 (Nat. Arb. Forum Dec. 22, 2004) (finding that the addition of one or more generic terms and a gTLD as well as the omission of spaces fails to create a meaningful distinction between the disputed domain name and the mark within it because “[s]uch additions do not disguise the fact that the dominant features of the domain names are [c]omplainant’s marks, and each domain name is therefore confusingly similar to the marks pursuant to Policy ¶ 4(a)(i)”). As such, the Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
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 argues that Respondent has no rights or legitimate interests in the disputed domain name. Complainant contends that Respondent is not commonly known by the disputed domain name or any variant of Complainant’s mark. Further, Complainant argues that Respondent has no license or authorization to use Complainant’s mark. The Panel notes that the WHOIS information merely lists “Deborah Fiorentino / Qubit Logix, LLC” as registrant and that Respondent has failed to provide any evidence for the Panel’s consideration. As such, the Panel finds no basis in the available record to find Respondent commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). 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).
Complainant contends that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Specifically, Complainant argues that Respondent’s disputed domain name directs Internet users to a page displaying a form which asks for personal information such as zip code, highest level of education completed, high school graduation year, an area of interest, a degree type, number of years worked, when the user plans to start school, whether the user is in school, a campus preference, country of residence, and military affiliation. The user is then asked to input their contact information and to agree to a disclaimer that allows them to be contacted by educational services. In summary, Complainant argues that Respondent uses the disputed domain name to generate profit by providing contact information to educational services. Past panels have agreed that a respondent’s use of a domain name to phish for users’ personal information is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to 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)). Therefore, the Panel finds that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
Complainant contends that Respondent’s continued use of the disputed domain name to intentionally attract, for commercial gain, Internet users to its website constitutes bad faith registration and use under Policy ¶ 4(b)(iv). Specifically, Complainant asserts that Respondent uses the disputed domain name to divert Internet traffic from Complainant’s website to that of Respondent. Further, Complainant argues that Respondent profits by selling Internet users’ personal information to educational services. Past panels have held that a respondent demonstrated bad faith registration and use where the respondent appropriated a complainant’s mark in a confusingly similar domain name for commercial gain. See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). Therefore, the Panel finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant alleges that Respondent uses the disputed domain name to fraudulently retrieve Internet users’ personal information for the purpose of selling it to educational services. Previous panels have agreed that a respondent’s use of a domain name to phish for Internet users’ personal information constitutes bad faith registration and use under Policy ¶ 4(a)(iii). See Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (finding bad faith registration and use because the respondent used the domain name to redirect Internet users to a website that imitated the complainant’s website and to fraudulently acquire personal information from the complainant’s clients). As such, the Panel concludes that Respondent has engaged in bad faith registration and use per Policy ¶ 4(a)(iii).
Finally, Complainant argues that because of the fame associated with Complainant’s mark, it is clear that Respondent registered the disputed domain name with actual knowledge of the mark. Past panels have held that a respondent demonstrated bad faith pursuant to Policy ¶ 4(a)(iii) where the respondent was well-aware of the complainant’s mark at the time the disputed domain name was registered. See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). Accordingly, the Panel finds that Respondent registered the disputed domain name with actual knowledge of Complainant’s mark, thereby engaging in conduct proscribed by Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <post911gibilleducationdecisions.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: January 20, 2016
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