YMCA of Metropolitan Chicago v. Robert Milideo
Claim Number: FA1609001693986
Complainant is YMCA of Metropolitan Chicago (“Complainant”), represented by Lucille Mackey of Innis Law Group LLC, Illinois, United States. Respondent is Robert Milideo (“Respondent”), New Jersey, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ymcachicago.us>, registered with Google Inc.
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 September 15, 2016; the Forum received payment on September 15, 2016.
On September 16, 2016, Google Inc. confirmed by e-mail to the Forum that the <ymcachicago.us> domain name is registered with Google Inc. and that Respondent is the current registrant of the name. Google Inc. has verified that Respondent is bound by the Google Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On September 19, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 11, 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@ymcachicago.us. Also on September 19, 2016, 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 17, 2016, 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 to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD 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
[A.] The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (Rule 3(c)(ix)(1); Policy ¶4(a)(i))
The National Council of Young Men’s Christian Associations of the United States of America (“YMCA of the USA”) is the nation’s leading nonprofit committed to strengthening communities through youth development, healthy living, and social responsibility. Since 1858, the YMCA of Metropolitan Chicago (“YMCA of Metro Chicago”), a certified member of the YMCA of the USA and licensee of the YMCA trademarks, has contributed to the lives of girls, boys, women and men of all ages, races, religions, and economic backgrounds. The YMCA of Metro Chicago’s mission is to develop strong children, families, and communities across Metropolitan Chicago through academic readiness, character development, violence prevention, fitness, and healthy living. The YMCA of Metro Chicago partners and collaborates with public service providers, government agencies, churches, and neighborhood associations to improve life quality and encourage individual achievement. In addition to being one of the largest providers of licensed child care in mid-west United States, the YMCA of Metro Chicago services it communities through its fitness centers, camps for people of all ages, and senior housing throughout the Chicago area.
The YMCA Mark
The YMCA of Metro Chicago brings this action as an authorized licensee of the YMCA trademark as defined below. Specifically, this complaint is based on numerous trademark registrations of the YMCA of the USA’s famous YMCA mark (the “YMCA Mark”), which the YMCA of Metro Chicago has a license to use as a member association. The YMCA of USA owns numerous trademark registrations of the YMCA Mark in the United States for a wide range of goods and services. Since 1958, for example, the YMCA Mark (Reg. No. 668795) has been registered for “indicating membership in applicant’s association” with a first use date of 1855.
The YMCA of USA also owns U.S. registrations for Y YMCA (Reg. No. 3874467) in Class 36 for “philanthropic services concerning monetary donations”; Y YMCA (Reg. No. 3914925) in Class 35 for “charitable services, namely, organizing and conducting volunteer programs and community service projects; association services, namely, promoting the interests of organizations concerned with the promotion of health and well-being of individuals”; and Y YMCA (Reg. No. 3887355) in Class 44 for “providing a web site featuring information in the field of health, nutrition, and lifestyle wellness.”
YMCA of Met ro Chica go’s Authorized Use of the YMCA Mark
The YMCA of Metro Chicago also has rights in the YMCA Mark because it is a licensee who is authorized by the YMCA of USA to use the mark and it has used the YMCA Mark continuously for over one-hundred years. Article VIII of the YMCA of the USA’s Constitution states “the name ‘Young Men’s Christian Association,’ and all names, marks, logos, symbols and other intellectual property, including copyrights, owned, used or authorized by the National Council, are the property of the National Council and can be used only as authorized by the National Board.” A copy of Article VIII of the YMCA of the USA’s Constitution and Bylaws is attached as Annex 5. The YMCA of the USA’s Brand Requirements and Compliance further states that member associations have the right to use the intellectual property of the YMCA of the USA. See Annex 6. Finally, attached as part of Annex 6 is a copy of a letter dated December 11, 2015 stating the YMCA of Metro Chicago is a certified member of the YMCA of USA and, thus, confirming that the YMCA of Metro Chicago has a license to use the YMCA Mark.
As set forth above, the YMCA of Metro Chicago has been using the YMCA Marks since 1858. In addition, YMCA of Metro Chicago maintains an extensive on-line presence through its website, <YMCACHICAGO.ORG>. Screenshots of the <YMCACHICAGO.ORG> website are attached as Annex 8. YMCACHICAGO.ORG allows consumers to read about the history and mission of YMCA of Metro Chicago as well as the programs it offers, how to get involved with YMCA of Metro Chicago, and its locations. Finally, the website also posts employment opportunities at YMCA of Metro Chicago. The <YMCACHICAGO.ORG> website is an integral part of YMCA of Metro Chicago that allows consumers to learn about the YMCA of Metro Chicago.
In light of the above facts, the YMCA of Metro Chicago has rights in the YMCA Mark through both its license to use the mark as well as its continuous use of the YMCA Mark for decades.
Rights in a trademark can arise from the use of a trademark. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (relying on WIPO precedent the panel found common law rights in a mark where its use was continuous and ongoing). Rights in a trademark can also arise from a license granted by the legal owner of a trademark to another party such that the latter may use the mark. DigiPoll Ltd. V. Rah Kumar, WIPO Case No D2004-0939 (finding Complainant had rights in the trademark where evidence submitted showed that the trademark owner granted a license to the Complainant). Additionally, panels adjudicating domain disputes have consistently held that “a licensee having the right to use a mark under its license is clearly a party having a right in the service or trademark.” American Civil Liberties Union of New Mexico v. Vilma Morales/e:boom, S.A., WIPO Case No. D2004-0473 (citing Miele, Inc. v. Absolute Air Cleaners and Purifiers, WIPO Case No. D2000-0756). For example, in American Civil Liberties Union of New Mexico v. Vilma Morales/e:boom, S.A., the Panel confirmed that rights in a mark may be established by use of the mark. The Panel explained “whether [a] Complainant has a legal right to use the trademark, or has been authorized by the owner of the registered trademark is not for the Panel to decide…the [applicable policy] only state[s] that Complainant must have rights in the trademark.” WIPO Case No. D2004-0473 (citing Hafele America Co. v. Hafele, LLC, WIPO Case No. D2000-2939) (stating that Complainant had rights in the mark based on its use of the mark over the past eight years). WIPO Panels have also stated that “as a matter of U.S. law…even a non-exclusive licensee has the right to assert trademark rights in a licensed mark and to take action to protect the mark.” Toyota Motor Sales U.S.A. Inc. v. J. Alexis Productions, WIPO Case No. D2003-0624 (finding Complainant had protectable rights in the mark where it established it had a license to use the mark and had used the marks since 1989).
Similarity of the YMCACHICAGO.US Domain and the YMCA Mark
As set forth above, the YMCA of Metro Chicago owns the domain <YMCACHICAGO.ORG> and maintains an extensive on-line presence through its website, which allows consumers to read about the history and mission of YMCA of Metro Chicago as well as the programs it offers, how to get involved with YMCA of Metro Chicago, and its locations. The website also posts employment opportunities at YMCA of Metro Chicago. The fraudulent domain <ymcachicago.us> is purposefully confusingly similar to YMCA of Metro Chicago’s legitimate <YMCACHICAGO.ORG> domain and wholly incorporates the key portions of the legitimate domain.
In addition, the <ymcachicago.us> domain completely and entirely incorporates the well- known YMCA Mark and the YMCA portion of the domain is clearly the most prominent part of the domain name. Moreover, the inclusion of “CHICAGO” greatly increases the confusing similarity given YMCA’s strong presence, especially in Chicago, and YMCA of Metro Chicago’s ownership and use of <YMCACHICAGO.ORG>. Given the fame of the YMCA Mark, the <ymcachicago.us> domain is necessarily visually confusingly similar to the YMCA Mark. It is well-established that “the prominent presence of a recognizable trademark in a domain name is probably sufficient to amount to confusing similarity with the trademark, irrespective of any dilution with other words or letters.” Osram Sylvania, Inc. v. Jason Blevins, WIPO Case NO. D2009-0233; see also Tropar Mfg. co v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002) (Finding the addition of the country-code .us fails to add any distinguishing characteristic to the domain name).
The <ymcachicago.us> domain and the YMCA Mark are also phonetically and conceptually similar. As previously mentioned, the YMCA Mark is fully encompassed by the <ymcachicago.us> domain. As a result, they are necessarily phonetically similar with the only difference being the non-distinctive “CHICAGO.US”, which actually increases the risk of confusion. Both the YMCA Mark and the <ymcachicago.us> domain consist of four identical letters in the same order with no punctuation. As a result, the <ymcachicago.us> domain and the YMCA Mark should be treated as conceptually identical.
As set forth in more detail below, Respondent deliberately registered the <ymcachicago.us> domain and is now illegally using the YMCA Mark. Specifically, Respondent is using the <ymcachicago.us> to impersonate employees of YMCA of Metro Chicago, including Julie A. Burke, the Chief Financial Officer, in an attempt to defraud the YMCA of Metro Chicago and its consumers in violation of numerous civil and criminal laws.
Given the clear visual, phonetic and conceptual similarities, Respondent’s <ymcachicago.us> domain is identical or confusingly similar to the YMCA Mark.
[B.] The Respondent has no rights or legitimate interests in respect of the domain name (Rule 3(c)(ix)(2); Policy ¶4(a)(ii))
Neither the YMCA of the USA nor the YMCA of Metro Chicago has licensed or otherwise permitted Respondent to use the YMCA Mark or register the <ymcachicago.us> domain. Furthermore, upon information and belief, Respondent is not now nor has ever been commonly known, either as a business, individual, or an organization by the domain name <ymcachicago.us>. Additionally, upon information and belief, Respondent is not exercising a legitimate non-commercial or fair use of the <ymcachicago.us> domain, without an intent for commercial gain. Instead, Respondent is using the domain to impersonate an employee of the YMCA of Metro Chicago who works in Human Relations as well as Julie A. Burke, the Executive Vice President and Chief Financial Officer of the YMCA of Metro Chicago, in violation of civil and criminal laws.
Furthermore, upon information and belief, Respondent does not use, nor has he made preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services. The <ymcachicago.us> webpage does not contain any content associated with a bona fide business; rather, the site is inactive. On the contrary and as described in more detail below, Respondent deliberately adopted the <ymcachicago.us> domain and is now using the domain and the YMCA Mark to intentionally trade on the goodwill of YMCA’S famous name, marks, and business reputation by impersonating both a Human Relations employee and Julie A. Burke, the Executive Vice President and Chief Financial Officer of the YMCA of Metro Chicago. Respondent is wrongfully soliciting money and services from consumers in violation of YMCA of the USA and YMCA of Metro Chicago’s prior rights and numerous international civil and criminal laws.
Thus, the record shows that Respondent has no rights or legitimate interests in <ymcachicago.us>.
[C.] The domain name was registered and is being used in bad faith (Rule 3(c)(ix)(3); Policy ¶4(a)(iii))
The facts set forth below clearly establish that Respondent is using the <ymcachicago.us> domain in bad faith to impersonate the YMCA of Metro Chicago’s employees for fraudulent and illegal purposes. Specifically, Respondent fraudulently placed a job advertisement online for a Receptionist/Human Relations Assistant Position at the YMCA of Metro Chicago with the specific intent to defraud consumers. Respondent then used <ymcachicago.us> to impersonate a Human Resources employee of the YMCA of Metro Chicago and contacted consumers who applied to the posting asking if the consumer would be interested in a job as the Personal Assistant of Julie A. Burke, the Chief Financial Officer and Executive-Vice President of the YMCA of Metro Chicago. Upon the consumer’s acceptance of the offer, Respondent used the <ymcachicago.us> domain to impersonate Julie A. Burke and informed the consumer that they will be receiving a Certified Check in the amount of $3,550. Respondent instructed them to deposit the check into their checking account, but the deposited checks did not clear because they were not authentic. Furthermore, upon information and belief, one consumer was instructed by Respondent to write a check for $3,200 to a charity, which the consumer did as described in more detail below. These egregious facts alone are sufficient to establish bad faith. 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 SouthCrest Bank, N.A. v. VistaPrint Technologies Ltd., WIPO Case No. DCO2015-0009 (finding Respondent’s use of the dispute domain was bad faith where Respondent used domain to impersonate the Complainant’s Chief Financial officer).
Thus, Respondent deliberately adopted the <ymcachicago.us> domain for fraudulent purposes and is now using the YMCA Mark to intentionally trade on the goodwill of the YMCA of the USA and the YMCA of Metro Chicago’s famous name, mark, and business reputation by falsely impersonating actual employees of the YMCA of Metro Chicago to solicit money and services from consumers. These facts are egregious and establish that Respondent is using the YMCA Mark and name in bad faith. See Betchel Group, Inc. v. ucy kay, FA1511001647177 (Nat. Arb. Forum Dec. 22, 2015) (finding bad faith where Respondent used the domain to send fraudulent job offers to phish for personal information); see also Advance Magazine Publishers Inc. v. Domains By Proxy LLC/Marculles Brackard, Rock Your Fashion, Inc., WIPO Case No. DCO2016-0006 (finding bad faith where the Respondent used the disputed domain name to send fraudulent emails impersonating the Editor-in-Chief).
Attached is a compilation of the emails sent to actual consumers from the <ymcachicago.us> domain and used by Respondent to impersonate the YMCA of Metro Chicago employees. Neither Julie A. Burke nor any YMCA of Metro Chicago employee generated or authorized the creation of these emails. Respondent is using the <ymcachicago.us> domain with the illegal intent to impersonate Julie A. Burke and other YMCA of Metro Chicago employees and defraud the YMCA of Metro Chicago and its consumers.
It should be noted that the emails received lists the sender as Julie.burke@ymcachicago.us and dkelly@ymcachicago.us causing one to believe that the email did in fact come from Julie A. Burke and another YMCA of Metro Chicago employee. Additionally, each email sent from the <ymcachicago.us> domain contains a confusingly similar signature block to that of an actual YMCA of Metro Chicago employee and uses the YMCA Mark. In fact, one recipient of these fraudulent emails has already been confused based on the unauthorized, fraudulent activity. At Respondent’s instructions and believing Respondent to be Julie A. Burke, the consumer wrote a $3,200 check to a charity as instructed by Respondent. Respondent’s use of the domain <ymcachicago.us> to fraudulently solicit consumers for money and services is especially concerning because of the detriment to the YMCA of Metro Chicago, its members, and potential future members is heightened given its mission and values.
These facts prove that Respondent registered and is using the <ymcachicago.us> domain in bad faith. Seiko Epson Corp. et. Al v. Registrant, fa0602000644511 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent registered and used the domain in bad faith because the respondent was using the confusingly similar domain to attract Internet users); see SouthCrest Bank, N.A. v. VistaPrint Technologies Ltd., WIPO Case No. DCO2015-0009 (finding Respondent’s use of the dispute domain was bad faith where Respondent used domain to impersonate the Complainant’s Chief Financial officer); TVS Motor Company Limited v. VistaPrint Technologies Ltd., WIPO Case No. DCO 2014-0007 (Respondent used the disputed domain in bad faith where he used the domain to create emails purporting to be officers of Complainant); Syngenta Participations AG v. Who Is Agent/Rogeria Biasottoi, WIPO Case No. D2015-0253 (finding bad faith where the Respondent used the disputed domain to send fraudulent emails impersonating an employee of the Complainant).
The reasons set forth above compel a finding that the Respondent registered and is using the <ymcachicago.us> domain in bad faith. Ultimately, Respondent’s actions are designed to commit fraud by deceiving the YMCA of Metro Chicago’s members, future members, and consumers through the impersonation of the YMCA of Metro Chicago’s employees and Chief Financial Officer. The harm caused to the YMCA of Metro Chicago and the public generally is great, especially considering the YMCA of Metro Chicago’s mission and its reputation in the community. The domain should, therefore, be transferred to the YMCA of Metro Chicago.
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 prove the following three elements to obtain an order canceling 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.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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 (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, a member of the YMCA of the USA and licensee of the YMCA trademarks, has contributed to the lives of girls, boys, women, and men of all ages, races, religions, and economic backgrounds since 1858. The YMCA of the USA registered the YMCA mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 668,795, registered Oct. 21, 1958). Registration of a trademark with a governmental authority (such as the USPTO) adequately demonstrates Complainant’s trademark rights under Policy ¶4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (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 has adequately demonstrated its rights in its mark pursuant to Policy ¶4(a)(i).
Complainant claims the <ymcachicago.us> domain name is confusingly similar to Complainant’s mark because it wholly incorporates the mark and adds the geographic term “Chicago” and the ccTLD “.us.” A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. See Ticketmaster Corp. v. Kumar, FA 744436 (Forum Aug. 17, 2006) (finding that the <indiaticketmaster.com> domain name was confusingly similar to the complainant’s TICKETMASTER mark); see also Lockheed Martin Corp. v. Roberson, FA 323762 (Forum Oct. 19, 2004) (holding that the ccTLD “.us” does not differentiate the disputed domain name from Complainant’s mark). The simple addition of a geographic identifier to a registered mark in a domain name is not a distinguishable difference. Consequently, the Panel finds the <ymcachicago.us> domain name to be confusingly similar to the YMCA mark according to Policy ¶4(a)(i). See CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that the domain name <cmgiasia.com> is confusingly similar to the complainant’s CMGI mark); see also JVC Americas Corp. v. Macafee, CPR007 (CPR Nov. 10, 2000) (finding that the domain name registered by the respondent, <jvc-america.com>, is substantially similar to, and nearly identical to the complainant's JVC mark). Respondent’s domain name is confusingly similar to Complainant’s 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 (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 (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 domain name. Respondent is not commonly known by the domain name. Neither the YMCA of the USA nor Complainant has licensed Respondent to use the YMCA mark. The WHOIS information for the domain name lists “Robert Milideo” as registrant (and this Panel suspects the WHOIS information is false, although Complainant has not made that claim). There is no obvious relationship between Respondent’s name and the domain names. There is no factual basis to find Respondent is commonly known by the domain name under Policy ¶4(c)(iii) in the absence of a response from Respondent. See Tercent Inc. v. Lee Yi, FA 139720 (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 claims Respondent is not using the domain name in connection with (i) a bona fide offering of goods or services or (ii) a legitimate noncommercial or fair use. Respondent uses the domain name defraud job applicants. Respondent impersonates an employee of Complainant who works in Human Relations, as well as Julie A. Burke, Complainant’s Executive Vice President and Chief Financial Officer.
Respondent places a fictitious job advertisement online for a Receptionist/Human Relations Assistant Position at the YMCA of Metro Chicago. Respondent then uses the domain name to impersonate a Human Resources employee of Complainant, contacting applicants by email and offering them a job as the Personal Assistant of Julie A. Burke. Upon the applicant’s acceptance of the offer, Respondent uses the domain name to impersonate Julie A. Burke and informs the applicant they would be receiving a $3,500.00 certified check. Respondent then instructs the applicant to deposit the check into their checking account. Ultimately, the check would not clear because it was a forgery. Respondent would then have the applicant remit the funds to Respondent before the applicant’s bank knew the check was a forgery because the depositing bank made the funds available before they truly were collected (as most banks are required to do under Expedited Funds Availability Act (EFAA) as implemented by Federal Reserve regulation CC).
At the end of the day, the applicant has to repay the applicant’s bank the amount of the forged check. Respondent will never be seen again (and will keep proceeds of the forged check). Respondent lacks rights and legitimate interests in a domain name where it uses the domain name to fraudulently impersonate an employee of a complainant and to commit fraud. See Church Mutual Insurance Company v. Paul Looney, FA 1668317 (Forum May 17, 2016) (“Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the <churchrnutual.com> domain name. Respondent registered and uses the disputed domain name and an associated email account to impersonate Complainant and acquire personal or financial information from Complainant or Complainant’s customers.”). Respondent lacks rights and legitimate interests in the domain name.
Complainant claims Respondent has failed to make any active use of the domain name. This is not true. Respondent does not have a web site located at the domain. This is not the only use for a domain. Domains can be used to send and receive email. This is obviously being done in this case (even though the email is fraudulent). Domain can be used as ecommerce portals. While there may be no obvious web page, the domain still functions and actually does work (although not honest work). The failure to have a website does not automatically mean a domain is not being used (or the reverse, a domain may be being used even though it does not have a website associated with it). Therefore, this Panel finds Respondent lacks rights and legitimate interests in the domain name.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent uses the domain name to impersonate Complainant’s employees for fraudulent purposes. Such a use of a domain name by a respondent is evidence of bad faith registration and use. See Church Mutual Insurance Company v. Paul Looney, FA 1668317 (Forum May 17, 2016) (“Respondent is using the <churchrnutual.com> domain name in bad faith. Respondent registered and uses the disputed domain name and an associated email account to impersonate Complainant and acquire personal or financial information from Complainant or Complainant’s customers.”). Respondent registered and is using the domain name in bad faith under Policy ¶4(a)(iii).
Complainant claims Respondent uses the domain name to solicit money and services from job applicants. The evidence supports this conclusion. Using a domain name to commit fraud constitutes bad faith registration and use. See Hess Corp. v. GR, FA 770909 (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 registered and is using the domain name in bad faith.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the usTLD Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <ymcachicago.us> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Wednesday, October 19, 2016
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