RGF Environmental Group, Inc. v. WHOIS AGENT / WHOIS PRIVACY PROTECTION SERVICE, INC.
Claim Number: FA1702001719208
Complainant is RGF Environmental Group, Inc. (“Complainant”), represented by Leo M. Loughlin of Rothwell, Figg, Ernst & Manbeck P.C., District of Columbia, USA. Respondent is WHOIS AGENT / WHOIS PRIVACY PROTECTION SERVICE, INC. (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <rgf.com>, registered with eNom, Inc.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 27, 2017; the Forum received payment on February 27, 2017.
On February 27, 2017, eNom, Inc. confirmed by e-mail to the Forum that the <rgf.com> domain name is registered 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 accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 28, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 20, 2017 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@rgf.com. Also on February 28, 2017, 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 April 4, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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
Complainant made the following contentions
Complainant is a company that makes and supplies turnkey environmental systems. It was incorporated in 1985. In connection with its business, Complainant registered the RGF mark with the United States Patent and Trademark Office (“USPTO”) (Reg. 4,697,946, first use Apr. 15, 1985, filed Feb. 12, 2013, registered Mar. 10, 2015), and has rights in the mark under Policy ¶ 4(a)(i). See Compl., at Attached Ex. 1. Respondent’s <rgf.com> domain name is confusingly similar to Complainant’s RGF marks because it incorporates the mark in its entirety, adding only the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not licensed or otherwise authorized Respondent to use its RGF mark. Moreover, Respondent has taken control of the registration of the domain name and the resolving website and has done so without the consent of Complainant. Further, Respondent uses the exact content maintained on the website that was previously arranged by Complainant. Such use cannot be construed as a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Respondent registered and used the <rgf.com> domain name in bad faith. Respondent disrupted Complainant’s business under Policy ¶ 4(b)(iii), and attracts Internet traffic to commercially benefit from the goodwill of the RGF mark by creating confusion as to the source, sponsorship, affiliation, or endorsement of its website by using the marks of Complainant under Policy ¶ 4(b)(iv).
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that makes and supplies turnkey environmental systems.
2. Complainant has established its registered trademark rights in the RGF mark by virtue of having registered it with the United States Patent and Trademark Office (“USPTO”) (Reg. 4,697,946, first use Apr. 15, 1985, filed Feb. 12, 2013, registered Mar. 10, 2015).
3. Complainant has also established its common law or unregistered trademark rights in RGF from at least 1996.
4. Complainant was initially the registered owner of the disputed domain name which was first registered by Complainant on February 25, 1996 and which is identical to the RGF mark.
5. Respondent has taken control of the registration of the disputed domain name and the resolving website and has done so without the knowledge and subsequently without the consent of Complainant.
6. Respondent is the holder of the domain name registration relating to the <rgf.com> domain name.
7. Respondent has no right or legitimate interest in the domain name and has both acquired and used it in bad faith by pretending that it is Complainant and using the domain name and the resolving website for its own benefit.
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 (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 first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant contends that it registered its RGF mark with the USPTO (Reg. 4,697,946, first use Apr. 15, 1985, filed Feb. 12, 2013, registered Mar. 10, 2015), and has rights in the mark under Policy ¶ 4(a)(i). The Panel agrees. See Compl., at Attached Ex. 1. A USPTO registration confers rights in a mark. T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office). Further, where a valid registration exists, rights have been considered to begin at the time of filing. See Adorama, Inc. v. Moniker Privacy Services, FA 1610020 (Forum May 1, 2015) (“Trademark protection extends back to the application filing date of a registered mark.”). Thus, the Panel finds that Complainant has rights in the RGF mark under Policy ¶ 4(a)(i) that date back to the mark’s filing date of February 12, 2013.
The Panel has also considered whether Complainant has any trademark rights under the common law. Common law trademark rights may be found by a panel having regard to the totality of the evidence and any reasonable inference that can be drawn from that evidence. Complainant relies in the present case on the fact that it incorporated its business, RGF Environmental Group, in 1985 and that the company has continued to do business under that name since then. It registered the domain name on February 25, 1996 and then conducted its website under that domain name for some twenty years. Complainant’s website, which was generated by Complainant and which has subsequently fallen under the control of Respondent, carries a series of media items going back to 2003 which uses the RGF mark and the company name of Complainant. It is clear that Complainant has been using RGF as it trademark and the source of its goods well prior to the time when Respondent apparently got control of the domain name. The probability is that Complainant acquired the trademark RGF progressively since at least 1996.
Complainant has therefore established both registered and common law trademark rights.
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s RGF mark. It is apparent that the domain name is identical to the trademark. It does, of course, include the gTLD “.com.” This type of alteration to a trademark has not been considered distinguishing under Policy ¶ 4(a)(i). See F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (Forum July 9, 2015) (holding, “Respondent’s <frburger.com> domain name is identical to Complainant’s FRBURGER mark because it differs only by the domain name’s addition of the top-level domain name “.com.”). As such, the Panel finds that the <rgf.com> domain name is identical to the RGF trademark
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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 (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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s RGF trademark and to use it in its entirety in the domain name;
(b) Complainant registered the disputed domain name on February 25, 1996 and some time in 2016 Respondent obtained registration of the domain name in its own name and control of the website to which it resolves, none of which gives Respondent a right or legitimate interest in the domain name;
(c) Respondent has used the domain name and website to pretend that it is Complainant and for Respondent’s own advantage;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) In particular, Complainant alleges Respondent has no rights or legitimate interests in the disputed domain name because. Respondent is not commonly known by the <rgf.com> domain name. Where there is no response filed, as in the present case, panels typically look to the WHOIS of record to determine whether a respondent could have been commonly known by a disputed domain name. See Google Inc. v. Domain Admin / Whois Privacy Corp., FA1502001605239 (Forum Mar. 22, 2015) (“WHOIS information for the at-issue domain name lists ‘Domain Admin / Whois Privacy Corp.’ as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <google-status.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii).”). Here, the Panel notes that the WHOIS lists “WHOIS AGENT / WHOIS PRIVACY PROTECTION SERVICE, INC.” as registrant. As this does not bear any resemblance to the <rgf.com> domain name, the Panel finds that Respondent is not commonly known by the <rgf.com> domain name;
(f) Complainant argues that Respondent has not made any bona fide offering of goods or services or any legitimate noncommercial or fair use. Complainant alleges that Respondent is attempting to defraud Internet users by posing as Complainant. Such attempts by a respondent to pass itself off as a complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Kmart of Mich., Inc. v. Cone, FA 655014 (Forum Apr. 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website). The Panel notes that Complainant submits that no changes have been made to the website since Respondent took over the site. See Compl., at Attached Ex. B (resolving website). Therefore, the Panel finds that Respondent is not using the <rgf.com> domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant contends that Respondent registered and used the <rgf.com> domain name in bad faith under Policy ¶ 4(a)(iii) because Respondent “hijacked” Complainant’s website. Complainant argues that Complainant has used the <rgf.com> domain name for its website for 20 years and that the <rgf.com> domain name was transferred to Respondent without Complainant’s knowledge or consent in 2016. Opportunistic bad faith may occur when a respondent registers the disputed domain name immediately after complainant accidently let it expire. See Avocent Huntsville Corp. v. Taro Yamada / Personal, FA1409001582613 (Forum Nov. 25, 2014) (holding that the respondent had engaged in opportunistic bad faith pursuant to policy ¶ 4(a)(iii), when it registered the disputed domain name immediately after the complainant mistakenly allowed it to expire). The precise circumstances under which Complainant lost and Respondent acquired control of the domain name are not known. What is clear from the Complaint, which is certified on behalf of Complainant and from the other evidence contained in the website is that Complainant has been trading under its current name since 1985 and using the RGF trademark since then or at least since 1996 and is clearly the victim of a fraud by Respondent.
Secondly, Complainant argues that Respondent has registered and is using the <rgf.com> domain name in bad faith under Policy ¶ 4(b)(iv) by attempting to attract Internet traffic and benefit commercially from the goodwill of the RGF mark. Use of a disputed domain name to create confusion as to the source, sponsorship, affiliation, or endorsement of the content therein constitutes bad faith under Policy ¶ 4(b)(iv). See Staples, Inc. and Staples the Office Superstores, LLC v. HANNA EL HIN / DTAPLES.COM, FA1404001557007 (Forum June 6, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <dtaples.com> domain name in bad faith under Policy ¶ 4(b)(iv) because the Respondent is using the disputed domain name to host third-party links to Complainant’s competitors from which Respondent is presumed to obtain some commercial benefit.”). Complainant contends that the <rgf.com> domain name creates confusion as to the source, sponsorship, affiliation, or endorsement of its website for the purpose of attracting Internet traffic. The Panel finds that the inference must be made from the evidence that Respondent wanted to give the false impression that it was Complainant and that Respondent has been engaged in this activity for its own benefit and not the benefit of Complainant.
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the RGF mark and in view of the conduct that Respondent has engaged in when using the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
The registration of the domain name for present purposes took place on the day, probably in 2016, when Respondent took control of the domain name and for its own benefit. That date was clearly after Complainant’s RGF trademark was registered on March 10, 2015 and of course many years after Complainant acquired its common law trademark rights to RGF by 1996.
Moreover, it should be noted that from that date in 2016, Respondent was the holder of the domain name registration and hence Respondent in this proceeding.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <rgf.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated April 5, 2017
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