MDU Resources Group, Inc. v. Albert Kruck
Claim Number: FA1703001719946
Complainant is MDU Resources Group, Inc. (“Complainant”), represented by Marlene J. Williams of Nixon Peabody LLP, California. Respondent is Albert Kruck (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mdu-resources.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge, she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits here as Panelist.
Complainant submitted a Complaint to the Forum electronically March 3, 2017; the Forum received payment March 3, 2017.
On March 4, 2017, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <mdu-resources.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 verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 6, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 27, 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@mdu-resources.com. Also on March 6, 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 20, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit here as Panelist.
Having reviewed the communications record, the Administrative Panel (the "Panel") finds that the Forum 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 Allegations in this Proceeding:
Complainant registered the MDU mark (e.g., Reg. No. 2,341,183, registered Apr. 11, 2000) and the MDU RESOURCES GROUP, INC. BUILDING A STRONG AMERICA (e.g., Reg. No. 3,242,506, registered May 15, 2007) mark (“Mark”) with the United States Patent and Trademark Office (“USPTO”). See Compl., at Attached Ex. C. Respondent’s <mdu-resources.com> domain name is confusingly similar as it merely adds a hyphen and the generic top-level domain (“gTLD”) “.com”, while removing spaces and the remaining words from the MDU RESOURCES GROUP, INC. BUILDING A STRONG AMERICA mark.
Respondent has no rights or legitimate interests in the <mdu-resources.com> domain name. Respondent is not commonly known by the Marks, nor is Respondent sponsored by or legitimately affiliated with Complainant in any way. Complainant has not given Respondent permission to use the mark in a domain name. Respondent is not making any bona fide offering of goods or services or noncommercial or fair use of the disputed domain since Respondent engages in an elaborate phishing scheme, including mirroring Complainant’s webpage, creating fraudulent email accounts, and setting up job offers on employment hiring sites. See Compl., at Attached Exs. D–F. Finally, Respondent’s use of an identical website to Complainant’s amounts to an attempt to pass itself off as Complainant.
Respondent registered and uses the <mdu-resources.com> in bad faith. As previously noted, Respondent uses the disputed domain name to engage in a phishing scheme through emailing individuals with job offers to obtain personal and financial information. See Compl., at Attached Ex. D-F. Additionally, the disputed domain name directly mirrors the website of Complainant, also supporting findings of bad faith. See Compl. at Attached Ex. D. Finally, Respondent must have had actual or constructive knowledge of Complainant’s Marks because Respondent passes itself off as Complainant by exactly copying Complainant’s website.
B. Respondent’s Allegations in Response in this Proceeding:
Respondent did not submit a Response in this proceeding. The Panel notes that Respondent first registered <mdu-resources.com> May 6, 2002.
Complainant established rights and legitimate interests in its protected mark.
Respondent has no such rights or legitimate interests in Complainant’s protected mark or the disputed domain name containing it in its entirety.
Respondent registered and used Complainant’s protected mark in a disputed domain name that is confusingly similar to Complainant’s protected mark.
Respondent registered and used the disputed domain name containing Complainant’s protected mark 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 to 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.
Given 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 will draw such inferences as the Panel 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.”).
Identical or Confusingly Similar:
Complainant provides electric and gas utilities, transportation and storage of natural gas, construction materials, and construction services throughout the United States. Complainant continuously operated under the MDU mark from 1966 to date. Complainant registered the MDU (e.g., Reg. No. 2,341,183, registered Apr. 11, 2000) and MDU RESOURCES GROUP, INC. BUILDING A STRONG AMERICA (e.g., Reg. No. 3,242,506, registered May 15, 2007) Marks with the USPTO. See Compl., at Attached Ex. C. Registration of a mark with the USPTO sufficiently shows a registrant’s rights in that mark. See 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.). Therefore, the Panel finds that Complainant established rights in the mark for the purposes of Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <mdu-resources.com> is confusingly similar to the MDU RESOURCES GROUP, INC. BUILDING A STRONG AMERICA mark, as the domain name adds a hyphen and omits words from Complainant’s mark, while adding the gTLD “.com”. Similar changes to a complainant’s mark have not been found to sufficiently distinguish domain names. See Panco Men’s Products, Inc. v. LEN PETERSON / LEONARD L PETERSON, FA 1613409 (Forum May 26, 2015) (finding Respondent’s <genesvitamine.com> domain name is confusingly similar to the GENES VITAMIN E CREME mark pursuant to Policy ¶4(a)(i).); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”). Similarly, adding the gTLD “.com” is irrelevant to an analysis of confusing similarity. 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.”). Here, Respondent adds a hyphen and the gTLD “.com”, while removing spaces and the other words from the MDU RESOURCES GROUP, INC. BUILDING A STRONG AMERICA mark. Therefore, the Panel finds that Respondent did not distinguish the domain name from Complainant’s protected mark under a Policy ¶ 4(a)(i) analysis.
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that Respondent registered a disputed domain name that is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights or Legitimate Interests:
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 of proof shifts to Respondent to show it does have such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that complainant must first make a prima facie case that 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 argues that Respondent has no rights or legitimate interests in <mdu-resources.com> since Respondent is not commonly known by the disputed domain name and since Complainant has not authorized Respondent to use its protected marks. Where no response is filed, WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). The WHOIS information of record identifies Respondent as “Albert Kruck”. See Compl., at Attached Ex. B. Additionally, lack of evidence in the record to indicate that a complainant authorized respondent to register a domain name using a complainant’s mark supports a finding that Respondent has no rights or legitimate interests in a disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the disputed domain name.
Complainant also contends that Respondent does not use the disputed domain for any bona fide offering of goods or services because Respondent attempts to fraudulently pass itself off as Complainant through emails and an identical website to phish for personal and financial information from consumers seeking Complainant’s services. Phishing schemes are not bona fide offerings of goods or services or noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or (iii). See Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Complainant shows that Respondent engages in an elaborate phishing scheme by mirroring Complainant’s webpage and using that as a basis for posting employment offers on job sites. See Compl., at Attached Exs. D–F. Respondent then sends emails to individuals to extend a fraudulent employment offer while seeking personal and financial information. See Compl., at Attached Ex. E–F. The Panel finds that Respondent’s use of the disputed domain is not a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
Complainant next argues that Respondent also does not use the <mdu-resources.com> domain name for any bona fide offering of goods or services because it attempts to pass itself off as Complainant. Passing off behavior is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> 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).”). Complainant contends that the disputed domain name resolves to a website mimicking that of Complainant. See Compl., at Attached Ex. D. Thus, the Panel finds that Respondent’s use of the disputed domain name is not a bona fide offering of goods or services and it is not a legitimate noncommercial or fair use.
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant argues that Respondent registered and uses the disputed domain name in bad faith. Respondent attempts to pass itself off as Complainant; passing off evidences bad faith registration and use per Policy 4(b)(iv). See Target Brands, Inc. v. JK Internet Servs., FA 349108 (Forum Dec. 14, 2004) (finding bad faith because the respondent not only registered Complainant’s famous TARGET mark, but “reproduced . . . Complainant’s TARGET mark . . . [and] added Complainant’s distinctive red bull’s eye [at the domain name] . . . to a point of being indistinguishable from the original.”). Complainant shows that the disputed domain name directs the user to a website exactly the same as Complainant’s own website. See Compl., at Attached Ex. D. Thus, the Panel finds that Respondent registered and uses the disputed domain in bad faith pursuant to Policy ¶ 4(b)(iv).
Additionally, Complainant argues that Respondent uses the <mdu-resources.com> domain name to fraudulently send phishing emails to Complainant’s customers seeking personal or financial information. Bad faith registration and use may be based on a respondent’s phishing scheme through fraudulent email communications. See Zoetis Inc. and Zoetis Services LLC v. VistaPrint Technologies Ltd, FA1506001623601 (Forum July 14, 2015) (“Respondent’s attempt to use the <zoietis.com> domain name to phish for personal information in fraudulent emails also constitutes bad faith pursuant to Policy ¶ 4(a)(iii).”). Complainant shows that Respondent passes itself off as Complainant by fraudulently emailing individuals offers for employment in order to obtain personal and financial information. See Compl., at Attached Ex. D-F. Thus, the Panel finds that Respondent registered and used the disputed domain in bad faith pursuant to a Policy ¶ 4(a)(iii) analysis.
Complainant lastly claims that Respondent had actual or constructive knowledge of Complainant’s mark. Bad faith is not supported by constructive notice alone under UDRP case precedent. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel here finds, however, that Complainant showed Respondent’s actual knowledge of Complainant's rights in its protected mark prior to registering the disputed domain name and actual knowledge does support findings of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). Complainant contends that Respondent must have had actual knowledge of Complainant’s Marks when it registered the <mdu-resources.com> domain name because Respondent copied Complainant’s legitimate website in its entirety. The Panel agrees and finds that Respondent had actual knowledge of Complainant’s rights in its mark, further demonstrating Respondent’s bad faith under Policy ¶ 4(a)(iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used Complainant’s protected mark in a disputed domain name in bad faith; Complainant satisfied the elements of ICANN 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 <mdu-resources.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: April 20, 2017
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page