Pettigo Comercio Internacional Lda v. MUHAMMAD FAISAL / FAISAL KHAN
Claim Number: FA1708001743042
Complainant is Pettigo Comercio Internacional Lda (“Complainant”), represented by Daniel Greenberg of Lexsynergy Limited, United Kingdom. Respondent is MUHAMMAD FAISAL / FAISAL KHAN (“Respondent”), Pakistan.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <lycamobilewinners.com>, <lycamobileluckydraw.com>, and <lycamobilewinner.info>, registered with GoDaddy.com, LLC.
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 August 4, 2017; the Forum received payment on August 4, 2017.
On August 8, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <lycamobilewinners.com>, <lycamobileluckydraw.com>, and <lycamobilewinner.info> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 August 14, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 5, 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@lycamobilewinners.com, postmaster@lycamobileluckydraw.com, postmaster@lycamobilewinner.info. Also on August 14, 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 September 8, 2017, 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 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
Trademark/Service Mark Information: ICANN Rule 3(b)(viii).
Complainant owns the following:
i. Community Trademark (CTM) Registration No. EU004658951 for LYCA for computer hardware and firmware; computer software for use in telecommunications; telecommunications installations, apparatus and instruments; mobile phone accessories; parts and fittings for the aforesaid; SIM cards; telephone cards in Class 9; Telephone cards; vouchers; vouchers of value in Class 16; telecommunication services; residential telecommunications services; corporate telecommunication services in Class 38, filed 27 September 2005;
ii. Community Trademark (CTM) Registration No. EU004658993 for LYCAMOBILE for Computer hardware and firmware; computer software for use in telecommunications; telecommunications installations, apparatus and instruments; mobile phone accessories; parts and fittings for the aforesaid; SIM cards; telephone cards in Class 9, Telephone cards; vouchers; vouchers of value in Class 16 and Telecommunication services; residential telecommunications services; corporate telecommunication services in Class 38 filed 27 September 2005;
iii. United States Trademark Registration No. 4248170 for LYCAMOBILE for Providing and provisioning of telecommunications services, namely, providing domestic and long distance telephone services; providing telephone services via prepaid telephone cards, telephone debit cards, SIM cards and rechargeable telephone cards in Class 38 filed 20 March 2012;
iv. Indian Trademark Registration No. 2837996 for LYCAMOBILE for Radio and television broadcasting services; Internet radio services, namely, transmission of audio material via the internet; Cellular telephone services; providing and provisioning of telecommunications services, namely, providing domestic and long distance telephone services; providing telephone services via prepaid telephone cards, telephone debit cards, SIM cards and rechargeable telephone cards; Telephone telecommunications services provided via prepaid telephone calling cards; Telephone voice messaging services; Telephone messaging services in class 38 filed 5 November 2014;
v. Pakistani Trademark Application No. 395245 for LYCAMOBILE for Telecommunication services in class 38 filed 17 August 2015;
vi. Complainant also holds registrations and applications for the LYCA trademark in numerous jurisdictions around the world, as well as trademarks incorporating the LYCA mark such as LYCAMOBILE, LYCATALK, LYCAFLY, LYCAMONEY, LYCATEL.
vii. Common law rights: see below.
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds: ICANN Rule 3(b)(ix).
Factual background:
(i) Complainant
1. Complainant is incorporated in accordance with the laws of Portugal. See an extract of Complainant’s company documents with an English translation is provided.
2. Complainant comprises two primary holding companies, WWW Holding Company Limited and Pettigo Comercio Internacional Lda., which, together, own a number of LYCA– prefixed brand names, which are legally protected by registered trademark rights (hereinafter collectively referred to as Complainant). Complainant licenses the brand names to national companies across Europe, India, Australia and the United States of America. Each local company in each active jurisdiction registers a company name using one of the LYCA pre-fixed brand names in order to trade. In the United Kingdom, for example, WWW Holding Company Limited licenses its LYCATALK and LYCATEL trademarks to Lycatel Services Ltd. Pettigo Comercio Internacional Lda. licenses its LYCAMOBILE trademark to Lycamobile UK Ltd for telecommunications services, its LYCAMONEY trademark to Lycamoney Ltd for financial services, and its LYCAFLY and LYCAHOLIDAYS trademarks to U Can Fly Limited for travel agency services. The LYCA trademark was first registered in the United Kingdom in 2002, by a company owned by the same common shareholders called at the time, Lyca Tel Limited.
3. Complainant’s telecommunications business has approximately 30 million customers across 17 countries including but not limited to United States, United Kingdom, Europe, India and Pakistan.
4. Complainant’s services are marketed online via, inter alia, the websites identified below (see a screenshot of each website and the Whois extract):
a. LYCAMOBILE.COM – operated by Lycamobile UK Limited, a mobile phone virtual network operator that provides low-cost international calls to over 30 million customers across 17 countries, including but not limited to the UK, India and Pakistan with a localized website at, LYCAMOBILE.CO.UK;
b. LYCAFLY.COM – operated by U Can Fly Limited, trading as LYCAFLY and LYCAHOLIDAYS, a wholly owned subsidiary of Complainant, and operates in the travel industry, holding licenses from IATA and ATOL, offering online flight and hotel bookings;
c. LYCAHOLIDAYS.COM – operated by U Can Fly Limited, trading as LYCAFLY and LYCAHOLIDAYS, wholly owned subsidiary of Complainant, and operates in the travel industry, holding licenses from IATA and ATOL, offering online flight and hotel bookings;
d. LYCATALK.COM – is a pin-less call service that allows the user to make international calls from landline and mobile numbers at a reduced rate. The service is operated by Lycatel Services Ltd, a wholly owned subsidiary of Complainant Company, WWW Holding Company Limited;
e. LYCAMONEY.CO.UK – operated by Lycamoney Ltd, a UK FCA licensed company, offering prepaid MasterCard credit cards to UK residents over the age of 18 years; and
f. LYCATEL.COM – operated by Lycatel Distribution UK Limited, offers prepaid international telephone calling cards.
5. Complainant has an extensive trademark portfolio for its well-known LYCA-formative trademarks, including LYCAMOBILE, LYCATALK, LYCAFLY, LYCAHOLIDAYS, LYCAMONEY, LYCATEL and LYCA PRODUCTIONS as mentioned above.
6. Complainant has also registered numerous domain names that are identical to and/or incorporate its trademarks mentioned above and including the LYCA- formative either in Complainant’s name or through one of its subsidiaries. A list of its earliest domain name registrations is listed in the Complaint with a Whois extract.
7. The first website archive recorded for Lycamobile.com is 3 November 2005 and for Lycamobile.co.uk is 26 October 2007.
8. Complainant’s websites generate a large volume of visits per year. The total number of visits for each website between in recent years is listed in a table in the Complaint.
9. Complainant’s licensee, Lycamobile UK Limited’s revenue for the last eight years is listed in a table included in the Complaint.
10. Complainant has, since 2006, generated substantial amounts of press coverage.
11. Complainant also issues regular press.
12. Complainant’s LYCA telecommunication products and/or services are well-known in the UK and globally by virtue of its extensive marketing and sponsorship campaigns over the last 8 years. Complainant spent approximately £2,000,000 on marketing between 2008 to 2016 and has included the following marketing activities and sponsorships using the LYCA and/or LYCAMOBILE mark as well as other marks incorporating the LYCA series of marks:
a. sponsoring the London Mela 2016, a festival inspired by South Asia and its population within the UK and Europe;
b. Donating money to Cambridge University to support public health in Sri Lanka;
c. Hosting events to aid charity such as the Save the Children’s Christmas Jumper Day;
d. Sponsoring England v India cricket matches;
e. Sponsoring the Wendelin’s 10km Charity Walk;
f. Sponsoring the Gift of Life Adventure Drive
g. Sponsoring the Chance to Shine Street organization, UK,
h. Sponsoring the Powerboat P1, the world’s leading marine motorsport brand;
i. Sponsoring Premier league football club West Ham United; and
j. Partnering with the University of East London to sponsor sports and sports kits for 26 sports teams.
13. Complainant’s rapid growth has resulted in the addition of new products and service offerings to the UK and international markets. Each new product and/or service is branded according to Complainant’s naming convention, which is the distinctive mark LYCA, allied to a descriptor such as “MOBILE” and “TALK” to form LYCAMOBILE and LYCATALK. The consistency of the naming convention allows clients to identify each new product and/or service as originating or controlled by Complainant.
(ii) Respondent
14. The Domains were registered on the following dates:
a. lycamobilewinners.com – 10 August 2016;
b. lycamobileluckydraw.com – 2 February 2017; and
c. lycamobilewinner.info – 8 February 2017.
15. Lycamobilewinners.com was registered using a Whois privacy service. A Whois privacy service allows a domain name registrant to conceal its identity on the Whois by using third party information.
16. On 3 February 2017, the Registrar, upon Complainant’s representative request, disclosed Whois information behind lycamobilewinners.com revealing the 2nd Respondent as the registrant. Complainant regards the First Respondent as an alias for the Second Respondent and therefore the same person, hereinafter collectively referred to as Respondent.
17. Respondent has engaged in phishing activities, using the Domains to set-up fraudulent competition/lottery websites (“Websites”). The Websites created the impression that Complainant was holding a lottery draw at their head office encouraging unsuspecting customers to participate in the lottery by calling a telephone number or checking the status of the draw on one of the Websites. This engagement would then allow Respondent to engage in Phishing activities. Phishing is a way of attempting to gain access to sensitive information such as passwords and usernames by masquerading as a trustworthy entity.
18. Between the 3 February 2017 and 8 February 2017, Complainant’s representatives were in communications with the host and registrar in an attempt to take down the phishing website.
19. On 8 February 2017, the website at lycamobilewinners.com was taken down.
20. Subsequently, a cease and desist and chasers were dispatched to Respondent in an attempt to negotiate a transfer prior to filing a UDRP complaint. No response was received.
21. On 3 July 2017, Complainant’s representative was made aware of the website at lycamobileluyckdraw.com. The website at this domain name was also taken down.
22. Whilst preparing the complaint, on 12 July 2017, a reverse Whois search on Respondent’s email address highlighted that the domain lycamobilewinner.info was also registered to Respondent.
[a.] The manner in which the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights. ICANN Rule 3(b)(ix)(1); ICANN Policy 4(a)(i).
(i) Rights
23. Complainant relies on its registered trademarks referred to above.
24. Complainant also relies on common law rights. By virtue of its extensive use of the LYCA trademark and the marks LYCAMOBILE, LYCATALK, LYCAFLY, and LYCATEL mentioned above, and of the considerable time, money and effort which Complainant has expended promoting and establishing its trademarks.
25. Complainant has acquired a substantial reputation and goodwill in the mark LYCA as well as LYCAMOBILE and its family of trademarks such that it is recognized by the public as distinctive of Complainant’s products and services.
26. Complainant also relies on the fact that, as explained below, Respondent clearly set out to target and defraud Complainant and its customers. Such activity by Respondent presupposes that Complainant’s business was known and identified by the name and mark LYCA and LYCAMOBILE.
27. Complainant owns a so-called “family” of LYCA-formative marks comprising at least LYCA, LYCAMOBILE, LYCATALK, LYCAFLY, LYCAMONEY, LYCATEL and LYCA PRODUCTIONS. Panels have consistently recognized complainants’ family of marks in establishing a complainant’s prior rights as well as the fame or renown of the common formative(s). See, e.g., Merck Sharp & Dohme Corp. v. Egidio Colecchia, Case No. D2011-0283; Fleetboston Financial Corporation v. JFK Holdings, Inc., Case No. D2000-1352.
28. Complainant’s trademark rights in LYCA and its family of LYCA formative marks has previously been established in the following UDRP complaints in which the Complaint recovered lycamovie.com and lycaradio.com:
a. Pettigo Comercio Internacional Lda v ****** ***** / study, FA1507001627362 (Forum, Aug. 2, 2015); and
b. Pettigo Comercio Internacional Lda v. Siju Puthanveettil, FA 1501001600741 (Forum Feb. 18, 2015);
(ii) Identical or Confusing Similarity
29. The Domains are confusingly similar to Complainant’s LYCAMOBILE and LYCA trademarks.
30. The relevant part of the Domains is LYCAMOBILE. The addition of the descriptive suffixed words “winners”, “winner” and “luckydraw” in the Domains imply that Complainant is/was running some sort of competition/draw and that there have been winners in the past. The addition of the said generic and descriptive word adds to the confusion that Respondent is Complainant in order to perpetuate its Phishing activities. The term “LYCAMOBILE” remains the dominant feature of the Domains. See, eg, Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy paragraph 4(a)(i) was satisfied).
31. Furthermore, Respondent’s addition of the generic top-level domain (“gTLD”) “.com” and “.info” to the Domains does not distinguish the Domains from Complainant’s mark. This was stated in, among others, the case concerning the domain name <rbs-online-uk.com> in The Royal Bank of Scotland Group plc v. PrivacyProtect.org c/o Domain Admin, FA1126039. (Forum 14 February 2008).
[b.] Respondent has no rights or legitimate interests in respect of the domain name that is the subject of the complaint. ICANN Rule 3(b)(ix)(2); ICANN Policy 4(a)(ii).
32. Complainant asserts that, for the reasons stated below, it has made a prima facie case that Respondent should be considered as having no rights or legitimate interests in the Domains and that the burden now shifts to Respondent. See G.D. Searle v. Martin Mktg., 118277 (Forum, Oct. 23, 2002) (where complainant has asserted that respondent has no rights or legitimate interests it was incumbent on respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of Respondent”).
33. Dealing with each of the subparagraphs of paragraph 4 (c) of the ICANN policy in turn:
(i.) Whether, before any notice to Respondent of the dispute, Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name is in connection with a bona fide offering of goods or services; or
34. Complainant has no association with Respondent and has never authorized or licensed Respondent to use its trademarks.
35. Respondent has clearly registered and used the Domains to attract, profit from and defraud Complainant’s customers – see the submissions in relation to bad faith below. Such use of the Domains could not be said to be “bona fide”.
(ii.) Whether Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if Respondent has not acquired trademark or service mark rights; or
36. There is no evidence that Respondent has been commonly known by the name comprised of the Domains.
37. Having registered lycamobilewinners.com under a Whois privacy service, it is not possible for Respondent to be known by the Domains.
38. Moreover, insofar as Complainant owns an existing and growing family of LYCA-formative marks dating back to 2005, it is clear that any domain that combines the distinctive element “LYCAMOBILE with a less distinctive element/descriptive word would be associated with Complainant, not Respondent.
(iii.) Whether Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
39. The main reason for Respondent’s registration of the Domains was for phishing, commercial gain and/or to potentially tarnish Complainants’ reputation and trademark.
[c.] The domain name should be considered as having been registered and being used in bad faith. ICANN Rule 3(b)(ix)(3); ICANN Policy 4(a)(iii).
40. Complainant relies on paragraph 4b (ii), (iv) and (v) of the Policy:
4b(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
41. Respondent has registered approximately 20 domain names most of which are confusingly similar to well-known Telecom related trademarks each associated with a similar phishing draw/lottery or winner website. The table in the Complaint lists a sample of the infringing domain names registered by Respondent (left column) and the legitimate domain name owned by the trademark owner (right column), with the Whois extract and corresponding trademark.
42. It is apparent from that table that Respondent has sought to register domain names that match well-known trademarks for fraudulent purposes and ultimately unlawful commercial gain.
43. There is no apparent reason why Respondent would have registered 20 domain names targeting established telecom companies, some of which match well-known trademarks, other than to engage in phishing activities (which Respondent has done) or to sell the domain names to trademark holders for a significant profit.
4b(iv.) Whether by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s web site or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of a product or service on Respondent’s web site or location.
44. Respondent’s websites at the Domains have been used for a fraudulent competition/lottery page, which undoubtedly was a scheme to obtain confidential and personal information via the act of phishing. The websites were advertising that Lycamobile was holding a lottery draw at their head office, the website also contains a list of fictitious individuals that had apparently won the draw on previous occasions, which is not the case. This is a scheme by Respondent to harvest personal details including banking details to defraud Complainant’s customers financially.
(v) Other factors
45. Complainant relies on 4b (v) of the Policy, namely additional factors establishing bad faith. See Nike, Inc. v. Azumano Travel D2000-1598 (WIPO Feb. 17, 2001) “The four criteria set forth in the Policy paragraph 4(b) are nonexclusive. Telstra Corporation Limited v. Nuclear Marshmellows, WIPO Case No. D2000-0003. In addition to these criteria, other factors alone or in combination can support a finding of bad faith.”
46. The LYCA-formative (family) trademarks are well-known Internationally and within Asia including Pakistan (where, according to the Whois, Respondent is located). Respondent used Complainants notoriety to perpetuate its fraudulent activities, which included imagery of Complainant’s, its employees and manipulating such images to appear relevant to the fraud. The Domains in this case “are so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith.” (Venuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., Case No. D2000-0163 (WIPO, 1 May 2000).
47. Furthermore, Respondent had used Complainant’s copyrighted images from one of Complainant’s charity fund raising pages with the intention to create confusion that the website is associated with, endorsed, authorized and/or is part of Complainant’s business.
48. For the above reasons, it is clear that Respondent used the Domains in bad faith.
49. Actual or Constructive Knowledge – see Nike, Inc. v. Azumano Travel D2000-1598 (WIPO Feb. 17, 2001) “A second factor found to support a finding of bad faith is Respondent’s knowledge of Complainant’s mark. Respondent registered the "nikesportstravel.com" and "niketravelcom" Domain Names on May 14, 1999, long after Nike registered the NIKE mark. Respondent had substantial constructive notice of the NIKE mark, as a trademark search on the date of the registration of the Domain Names would have revealed Nike’s registrations of the NIKE mark in the United States. Nike’s trademark registration for the NIKE mark in the United States issued well before Respondent registered the Domain Names. Actual or constructive knowledge of Complainant’s rights in the Trademarks is a factor supporting bad faith. See Expedia, Inc. v. European Travel Network, D2000-0137 (WIPO April 18, 2000); Document Technologies v. International Electronic Communications, Inc., D2000-0270 (WIPO June 6, 2000), (Respondent’s knowledge of complainant’s mark at the time of registration of the domain name suggests bad faith)” The same applies to this Complaint as it is clear that Respondent had Complainant and its business in mind when registering the Domains.
50. Complainant’s trademark rights in its family of LYCA-formative pre-date the Domain registration by more than 10 years and at the very least 1 year within Pakistan.
51. The Domains were registered in a manner that, at the time the registration took place, took unfair advantage of and was unfairly detrimental to Complainant’s rights.
52. It is inconceivable that Respondent intended to operate a genuine business with (or had any other genuine reason to use) the Domains which comprised a well-known trademark with a company designation used by Complainant to operate its business.
53. Use of Entire Mark Without Plausible Good Faith Use – Another factor is the use of Complainant’s entire mark in the Domain, thus making it difficult to infer a legitimate use of the Domain by Respondent. See Cellular One Group v. Paul Brien,D2000-0028 (WIPO March 10, 2000), “Complainant filed a WIPO complaint against the Registrant of the domain name "cellularonechina.com". The Panel inferred bad faith use of "cellularonechina.com", because the domain name included Complainant’s entire trademark. In light of Cellular One’s trademark registrations and applications, "it is not possible to conceive of a plausible circumstance in which Respondent could legitimately use the domain name." The same holds true in this instance by including the trademark LYCAMOBILE.
54. Mobile and Telecom operators are frequently targeted by cybersquatters, typosquatters and scammers who have the intention to defraud the company as well as its customers. Respondent, in this instance, could be using the Domains to send phishing related communications to Complainant’s customers, ultimately tarnishing Complainant’s trademarks and business.
55. Respondent has taken deliberate steps to ensure that its true identity could not be determined through the use of a Whois privacy service for one of the Domains, which further proves bad faith on the part of Respondent and is intended to frustrate the recovery process.
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 cancelling 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.
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 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 registered its LYCAMOBILE mark with the USPTO (Reg. No. 1,116,825, Nov. 27, 2012) and the European Union (Registration No. EU004658951). Registration with the USPTO and the European Union (or any other governmental authority for that matter) suffices to demonstrate rights in a mark under Policy ¶4(a)(i), even if Respondent is in another country. 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). Complainant has rights in the LYCAMOBILE marks under Policy ¶4(a)(i).
Respondent’s <lycamobilewinners.com>, <lycamobileluckydraw.com>, and <lycamobilewinner.info> domain names are confusingly similar to Complainant’s mark because each appends generic terms including “winner,” “winners,” or “lucky draw,” as well as the gTLDs “.com” or “.info.” A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. Adding generic terms does not sufficiently distinguish a domain name to negate a finding of confusingly similarity under a Policy ¶4(a)(i) analysis. See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶4(a)(i).); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). The disputed domain names are confusingly similar to Complainant’s LYCAMOBILE mark.
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 names 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 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 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 does not have rights or legitimate interests in the disputed domain names. Complainant has not licensed or otherwise authorized Respondent to use its LYCAMOBILE mark in any fashion. The absence of contradicting evidence in the record showing a respondent was authorized to use a complainant’s mark in a domain name can be sufficient evidence of a lack of rights and legitimate interests. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that Respondent was not commonly known by the disputed domain name where Complainant had never authorized Respondent to incorporate its NAVISTAR mark in any domain name registration). Respondent is not commonly known by any of the disputed domain names within the meaning of Policy ¶4(c)(ii). Absent information in the record to the contrary, the WHOIS information and common sense allow the Panel to decide Respondent is not commonly known by the domain name. See Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that Respondent was not commonly known by the <guardair.com> domain name according to Policy ¶4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). There is no obvious relationship between either the privacy service name nor the “disclosed” name with the disputed domain names.
Respondent initially registered the disputed domains using a privacy service. This means Respondent has not taken any action to publicly associate itself with the domain names. Therefore, Respondent has not acquired any rights in the disputed domains simply by registering them. Respondent is not commonly known by any of the disputed domain names pursuant to Policy ¶4(c)(ii).
Complainant claims Respondent has registered the domain names as part of a phishing scheme. A respondent’s use of a disputed domain name to phish for Internet users’ personal information cannot be construed as a bona fide offering of goods or services or legitimate noncommercial or fair use pursuant to Policy ¶4(a)(ii), 4(c)(i) and (iii). See Morgan Stanley v. Zhange Sheng Xu / Zhang Sheng Xu, FA1501001600534 (Forum Feb. 26, 2015) (“The Panel agrees that Respondent’s apparent phishing attempt provides further indication that Respondent lacks any rights or legitimate interests in the disputed domain name under Policy ¶4(a)(ii).”). Complainant provided screenshots of the disputed domain names’ resolving websites. Respondent attempts to pass itself off as Complainant through the use of its LYCAMOBILE marks for the purpose of luring internet users into participating in a fraudulent lottery scheme. Respondent is attempting to impersonate Complainant for the purpose of phishing for Internet users’ information. Using the disputed domain names for a phishing scheme violates Policy ¶4(a)(ii), ¶4(c)(i), and ¶4(c)(iii).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent has engaged in a pattern of bad faith domain name registrations. Respondent has registered three domains that infringe upon Complainant’s LYCAMOBILE mark. Respondent has registered approximately 20 other domain names that infringe on other companies active in the technology industry. See Microsoft Corporation and Skype v. zhong biao zhang / Unknown company / zhong zhang, FA1401001538218 (Forum Feb. 20, 2014) (holding that Respondent’s registration of three domain names incorporating variants of Complainant’s SKYPE mark reflected a pattern of bad faith registration under Policy ¶4(b)(ii)); see also Philip Morris USA Inc. v. RapidClic / VAUCLIN Olivier, FA1309001520008 (Forum Nov. 7, 2013) (finding that Respondent’s registration of multiple infringing domain names indicates a pattern of bad faith registration and use under Policy ¶4(b)(ii)). Policy ¶4(b)(ii) provides “[Respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [Respondent has] engaged in a pattern of such conduct.” Respondent has not prevented Complainant from reflecting its mark in a domain name because Complainant owns the lycamobile.com and lycamobile.us domain names (either directly or through its subsidiaries). Therefore, Policy ¶4(b)(ii) has not been violated.
However, this action shows Respondent’s business model. Respondent clearly violates the penumbra of Policy ¶4(b) because Respondent regularly registers the trademarks of others (or domain names which are confusingly similar to the trademarks of towers), see Philip Morris USA INC. v. Muhammad Faisal, Claim Number: FA1706001737748 (July 31, 2017). Therefore, this Panel finds bad faith registration and use on that basis.
Complainant claims Respondent has registered and is using the disputed domain names in bad faith under Policy ¶4(b)(iv) by attempting to attract Internet traffic and commercially benefit from the goodwill of the LYCAMOBILE mark. Using a disputed domain name to create confusion as to the source, sponsorship, affiliation or endorsement of its content constitutes bad faith under Policy ¶4(b)(iv). See Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”). Respondent has created confusion among users and therefore registered and used the domain name in bad faith under Policy ¶4(b)(iv).
Complainant claims Respondent is using the disputed domain name in connection with a phishing scheme. Phishing for Internet user’s information under the guise of a complainant is evidence of bad faith under Policy ¶4(a)(iii). See Qatalyst Partners LP v. Devimore, FA 1393436 (Forum July 13, 2011) (finding that using the disputed domain name as an e-mail address to pass itself off as Complainant in a phishing scheme is evidence of bad faith registration and use). Complainant has provided screenshots of the disputed domain names’ resolving websites which lure Internet users into providing person information through a fraudulent lottery opportunity. Respondent engaged in a phishing scheme and, therefore, acted in bad faith under Policy ¶4(a)(iii).
Complainant claims it is inconceivable Respondent could have registered the disputed domain names without actual knowledge of Complainant’s rights in the LYCAMOBILE mark in light of the fame and notoriety of Complainant’s mark. A respondent has actual knowledge of a complainant’s rights in a mark when a complainant’s mark is famous. See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum March 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶4(a)(iii).”). Complainant’s LYCAMOBILE mark has significant goodwill and consumer recognition around the world and has been in use by Complainant since 2002. Respondent had actual knowledge of Complainant’s rights when the disputed domain names were registered and subsequently used due to the fame of Complainant’s mark and the use of the domains.
Finally, Respondent registered the domain names using a privacy service. In the commercial context, this raises the rebuttable presumption of bad faith registration and use. Respondent has done nothing to rebut this presumption. Therefore, the Panel finds bad faith registration and use for this reason.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <lycamobilewinners.com>, <lycamobileluckydraw.com>, and <lycamobilewinner.info> domain names be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, September 18, 2017
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