StormX, Inc. v. Nikolaev Vasilii Viktorovich
Claim Number: FA1711001757340
Complainant is StormX, Inc. (“Complainant”), represented by Craig A. Beaker of Perkins Coie LLP, Washington DC, USA. Respondent is Nikolaev Vasilii Viktorovich (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <storrntoken.com>, registered with Registrar R01 LLC.
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.
Charles A. Kuechenmeister
Complainant submitted a Complaint to the Forum electronically on November 6, 2017; the Forum received payment on November 6, 2017.
On November 8, 2017, Registrar R01 LLC confirmed by e-mail to the Forum that the <storrntoken.com> domain name is registered with Registrar R01 LLC and that Respondent is the current registrant of the name. Registrar R01 LLC has verified that Respondent is bound by the Registrar R01 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 November 9, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 29, 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@storrntoken.com. Also on November 9, 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 December 6, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister 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 is a Seattle, Washington-based application publisher that drives users to engage with advertisers rewarding users with free Bitcoin and Ethereum. Although Complainant does not own trademark registrations for the STORM TOKEN mark, Complainant’s common law rights in its STORM TOKEN mark are sufficient to establish its rights in that mark, which it has used in connection with the advertising of its mobile applications since as early as July 2017. Complainant’s applications have over 1,000,000 downloads on the Android app with users across 187 countries. Printouts from its web site and social media pages, a white paper discussing its offerings, articles discussing Complainant’s products offered under the STORM marks, and printouts showing Complainant’s various apps are attached to the Complaint as exhibits.
Respondent’s <storrntoken.com> domain name (the “Domain Name”) is identical or confusingly similar to Complainant’s mark as it merely replaces the “m” in “storm” with the letters “nn,” which gives it an almost identical look to Complainant’s mark, and appends the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <storrntoken.com> domain name. He is not commonly known by the Domain Name. The WHOIS record lists “Nikolaev Vasilii Viktorovich” as registrant. Complainant has not authorized, licensed, or otherwise permitted Respondent to use the STORM TOKEN mark or any simulation or derivation thereof in the Domain Name or for any other purpose. Further, Respondent is using the Domain Name and the web site resolving from it to impersonate Complainant in a fraudulent scam to solicit personal and other information from persons who have been led by Respondent to believe they are dealing with Complainant. This is not a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use within the meaning of Policy ¶ 4(c)(iii).
Respondent registered and uses the Domain Name in bad faith. He uses it to impersonate Complainant in a phishing/fraud scheme to collect personal information and payment from Internet users looking for Complainant and its goods and services.
B. Respondent
Respondent did not submit a Response in this proceeding.
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 will 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.”).
Preliminary Issue: Language of Proceeding
The Registration Agreement is written in Russian. Under Rule 11(a), the language of the proceedings is the language of that agreement, subject to the authority of the Panel to determine otherwise, having due regard for the circumstances of the case.
Complainant has offered persuasive evidence that Respondent is conversant and proficient in the English language. The Domain Name and the web site resolving from it are entirely in English. See, Exhibit I to Complaint. Considering the circumstances of the case, the Panel concludes that the proceeding should be in English.
Although it does not currently hold a trademark registration, Complainant claims it holds common law rights in the STORM TOKEN mark. Policy ¶ 4(a)(i) does not require a complainant to own a trademark registration prior to a respondent’s registration of a domain name if it can demonstrate established common law rights in the mark. Microsoft Corpor
ation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding that “The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”). To establish common law rights in a mark, a complainant generally must prove that the mark has generated a secondary meaning. Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”). Complainant’s applications have over 1,000,000 downloads on the Android app with users across 187 countries. See, Compl. Ex. G. In addition, Complainant’s products offered under the STORM TOKEN mark have received significant media recognition. See, Compl. Ex. F. For example, Complainant provides an article showing that its initial coin offering was ranked in the top nine most anticipated ICOs by Entrepreneur Media, Inc. Id. Accordingly, the Panel finds that Complainant holds sufficient common law rights in the STORM TOKEN mark to meet the requirements of Policy ¶ 4(a)(i).
Respondent’s Domain Name is confusingly similar to Complainant’s mark. It merely replaces the “m” in “storm” with the letters “rn,”[1] which gives it an almost identical look to Complainant’s mark. Similar changes in a registered mark have failed to distinguish a domain name for the purposes of Policy ¶4(a)(i). Intelius, Inc. v. Hyn, FA 703175 (Forum July 5, 2006) (finding the <intellus.com> domain name to be confusingly similar to the complainant’s INTELIUS mark because the domain name differed from the mark by one letter and was visually similar), and Google, Inc. v. DktBot.org, FA 286993 (Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”). Further, the addition of a top level domain does not distinguish a domain name from the relevant mark. See, Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name because (i) he is not commonly known by the Domain Name, (ii) he is not affiliated with or authorized by Complainant to use Complainant’s marks in the Domain Name, and (iii) he is not using the Domain Name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or other fair use because using a domain name to impersonate a complainant cannot constitute a bona fide offering of goods and services. All three of these allegations appear to be accurate. The WHOIS identifies “Nikolaev Vasilii Viktorovich” as the registrant (Compl. Ex. A), and, as Complainant asserts, no evidence exists to show that Respondent is otherwise known by the STORM TOKEN mark. Secondly, Complainant states categorically that it has never authorized Respondent to use its STORM TOKEN mark in any domain name registration. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel.
Finally, a comparison of Exhibit D (Complainant’s web site) and Exhibit I (Respondent’s web site) demonstrates that the latter is virtually identical to the former, and that Respondent is using the Domain Name to impersonate Complainant, apparently in connection with a phishing and fraud scheme designed to confuse Internet users into believing that they are visiting Complainant’s web site. Passing off in furtherance of a fraudulent phishing scheme is not evidence of a bona fide offering of goods or services or a legitimate noncommercial or fair use. 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).”), Google Inc. v. Pritam Singh / Pandaje Technical Services Pvt Ltd., FA 1660771 (Forum March 17, 2016) (agreeing that respondent has not shown any bona fide offering of goods or services or any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii) as the respondent used the complainant’s mark and logo on a resolving web site containing offers for technical support and password recovery services, and soliciting Internet users’ personal information). On the evidence presented, the Panel finds that Respondent is using the Domain Name in an attempt to pass himself off as Complainant, potentially to phish for information. This is not a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use within the meaning of Policy ¶ 4(c)(iii).
For the reasons set forth above, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
Respondent’s passing-off behavior described above is also evidence of bad faith registration and use of the Domain Name. 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.”).
Further, Complainant has shown that Respondent registered and uses the Domain Name to engage in a phishing scheme intended to defraud users. Phishing schemes are evidence of bad faith registration and use. See Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA1506001625750 (Forum July 17, 2015) (“Respondent uses the <klabzuba-oilgas.com> domain to engage in phishing, which means Respondent registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii).”). It is evident that Respondent uses the identical webpage resolving from the Domain Name to trick users into divulging information in the belief that Respondent’s web site is somehow affiliated with Complainant’s business. Compare Compl. Ex. D (Complainant’s web site) with Compl. Ex. I (Respondent’s web site). On this evidence, the Panel finds that Respondent uses the domain name to further a phishing scheme, in bad faith.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <storrntoken.com> domain name be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
Dated: December 11, 2017
[1] Complainant alleges that the “m” in storm is replaced by the letters “nn” but the Domain Name actually replaces the “m” with the letters “rn.” This has no impact upon the outcome of the analysis.
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