MDU Resources Group, Inc. v. Domain Admin / Whois Privacy Corp.
Claim Number: FA1801001765410
Complainant is MDU Resources Group, Inc. (“Complainant”), represented by Holly M. Simpkins of Perkins Coie LLP, Washington, USA. Respondent is Domain Admin / Whois Privacy Corp. (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kniferivers.com> (‘the Domain Name’) , registered with Internet Domain Service BS Corp.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 3, 2018; the Forum received payment on January 3, 2018.
On Jan 05, 2018, Internet Domain Service BS Corp confirmed by e-mail to the Forum that the Domain Name is registered with Internet Domain Service BS Corp and that Respondent is the current registrant of the name. Internet Domain Service BS Corp has verified that Respondent is bound by the Internet Domain Service BS Corp 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 January 12, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 1, 2018 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@kniferivers.com. Also on January 12, 2018, 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 February 7, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne 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’s contentions can be summarised as follows:
Complainant is the owner of both a registration for the trade mark KNIFE RIVER and a registration for its KNIFE RIVER name registered in logo form, both in the United States with first use recorded as 2007 for, inter alia, construction materials.
The Domain Name registered in 2017 is confusingly similar to Complainant’s KNIFE RIVER trade mark wholly incorporating it, merely adding an ‘s’ and the top level domain .com.
Respondent does not hold trade mark registrations relating to the KNIFE RIVER mark. Complainant has never authorised Respondent’s use of the KNIFE RIVER mark. Respondent is ‘Thomas Moore’ and is not commonly known by the Domain Name.
The Domain Name has been used to impersonate an employee of Knife River Corporation, one of the companies in Complainant’s group, and to send phishing e mails which contain the KNIFE RIVER name and logo.
The Domain Name is not attached to an active web site, but results in an ‘error’. Respondent is the owner of 43 other domains that result in the same error.
Respondent’s clear attempt to impersonate and suggest a false association with Complainant is sufficient evidence to demonstrate that a registrant lacks rights or legitimate interests in the Domain Name.
The use made by Respondent of the Domain Name is neither a bona fide offering of goods and services nor a legitimate non commercial or fair use.
Respondent’s use of the Domain Name in a phishing scam and for an inactive web site clearly evidences bad faith. The nature of the use in the phishing scam shows Respondent had actual knowledge of Complainant and its business.
Adding only an ‘s’ to the Domain Name is typosquatting, which is bad faith registration and use in itself.
Complainant is the owner of a registration for the trade mark KNIFE RIVER and a further registration for its KNIFE RIVER name registered in logo form, both in the United States with first use recorded as 2007 for, inter alia, construction materials.
The Domain Name has been used to impersonate an employee of Knife River Corporation one of the companies in Complainant’s group and to send phishing e mails which contain the KNIFE RIVER name and logo.
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 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
The Domain Name consists of Complainant’s KNIFE RIVER trade mark (registered in the USA for, inter alia, construction materials with first use recorded as 2007), the additional letter ‘s’ and the gTLD .com. Adding one letter ‘s’ to Complainant’s KNIFE RIVER registered mark does not distinguish the Domain Name from that mark. See Path Advantage Associated v Vista Print Technologies Ltd, FA 1625731 (Forum July 23, 2015) (holding that the path advantages.com domain name was confusingly similar to the PATH ADVANTAGE trade mark because the domain name merely adds an ‘s’ to Complainant’s mark)
The gTLD .com does not serve to distinguish the Domain Name from the KNIFE RIVER mark, which is the distinctive component of the Domain Name. See Red Hat Inc v Haecke FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name was identical to Complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, with the additional ‘s’ the Panel holds that the Domain Name is confusingly similar for the purpose of the Policy to a mark in which Complainant has rights.
Rights or Legitimate Interests
Complainant has not authorised the use of its mark. Respondent has not answered this Complaint and there is no evidence or reason to suggest Respondent is, in fact. commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 17, 2014) (holding that Respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that Complainant had not licensed or authorized Respondent to use its ALASKA AIRLINES mark).
The Domain Name has been used in a fraudulent e mail phishing scheme using the KNIFE RIVER name and logo. This is deceptive and confusing and amounts to passing off. As such it cannot amount to the bona fide offering of goods and services or a legitimate non commercial or fair use. (See DaVita Inc. v Cynthia Rochelo FA 1738034 (Forum July 20, 2017) finding that ‘Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate non commercial or fair use’)
As such the Panel finds that Respondent does not have rights or legitimate interests in the Domain Name and that Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
Impersonating a complainant by use of a complainant’s mark in a fraudulent e mail scam is disruptive and evinces bad faith registration and use. See Microsoft Corporation v Terrence Green/ Whois Agent/Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr 4 2016)(finding that respondent’s use of the disputed domain name to send fraudulent e mails constituted bad faith registration and use pursuant to Policy 4 (b)(iii). ) Typosquatting itself is also evidence of relevant disruptive bad faith registration and use. See Diners Club int'l Ltd. v Domain Admin ****** It's all in the name ******, FA 156839 (Forum June 23, 2003).
Further, in the opinion of the Panel the use made of the Domain Name in relation to an e mail phishing scam is confusing in that recipients of the e mails will reasonably believe those e mails are connected to or approved by Complainant as the KNIFE RIVER name and logo are used. This mimicking by Respondent of Complainant shows that Respondent was aware of Complainant and its business and rights and constitutes passing off. Accordingly, the Panel holds that Respondent has intentionally attempted to attract for commercial gain Internet users by creating a likelihood of confusion with Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of electronic content on the Internet under Policy 4 (b)(iv). See Qatalyst Partners L.P. v Devinmore, FA 1393436 (Forum July 13, 2011)(finding that using the disputed domain name as an e mail address to pass off as Complainant in a phishing scheme is evidence of bad faith registration and use under 4 (b)(iv) of the Policy).
As such, the Panel believes that Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under para 4(b)(iii) and 4 (b)(iv). There is no need to consider any additional grounds of bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <kniferivers.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: February 20, 2018
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