Freeman Capital Company v. wire lord
Claim Number: FA1802001770791
Complainant is Freeman Capital Company (“Complainant”), represented by Susan Do of Freeman Capital Company, Texas, USA. Respondent is wire lord (“Respondent”), Nigeria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <freernanco.com>, registered with NameSilo, 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 7, 2018; the Forum received payment on February 7, 2018.
On February 7, 2018, NameSilo, LLC confirmed by e-mail to the Forum that the <freernanco.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 February 9, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 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@freernanco.com. Also on February 9, 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 March 6, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant, Freeman Capital Company, registered its FREEMAN mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,645,625, registered Nov. 5, 2002).
Complainant also is the registered owner of the <www.freemanco.com> and <www.freeman.com> domain names.
Respondent’s <freernanco.com> domain name is confusingly similar to Complainant’s mark because it replaces the letter “M” with letters “R” and “N” and appends the generic top-level domain (“gTLD”) “.com” to the fully incorporated mark.
Respondent does not have rights or legitimate interests in the <freernanco.com> domain name. Further, Respondent failed to use the domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent used the domain name to confuse and deceive Complainant’s customers for Respondent’s financial gain.
Respondent registered and is using the <freernanco.com> domain name in bad faith. Respondent uses the domain name to conduct a fraudulent email phishing scheme.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the FREEMAN mark as demonstrated by its registration of such mark with the USPTO.
Complainant’s rights in the FREEMAN mark existed prior to Respondent’s registration of the at-issue domain name.
Respondent uses the <freernanco.com> domain name to facilitate a phishing scheme using email from the at-issue domain name to defraud third parties.
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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of a USPTO registration for FREEMAN is sufficient to demonstrate Complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register …, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”).
Additionally, Respondent’s <freernanco.com> domain name contains Complainant’s entire AIRBNB trademark with the “m” replaced by “rn” and followed by the generic term “co” all appended with the top level domain name “.com”. The differences between the at-issue domain name and Complainant’s trademark are insufficient to distinguish one from the other for the purposes of Policy ¶ 4(a)(i). Respondent’s insertion of “rn” in place of the visually similar “m” in Complainant’s trademark does nothing to differentiate the domain name from Complainant’s trademark as the domain name, when viewed in a lowercase restricted domain name, retains acute visual similarity with the FREEMAN trademark. Further, the addition of the term “co” and necessary top-level domain name, here “com”, likewise does nothing to discourage confusing similarity between the domain name and Complainant’s trademark. In fact, the term “co”, an abbreviation for “company” and importantly a term which here mimics its use in Complainant’s official <freemanco.com> domain name adds confusion rather than diversity. Further, the addition of a necessary top-level domain name such as “.com” is generally found irrelevant to the Panel’s analysis. Therefore the Panel concludes that Respondent’s <freernanco.com> domain name is confusingly similar to Complainant’s FREEMAN trademark. See Acme Lift Company, L.L.C. v. VistaPrint Technologies Ltd, FA 1607039 (Forum Apr. 11, 2015) (stating, “Where a respondent has created a domain name in an effort to visually deceive Internet users via a simple misspelling (and when such misspellings are visually similar to the mark), a finding of confusing similarity under Policy ¶ 4(a)(i) is appropriate.”); see also 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); see also,TPI Holdings Inc. v. Michael Jay, D2009-0441 (WIPO May 25, 2009) (“[T]he Panel considers that the term ‘payments’ denotes an important component of trading or ‘trade’ which increases the chances that the domain name <payments-autotrader.com> is confusingly similar to the Complainant’s marks.”) see also 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).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent is not authorized to use Complainant’s trademark in any capacity and as discussed below there is no evidence supporting a finding pursuant to Policy 4(c) that Respondent has rights or interests in the at-issue domain name, Complainant’s prima facie showing acts conclusively.
WHOIS information for the at-issue domain name identifies the domain name’s registrant as “Wire Lord.” Notably, the record before the Panel contains no evidence that might otherwise tend to prove that Respondent is commonly known by the <freernanco.com> domain name. The Panel therefore concludes that for the purposes of Policy ¶ 4(c)(ii) Respondent is not commonly known by the at-issue 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); see also, Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Moreover, Respondent uses the domain name to facilitate a phishing scheme. Respondent, using email containing the <freernanco.com> domain name, corresponds with third parties asking them to remit payment “to our Trading Bank Account.” Using the at-issue domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (”Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”); See Microsoft Corporation v. Terrence Green / Whois Agent / Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr. 4, 2016) (finding the respondent’s use of the disputed domain names to send fraudulent emails purportedly from agents of complainant to be neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
Finally, the Panel also recognizes that the domain name was designed with the singular purpose of perpetrating fraud and thus Respondent can have no rights in the domain name given Respondent’s nefarious intent.
Given the foregoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶ 4(a)(ii).
Respondent’s <freernanco.com> domain name was registered and used in bad faith. As discussed below without limitation, Policy ¶4(b) specific bad faith circumstances are present and compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
Respondent uses the <freernanco.com> domain name to create confusion as to the sponsorship of email originating from <freernanco.com>. Respondent exploits the confusingly similar <freernanco.com> domain name to pass itself off as Complainant in furtherance of a phishing scheme where Respondent sends <freernanco.com> email to third parties and attempts to have such parties believing the emails are from Complainant remit funds to an account controlled by Respondent. Respondent has succeeded in at least one instance. Using the domain name in this manner is disruptive to Complainant’s business and shows that Respondent registered and used the at-issue domain name to trade on the goodwill garnered in Complainant’s FREEMAN trademark. Such circumstances demonstrate that Respondent has registered and used the <freernanco.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) and (iv). See Microsoft Corporation v. Terrence Green / Whois Agent / Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr. 4, 2016) (finding the Respondent’s use of the disputed domain names to send fraudulent emails supported a finding of bad faith registration and use under Policy ¶ 4(b)(iii)); see also 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 the complainant in a phishing scheme is evidence of bad faith registration and use); see also Thornburg Investment Management, Inc. v. VistaPrint Technologies Ltd, FA 1615194 (Forum May 26, 2015) (“Respondent’s registration of a domain name obviously intended to create confusion with Complainant, together with its use of that domain name in connection with a fraudulent scheme involving email messages attempting to defraud Complainant by exploiting that confusion, is indicative of bad faith under paragraph 4(b)(iv).”)
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <freernanco.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: March 8, 2018
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