Fuente Marketing Ltd. v. Diana Markley
Claim Number: FA1805001784567
Complainant is Fuente Marketing Ltd. (“Complainant”), represented by Virginia L. Carron of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., Georgia, USA. Respondent is Diana Markley (“Respondent”), Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fuenteholding.com>, registered with Wild West Domains, 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 May 1, 2018; the Forum received payment on May 1, 2018.
On May 2, 2018, Wild West Domains, LLC confirmed by e-mail to the Forum that the <fuenteholding.com> domain name is registered with Wild West Domains, LLC and that Respondent is the current registrant of the name. Wild West Domains, LLC has verified that Respondent is bound by the Wild West Domains, 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 May 2, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 22, 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@fuenteholding.com. Also on May 2, 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 May 29, 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, Fuente Marketing Ltd., owns Fuente Cigar which is one of the largest premium hand-rolled cigar companies in the world. Complainant uses the A. FUENTE and FUENTE marks to provide and market its products.
Complainant claims rights in the A. FUENTE mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,213,858 registered on Dec. 29, 1998). Complainant claims rights in the FUENTE mark based upon registration with the USPTO (Reg. No. 3,156,873, registered Oct. 17, 2006).
Respondent’s <fuenteholding.com> domain name is confusingly similar to Complainant’s A. FUENTE mark as it incorporates the mark in its entirety, omitting only the “A” and, adding the generic term “holding”, and the generic top level domain (“gTLD”) “.com.”
Respondent’s <fuenteholding.com> domain name is confusingly similar to Complainant’s FUENTE mark as it incorporates the mark in its entirety before appending the generic term “holding” and the “.com” gTLD.
Respondent does not have rights or legitimate interests in the <fuenteholding.com> domain name. Respondent is not commonly known by the domain name and Complainant has not granted Respondent permission or license to use the FUENTE or A. FUENTE marks for any purpose. Respondent is not using the at-issue domain name to make a bona fide offering of goods or services or for a legitimate non-commercial or fair use. Rather, Respondent uses the <fuenteholding.com> domain name to impersonate Complainant to conduct a fraudulent phishing scheme.
Respondent has registered and used the <fuenteholding.com> domain name in bad faith. Respondent attempts to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the web site or location of a product or service on Respondent’s website or location. In addition, Respondent uses the <fuenteholding.com> domain name to conduct a fraudulent phishing scheme. Further, Respondent uses a privacy service to conceal its identity. Finally, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the A. FUENTE and FUENTE marks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the FUENTE mark as demonstrated by its registration of such mark with the USPTO.
Complainant’s rights in the FUENTE mark existed prior to Respondent’s registration of the at-issue domain name.
Respondent uses the <fuenteholding.com> domain name as part of a phishing scheme.
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 FUENTE trademark registration for FUENTE demonstrates that Complainant has rights in such mark under Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)).
Respondent’s <fuenteholding.com> domain name contains Complainant’s FUENTE trademark followed by the term “holding” with the top-level domain name “.com” appended thereto. The differences between Complainant’s trademark and the <fuenteholding.com> domain name fail to distinguish the domain name from Complainant’s mark for the purpose of Policy ¶ 4(a)(i). In fact the inclusion of the term “holding” in the domain name is somewhat suggestive of Complainant’s business which might be characterized as a trademark “holding” company. Incorporating the term “holding” into the at-issue domain name thus only adds to any confusion resulting from the inclusion of Complainant’s FUENTE trademark in Respondent’s <fuenteholding.com> domain name. Therefore, the Panel concludes that Respondent’s <fuenteholding.com> domain name is confusingly similar to Complainant’s FUENTE trademark. See Traditional Medicinals, Inc. v. Flippa Chick, FA1006001328702 (Forum July 15, 2010) (“Respondent’s disputed domain name contains Complainant’s SMOOTH MOVE mark in its entirety after removing the space separating the terms of the mark, adds the descriptive terms “herbal tea” and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of descriptive terms creates a confusing similarity between the disputed domain name and Complainant’s mark.”); 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 failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
After uncloaking, WHOIS information for the at-issue domain name identifies the domain name’s registrant as “Diana Markley.” Notably, the record before the Panel contains no evidence that otherwise tends to prove that Respondent is commonly known by the <fuenteholding.com> domain name. The Panel therefore concludes that Respondent is not commonly known by the <fuenteholding.com> domain name for the purposes of Policy ¶ 4(c)(ii). 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, Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same).
Additionally, Respondent uses its <fuenteholding.com> domain name to facilitate a phishing scheme.” Respondent sent emails originating from <fuenteholding.com> posing as an employee of Complainant’s in an attempt to misappropriate funds from one of Complainant’s customers. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4 (c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii See Lockheed Martin Corporation v. mail mail, FA1707001739473 (Forum, Aug. 9, 2017) (“Respondent does not use the <lm-corporation.com> domain name for any legitimate purpose because Respondent uses it to fraudulently obtain valuable and highly sensitive government contracts. Using a confusingly similar domain name to fraudulently obtain information or money fails to constitute a bona fide offering of goods or services or legitimate noncommercial or fair use”); see also 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)).
Given the forgoing, 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 under Policy ¶4(a)(ii).
The at-issue domain name was registered and is being used in bad faith. As discussed below Policy ¶ 4(b) bad faith circumstances are present and there is additional non-Policy ¶ 4(b) evidence from which the Panel may independently conclude that Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii).
As mentioned above regarding rights and interests, Respondent registered and is using its <fuenteholding.com> domain name to facilitate a phishing scheme. Respondent sent email from the at-issue domain name to one of Complainant’s customers. Therein Respondent posed as an employee of Complainant. The email falsely claimed that Complainant sought to “direct all large cash inflow” to a purported “investment in China/Hong Kong” and contained real invoice numbers to aid in Respondent’s charade. Respondent, passing itself off as Complainant, continued to engage in an email dialog with Complainant’s customer to in furtherance of its fraudulent scheme. Respondent’s use of the at-issue domain name in this manner shows Respondent’s bad faith per 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 the complainant in a phishing scheme is evidence of bad faith registration and use per Policy ¶ 4(b)(iv)); see also, V.F. Corporation v. Kyle Greig, FA 1309001517896 (Forum October 11, 2013) (The same behavior, called “phishing,” which makes clear that Respondent has no rights to or legitimate interests in the <vfcorp.org> domain name also shows that Respondent both registered and uses the domain name in bad faith).
Further, Respondent’s behavior is disruptive to Complainant’s business and therefore demonstrates Respondent’s bad faith under Policy ¶ 4(b)(iii), and the confusion as to the source and sponsorship of the <fuenteholding.com> based email indicates bad faith under Policy ¶ 4(a)(iv). See Textron Innovations Inc. v. DENNIS BROOKS, FA 1667443 (Forum May 4, 2016) (“The Panel finds that phishing, in any form, is adequately disruptive, and finds that Respondent uses the <textron-incorporated.com> domain name in bad faith under Policy ¶ 4(b)(iii).”); see also, Eastman Chemical Company v. Amnon Jakony, FA 1681860 (Forum July 31, 2016) (“Respondent’s use of the <eastmanindustries.net> domain to pass itself off as Complainant shows that Respondent has attempted to commercially benefit—unfairly and opportunistically—from the goodwill associated with Complainant’s EASTMAN trademark. Therefore, the evidence demonstrates Respondent’s bad faith under Policy ¶ 4(b)(iv).”);
Finally, Respondent had actual knowledge of Complainant’s rights in the FUENTE mark when it registered the <fuenteholding.com> domain name. Respondent’s actual knowledge is, without limitation, evident from Respondent’s use of the domain name to pose as Complainant in furtherance of a phishing scheme. Respondent’s actual knowledge is also evident from the notoriety of Complainant’s trademark. Registering and using a confusingly similar domain name with knowledge of Complainant’s rights in such domain name shows bad faith registration and use pursuant to Policy ¶4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); see also, 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <fuenteholding.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: May 30, 2018
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