DECISION

 

National Geographic Partners LLC v. Douglas Chadwick / Rob Hernandez

Claim Number: FA1805001785643

PARTIES

Complainant is National Geographic Partners LLC (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, District of Columbia, USA. Respondent is Douglas Chadwick / Rob Hernandez (“Respondent”), Virginia, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <natgeowildlifephotographer.com>, <natgeowildlifeexpeditions.com>, registered with GoDaddy.com, LLC; and PDR Ltd. d/b/a PublicDomainRegistry.com, respectively.

 

PANEL

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on May 8, 2018; the Forum received payment on May 8, 2018.

 

On May 10, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <natgeowildlifephotographer.com> domain name is registered with GoDaddy.com, LLC, and that Respondent is the current registrant of the name. On May 11, 2018, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <natgeowildlifeexpeditions.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. GoDaddy.com, LLC and PDR Ltd. d/b/a PublicDomainRegistry.com have verified that Respondent is bound by the respective registration agreements 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 16, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 5, 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@natgeowildlifephotographer.com and postmaster@natgeowildlifeexpeditions.com.  Also on May 16, 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 June 8, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.   Complainant:

1.    Complainant, National Geographic Partners LLC, offers a wide array of entertainment and educational services and products in the fields of science, adventure, and exploration. Complainant uses its NAT GEO mark in connection with its products and services and claims rights therein based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,911,959, registered on Jan. 25, 2011). See Amend. Compl. Ex. 9. Respondent’s <natgeowildlifephotographer.com> and <natgeowildlifeexpeditions.com> domain names are confusingly similar to Complainant’s NAT GEO mark, as in creating each domain name, Respondent incorporated the mark in its entirety, less the space, and added the descriptive terms “wildlife”, “photographer”, and/or “expeditions” along with the “.com” generic top-level domain (“gTLD”).

2.    Respondent has no rights or legitimate interests in the <natgeowildlifephotographer.com> or <natgeowildlifeexpeditions.com> domain names. Respondent is not permitted or licensed to use Complainant’s NAT GEO mark and is not commonly known by the disputed domain names. Additionally, Respondent is not using the disputed domain names to make a bona fide offering of goods or services or a legitimate non-commercial or fair use. Rather, Respondent uses the names to pass off as Complainant to in attempt to phish for users’ personal information.

3.    Respondent has registered and is using the <natgeowildlifephotographer.com> and <natgeowildlifeexpeditions.com> domain names in bad faith. Respondent uses the disputed domain names to disrupt Complainant’s business. Respondent intentionally attempts to attract users, presumably for commercial gain, and pass off as Complainant at the disputed domain names. In addition, Respondent fails to make an active use of the disputed domain names. Finally, Respondent registered the disputed domain names with actual knowledge of Complainant’s rights in the NAT GEO mark prior to registration.

 

A.   Respondent:

1.    Respondent failed to submit a Response in this proceeding.

 

FINDINGS

1.    Respondent’s <natgeowildlifephotographer.com> and <natgeowildlifeexpeditions.com> domain names are confusingly similar to Complainant’s NAT GEO mark.

2.    Respondent does not have any rights or legitimate interests in the <natgeowildlifephotographer.com> and <natgeowildlifeexpeditions.com> domain names.

3.    Respondent registered or used the <natgeowildlifephotographer.com> and <natgeowildlifeexpeditions.com> domain names in bad faith.

 

DISCUSSION

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.”).

 

Identical and/or Confusingly Similar

Complainant claims rights in the NAT GEO mark based upon its registration with the USPTO. (e.g., Reg. No. 3,911,959, registered Jan. 25, 2011). See Amend. Compl. Ex. 9. Registration with the USPTO is sufficient to establish rights in a mark pursuant to 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)). Therefore, the Panel finds that Complainant has rights in the NAT GEO mark per Policy ¶ 4(a)(i).

 

Complainant asserts that the <natgeowildlifephotographer.com> and <natgeowildlifeexpeditions.com> domain names are confusingly similar to the NAT GEO mark as they contain the mark in its entirety, less the space and adds the descriptive terms “wildlife”, “photographer” and/or “expeditions” as well as the gTLD “.com.” Panels have consistently found that slight differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark do not distinguish the domain name from the mark incorporated therein. 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.”). Similarly, the addition of a gTLD is irrelevant in determining whether the disputed domain name is confusingly similar. 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). The Panel agrees with Complainant and find that the <natgeowildlifephotographer.com> and <natgeowildlifeexpeditions.com> domain names do not contain changes that would sufficiently distinguish them from the NAT GEO mark per Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”).

 

            Complainant argues that Respondent has no rights or legitimate interests in the <natgeowildlifephotographer.com> or <natgeowildlifeexpeditions.com> domain names as Respondent is not commonly known by the disputed domain names, nor has Complainant authorized Respondent to use the NAT GEO mark in any way.  WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name.  See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The WHOIS information of record identifies Respondent as “Douglas Chadwick / Rob Hernandez.” See Amend. Compl. Ex 2.  Additionally, lack of evidence in the record to indicate that a respondent has been authorized to register a domain name using a complainant’s mark supports a finding that the respondent does not have rights or legitimate interests in the disputed 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). The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the disputed domain name.

 

Complainant further argues Respondent’s lack of rights or legitimate interests in the <natgeowildlifephotographer.com> and <natgeowildlifeexpeditions.com> domain names is evinced by its failure to use the name for bona fide offering of goods or services, or legitimate noncommercial or fair use. Rather, Complainant contends that Respondent is attempting to pass off as Complainant in order to conduct a fraudulent phishing scheme Use of a domain name to pass off as a mark holder in in furtherance of a phishing scheme is not a bona fide offering or legitimate use under Policy ¶ 4(c)(i) or (iii). 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)). Here, Complainant contends that Respondent has used the Domain Names to send emails in which it has falsely represented itself as an employee of Complainant, then operates a theft scam in which it falsely represents to offer to sell a car, and solicits and accepts payment but does not actually deliver any such car to the buyer. See Amend. Compl. Exs. 10–11. Therefore, the Panel finds that Respondent has not used the domain name to make a bona fide offering of goods or services or for any legitimate noncommercial or fair use, and thus lacks rights and legitimate interests in the domain name per Policy ¶¶ 4(c)(i) or (iii).

 

Next, Complainant argues that Respondent makes no demonstrable preparations to use the <natgeowildlifephotographer.com> or <natgeowildlifeexpeditions.com> domain names. When respondent is not using the disputed domain name in connection with an active website, the Panel finds that respondent is not using the disputed domain name for bona fide offering or legitimate use under Policy ¶ 4(c)(i) and (iii). See Kohler Co. v xi long chen, FA 1737910 (Forum Aug. 4, 2017) (”Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain.  Respondent’s <kohler-corporation.com> resolves to an inactive webpage displaying the message “website coming soon!”). Here, Complainant provides screenshots that show the domain names do not resolve to active websites. See Amend. Compl. Ex. 12. Therefore, the Panel finds that Respondent lacks rights and legitimate interests in the domain names per Policy ¶¶ 4(c)(i) and (iii).

 

Registration and Use in Bad Faith

Complainant argues that Respondent has registered and uses the <natgeowildlifephotographer.com> and <natgeowildlifeexpeditions.com> domain names in bad faith because Respondent uses the names to pass off as Complainant to confuse Internet users and disrupt Complainant’s business for commercial gain. A respondent’s use of a disputed domain name to impersonate a complainant in furtherance of fraudulent activities can be indicative of bad faith per Policy ¶¶ 4(b)(iii) and/or (iv). See Chevron Intellectual Property, LLC v. Jack Brooks, FA 1635967 (Forum Oct. 6, 2015) (finding that Respondent’s use of <chevron-corps.com> to impersonate an executive of Complainant in emails is in opposition to Complainant and is therefore in bad faith 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 per Policy ¶ 4(b)(iv)). Here, Complainant contends that Respondent has used the Domain Names to send emails in which it has falsely represented itself as an employee of the Society, then operates a theft scam in which it falsely represents to offer to sell a car, and solicits and accepts payment but does not actually deliver any such car to the buyer. See Amend. Compl. Exs. 10-11. Therefore, the Panel finds that Respondent registered and uses the disputed domain names in bad faith pursuant to Policy ¶¶ 4(b)(iii) and/or (iv).

 

Next, Complainant asserts that Respondent has failed to make an active use of the disputed domain name. Failure to actively use a domain name can be evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Dermtek Pharmaceuticals Ltd. v. Sang Im / Private Registration, FA1310001522801 (Forum Nov. 19, 2013) (holding that because the respondent’s website contained no content related to the domain name and instead generated the error message “Error 400- Bad Request,” the respondent had registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii)). Complainant provides screenshots showing the domain names at issue do not resolve to active websites. See Amend. Compl. Ex. 12. The Panel finds this to be further evidence Respondent registered and uses the disputed domain name in bad faith.

 

Finally, Complainant argues that Respondent registered the disputed domain name with actual knowledge of Complainant’s mark. Actual knowledge of a complainant’s rights in a mark may be proven through a totality of circumstances surrounding the registration of the disputed domain name. See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to an in competition with Complainant.”). Here, Complainant claims given the fame of the NAT GEO marks and Respondent’s use of the disputed domain names for fraudulent passing off activities, Respondent’s actual knowledge of Complainant’s rights can be determined. The Panel agrees that Respondent had actual knowledge of Complainant’s rights in the NAT GEO mark when it registered the <natgeowildlifephotographer.com> and <natgeowildlifeexpeditions.com> domain names, thereby supporting a finding of bad faith under Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <natgeowildlifephotographer.com> and <natgeowildlifeexpeditions.com> domain names be TRANSFERRED from Respondent to Complainant.

 

John J. Upchurch, Panelist

Dated:  June 21, 2018