e2Interactive, Inc. v. lee / ab tech solutions
Claim Number: FA1806001793323
Complainant is e2Interactive, Inc. (“Complainant”), represented by Andrea E. Bates of Bates & Bates, LLC, Georgia, USA. Respondent is lee / ab tech solutions (“Respondent”), Kentucky, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <onevanillacard.us>, registered with Pdr Ltd. D/B/A Publicdomainregistry.Com.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 22, 2018; the Forum received payment on June 22, 2018.
On June 27, 2018, Pdr Ltd. D/B/A Publicdomainregistry.Com confirmed by e-mail to the Forum that the <onevanillacard.us> domain name is registered with Pdr Ltd. D/B/A Publicdomainregistry.Com and that Respondent is the current registrant of the name. Pdr Ltd. D/B/A Publicdomainregistry.Com has verified that Respondent is bound by the Pdr Ltd. D/B/A Publicdomainregistry.Com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On July 3, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 23, 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@onevanillacard.us. Also on July 3, 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 July 24, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 usTLD 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 usTLD Policy, usTLD 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 made the following contentions.
Complainant provides pre-paid debit and stored value card services in connection with the ONE VANILLA mark. Complainant has rights in the ONE VANILLA mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,050,400, registered Nov. 1, 2011). See Amend. Compl. Annex 4. Respondent’s <onevanillacard.us> domain name is confusingly similar to Complainant’s ONE VANILLA mark as Respondent adds the generic term “card” and a “.us” country-code top-level domain (“ccTLD”) to the mark.
Respondent has no rights or legitimate interests in the <onevanillacard.us> domain name. Respondent is not authorized to use the ONE VANILLA mark and is not commonly known by the disputed domain name. Additionally, Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name in furtherance of phishing.
Respondent registered or uses the <onevanillacard.us> domain name in bad faith. Respondent uses the disputed domain name as part of a phishing scheme. Further, Complainant contacted Respondent eight (8) times and requested that the disputed domain name be taken down.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that provides pre-paid debit and stored value card services in connection with the ONE VANILLA mark.
2. Complainant has established its trademark rights in the ONE VANILLA mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,050,400, registered Nov. 1, 2011).
3. The <onevanillacard.us> domain name was registered on January 26, 2017.
4. Respondent has registered and used the disputed 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.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon prior UDRP decisions as applicable in formulating and rendering its decision.
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 next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s ONE VANILLA mark. Complainant contends Respondent’s <onevanillacard.us> domain name is confusingly similar to Complainant’s ONE VANILLA mark. Specifically, Complainant argues Respondent merely adds the generic word “card” and the ccTLD “.us” to the ONE VANILLA mark. Adding a generic word and a ccTLD to a complainant’s mark does not negate any confusing similarity between the disputed domain name and mark under Policy ¶ 4(a)(i). See Starbucks Corporation d/b/a Starbucks Coffee Company v. Waseem A Ali / Micron Web Services, FA 1785616 (Forum June 8, 2018) (finding the <starbucksreal.com> domain name to be confusingly similar to the STARBUCKS mark, as “the addition of the generic term ‘real’ to Complainant's mark does not distinguish the Domain Name from Complainant's trade mark pursuant to the Policy.”); see also Philip Morris USA Inc. v. Naveen Patnayak, FA 1731422 (Forum June 12, 2017) (“First, the addition of “.us” is inconsequential to the claim of confusing similarity.”). Accordingly, the Panel finds the disputed domain name is confusingly similar to Complainant’s ONE VANILLA mark per Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s ONE VANILLA trademark and to use it in its domain name, adding the generic word “card” that does not negate the confusing similarity with Complainant’s trademark;
(b) Respondent registered the disputed domain name on January 26, 2017;
(c) Respondent has registered and used the disputed domain name as part of a phishing scheme;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant submits that Respondent has no rights or legitimate interests in the <onevanillacard.us> domain name. Specifically, Complainant contends Respondent is not authorized to use Complainant’s ONE VANILLA mark and is not commonly known by the disputed domain name. Where a response is lacking, relevant WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(iii). See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).”). Complainant provides a copy of the WHOIS information which identifies Respondent as “lee / ab tech solutions,” and there is nothing in the record to suggest Respondent was authorized to register a domain name with the ONE VANILLA mark. See Amend. Compl. Annex 4. As such, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(iii);
(f) The Panel further finds that there is nothing in the available evidence which indicates that Respondent has rights in a mark identical to the disputed domain name, which would serve to satisfy Policy ¶ 4(c)(i). See Pepsico, Inc. v. Becky, FA 117014 (Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)). Therefore, this Panel concludes that Respondent cannot bring itself within Policy ¶ 4(c)(i);
(g) Complainant claims Respondent fails to use the <onevanillacard.us> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Complainant argues Respondent uses the disputed domain name in furtherance of phishing. Using a disputed domain name to obtain users’ personal information through phishing is not indicative of rights or legitimate interests in the domain name under Policy ¶¶ 4(c)(ii) and (iv). See Virtu Financial Operating, LLC v. Lester Lomax, FA1409001580464 (Forum Nov. 14, 2014) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii) where the respondent was using the disputed domain name to phish for Internet users personal information by offering a fake job posting on the resolving website). Complainant provides a comparison of its website at www.onevanilla.com with the website to which Respondent’s disputed domain name resolves to support its assertion that Respondent engages in phishing. See Amend. Compl. Annex 8. Further, Complainant provides copies of its cease and desist emails sent to Respondent with highlighted portions related to Respondent’s use of the disputed domain name for phishing. See Amend. Compl. Annex 9. Therefore, the Panel finds Respondent lacks rights or legitimate interests in the disputed domain name per Policy ¶¶ 4(c)(ii) and (iv).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant submits Respondent registered and uses the <onevanillacard.us> domain name in bad faith. Complainant submits that Respondent uses the disputed domain name as part of a phishing scheme to obtain users’ personal information and the Panel finds on the evidence that Respondent uses the disputed domain name as part of a phishing scheme. Using a disputed domain name to procure users’ sensitive information may demonstrate bad faith under Policy ¶ 4(a)(iii). 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).”); see also United States Postal Service v. kyle javier, FA 1787265 (Forum June 12, 2018) (“Use of a domain name to phish for Internet users’ personal information is evidence of bad faith.”). Complainant provides a comparison of its domain name with the disputed domain name’s resolving website to support its assertion. See Amend. Compl. Annex 8. Further, Complainant provides copies of its cease and desist emails sent to Respondent with highlighted portions related to Respondent’s use of the disputed domain name for phishing. See Amend. Compl. Annex 9. Therefore, the Panel agrees with Complainant and finds Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Secondly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the ONE VANILLA mark and in view of the conduct that Respondent has engaged in when using the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <onevanillacard.us> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC,
Panelist
Dated: July 25, 2018
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page