Centri Technology, Inc. v. Hudson Wilkins
Claim Number: FA1806001793889
Complainant is Centri Technology, Inc. (“Complainant”), represented by Patchen M. Haggerty of Perkins Coie LLP, Washington, USA. Respondent is Hudson Wilkins (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <atonorni.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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 26, 2018; the Forum received payment on June 26, 2018.
On June 27, 2018, NameSilo, LLC confirmed by e-mail to the Forum that the <atonorni.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 June 28, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 18, 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@atonorni.com. Also on June 28, 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 19, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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
i) Complainant, Centri Technology, Inc. has common law trademark rights in the ATONOMI mark based upon its use of the mark since as early as July of 2017. Respondent’s <atonorni.com> domain name is confusingly similar to Complainant’s ATONOMI mark, as the domain name is merely a deliberate misspelling of the mark (replacing the “RN” with a “M”) and the “.com” generic top-level domain (“gTLD”).
ii) Respondent has no rights or legitimate interests in the <atonorni.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use the ATONOMI mark in any manner. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the domain name resolves to a webpage where Respondent attempts to pass off as Complainant, in furtherance of a phishing scheme. See Compl. Exs. D6 & D7.
iii) Respondent registered and is using the <atonorni.com> domain name in bad faith. Respondent attempts to attract, for commercial gain, users to the disputed domain name where Respondent passes off as Complainant in furtherance of a phishing scheme. Finally, Respondent had actual knowledge of Complainant’s rights in the ATONOMI mark prior to registering and subsequently using the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Respondent registered the disputed domain name on June 5, 2018.
2. Complainant established common law rights in the ATONOMI mark based upon its use of the mark since as early as July 2017.
3. The disputed domain name’s resolving webpage appears to be identical with Complainant’s website.
4. Respondent, while impersonating Complainant, is sending emails to consumers which misleadingly link to the disputed domain rather than Complainant’s own website; once consumers reach the disputed domain, they are prompted to send a form of currency to an address on the website on the false basis that it would allow consumers to sign up for Complainant’s Atonomi pre-sale.
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.”).
Complainant claims common law rights in the ATONOMI mark based upon its use of the mark since as early as July 2017. An adequate showing that a complainant’s mark has attained secondary meaning may be sufficient to establish common law rights in the mark for the purposes of Policy ¶ 4(a)(i). See loanDepot.com, LLC v. sm goo, FA 1786848 (Forum June 12, 2018) (“Complainant’s demonstration of continuous use in commerce and accompanying promotion and media recognition are adequate to sustain its claim of common law rights in the MELLO and MELLO SOLAR marks.”). In support of this assertion, Complainant provides: 1) a screenshot of the website it has been using in connection with the ATONOMI mark, 2) several media articles covering the ATONOMI mark, and 3) an “atonomi” Google search showing that the top 80 hits referred to Complainant. See Compl. Exs. D1, D 2, D3, & D5. The Panel therefore holds that Complainant has sufficiently established its common law rights in the ATONOMI mark per Policy ¶ 4(a)(i).
Complainant next argues Respondent’s <atonorni.com> domain name is confusingly similar to the ATONOMI mark, as the name is merely a misspelling of the mark with the addition of the “.com” gTLD. Subtle misspellings of a mark and the addition of a gTLD are typically insufficient to distinguish a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i). See Wells Fargo & Company v. VALERIE CARRINGTON, FA 1621718 (Forum July 2, 2015) (finding that the <wllsfago.com> domain name is confusingly similar to the WELLS FARGO mark as the domain name merely omits the “e” and “r” from the mark while adding the “.com” gTLD suffix.). Complainant asserts that the <atonorni.com> domain name is differentiated from the ATONOMI mark only in replacing of the letters “RN” with the letter “M” and the “.com” gTLD. The Panel therefore determines the <atonorni.com> domain name is confusingly similar to the ATONOMI mark per Policy ¶ 4(a)(i).
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 <atonorni.com> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the ATONOMI mark. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by a disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). The WHOIS information of record identifies Respondent as “Hudson Wilkins”, and no information on the record indicates Respondent was authorized to register a domain name incorporating Complainant’s mark. The Panel therefore finds, under Policy ¶ 4(c)(ii), that Respondent has not been commonly known by the <atonorni.com> domain name.
Complainant further argues Respondent’s lack of rights or legitimate interests in the <atonorni.com> domain name is demonstrated by its failure to use the name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Instead, Complainant claims Respondent attempts to pass off as Complainant in furtherance of a phishing scheme. Use of a disputed domain name in attempts to pass off as a complainant is not indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) and (iii). Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business). Complainant provides a screenshot of its own website as well as the disputed domain name’s resolving webpage, which appear to be identical, to support this assertion. See Compl. Exs. D1 & D6. The Panel therefore determines that Respondent does not have rights or legitimate interests in the <atonorni.com> domain name per Policy ¶¶ 4(c)(i) and (iii).
Additionally, Complainant argues that Respondent is using the <atonorni.com> domain name’s resolving webpage in furtherance of a phishing scheme. Use of a domain to phish for Internet users personal information is not indicative of rights or legitimate interests per Policy ¶ 4(a)(ii). See Morgan Stanley v. Zhange Sheng Xu / Zhang Sheng Xu, FA1501001600534 (Forum Feb. 26, 2015) (“The Panel agrees that the respondent’s apparent phishing attempt provides further indication that the respondent lacks any rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”) Complainant asserts Respondent, while impersonating Complainant, is sending emails to consumers which misleadingly link to the disputed domain rather than Complainant’s own website; once consumers reach the disputed domain, they are prompted to send a form of currency to an address on the website on the false basis that it would allow consumers to sign up for Complainant’s Atonomi pre-sale. See Compl. Exs. D6-D8. The Panel therefore determines that Respondent does not have rights or legitimate interests in the <atonorni.com> domain name per Policy ¶ 4(a)(ii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. 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 finally contends that, in light of Respondent’s use of the disputed domain name, Respondent registered the <atonorni.com> domain name with actual knowledge of Complainant’s rights in the ATONOMI mark. Actual knowledge of a complainant’s mark prior to registration of a disputed domain name may indicate bad faith per Policy ¶ 4(a)(iii). See Twentieth Century Fox Film Corporation and Fox International Channels (US), Inc. v. Daniel Pizlo / HS, FA1412001596020 (Forum Jan. 27, 2015) (finding that the respondent must have had actual knowledge of the complainant and its rights in the FOX LIFE mark, where the respondent was using the disputed domain name to feature one of the complainant’s videos on its website, indicating that the respondent had acted in bad faith under Policy ¶ 4(a)(iii)). Complainant states that Respondent’s website mimics the Atonomi Website and provides screenshots of each in support of this assertion. See Compl. Exs. D1 & D6. The Panel agrees and finds Respondent had actual knowledge of Complainant’s rights in the mark; thus registering the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <atonorni.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: July 20, 2018
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