Textron Innovations Inc. v. Shirley T. Barnes / malca-mit
Claim Number: FA1807001799244
Complainant is Textron Innovations Inc. (“Complainant”), represented by Jeremiah A. Pastrick, Indiana, USA. Respondent is Shirley T. Barnes / malca-mit (“Respondent”), Michigan, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <txtav-inc.com>, 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 Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 30, 2018; the Forum received payment on July 30, 2018.
On August 1, 2018, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <txtav-inc.com> 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 ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 6, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 27, 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@txtav-inc.com. Also on August 6, 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 August 29, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 registered the TEXTRON and TXT marks with the United States Patent and Trademark Office (“USPTO”) (e.g. TEXTRON—Reg. No. 1,090,704, registered May 9, 1978; TXT—Reg. No. 2,037,815, registered Feb. 11, 1997). Respondent’s <txtav-inc.com> domain name is confusingly similar to Complainant’s marks as it wholly replicates the TXT mark or an abbreviation for the TEXTRON mark before appending the descriptive term “av,” a hyphen, the generic term “inc” and the “.com” generic top-level-domain (“gTLD”).
Respondent has no rights or legitimate interests in the <txtav-inc.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent fails to make an active use of the disputed domain name’s resolving website, but utilizes the domain name in connection with phishing scams and to impersonate Complainant’s employees.
Respondent registered and uses the <txtav-inc.com> domain name in bad faith. Respondent uses the disputed domain name to disrupt Complainant’s business. Respondent intentionally attracts, for commercial gain, Internet users otherwise seeking Complainant to Respondent’s own website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website. Respondent had actual knowledge of Complainant’s rights in the TEXTRON and TXT marks prior to registration of the disputed domain name. Respondent inactively holds the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant registered the TEXTRON and TXT marks with the USPTO (e.g. TEXTRON—Reg. No. 1,090,704, registered May 9, 1978; TXT—Reg. No. 2,037,815, registered Feb. 11, 1997). Respondent’s <txtav-inc.com> domain name is confusingly similar to Complainant’s marks.
Respondent registered the <txtav-inc.com> domain name on May 23, 2018.
Respondent has no rights or legitimate interests in the <txtav-inc.com> domain name. Respondent fails to make an active use of the disputed domain name’s resolving website, but utilizes the domain name in connection with phishing scams and to impersonate Complainant’s employees.
Respondent registered and uses the <txtav-inc.com> domain name in bad faith.
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 has rights in the TEXTRON and TXT marks under Policy ¶ 4(a)(i) based upon registration with the USPTO. See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (Registration of a mark with the USPTO sufficiently confers a complainant rights in a mark for the purposes of Policy ¶ 4(a)(i)).
Respondent’s <txtav-inc.com> domain name is confusingly similar to Complainant’s marks as it wholly replicates the TXT mark or an abbreviation for the TEXTRON mark before appending the descriptive term “av,” a hyphen, the generic term “inc” and the “.com” gTLD.
Respondent has no rights or legitimate interests in the <txtav-inc.com> domain name. Where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See 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). Complainant has not authorized Respondent to use Complainant’s marks. The WHOIS identifies “Shirley T. Barnes / malca-mit” as the registrant of the domain name There is no evidence in the record showing that Respondent has ever been legitimately known by the TEXTRON or TXT marks. See Navistar International Corporation v. N Rahmany, FA 1620789 (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). Accordingly, Respondent is not commonly known by the <txtav-inc.com> domain name under Policy ¶ 4(c)(ii).
Respondent fails to use the <txtav-inc.com> domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use as it attempts to phish for information from consumers via email. See Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
The disputed domain name also redirects users to a website that lacks any content. Failure to make active use of a confusingly similar domain name shows lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Activision Blizzard, Inc. / Activision Publishing, Inc. / Blizzard Entertainment, Inc. v. Cimpress Schweiz GmbH, FA 1737429 (Forum Aug. 3, 2017) (“Complainant insists that Respondent has made no demonstrable preparations to use the disputed domain name. When Respondent is not using the disputed domain name in connection with an active website, the Panel may find that Respondent is not using the disputed domain name for a bona fide offering of goods or services… As Respondent has not provided a response to this action, Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.”).
Respondent uses the <txtav-inc.com> domain name to fraudulently send emails to Complainant’s customers in hopes of receiving personal or financial information. Conducting a phishing scheme through fraudulent email communications is bad faith under Policy ¶ 4(b)(iii). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the <abbuie.com> domain name to impersonate Complainant’s CEO. Such use is undeniably disruptive to Complainant’s business and demonstrates bad faith pursuant to Policy ¶ 4(b)(iii), and/or Policy ¶ 4(b)(iv)”).
Respondent registered and uses the <txtav-inc.com> domain in bad faith because it attempts to pass off as Complainant. Passing off shows bad faith registration and use. 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).
Respondent had actual notice of Complainant’s rights in the TEXTRON and TXT marks prior to registration of the <txtav-inc.com> domain name. Therefore, Respondent registered and uses the domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See 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).
Respondent fails to use the <txtav-inc.com> domain name. Inactively holding a confusingly similar domain name shows bad faith registration and use under Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA 1608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <txtav-inc.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: September 11, 2018
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