Pilot Travel Centers LLC v. John Michael Stolp
Claim Number: FA1811001816714
Complainant is Pilot Travel Centers LLC (“Complainant”), represented by Seth L. Hudson of Clements Bernard Walker PLLC, North Carolina, USA. Respondent is John Michael Stolp (“Respondent”), Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pilottravelcenters.org>, registered with Wild West Domains, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Antonina Pakharenko-Anderson as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 16, 2018; the Forum received payment on November 16, 2018.
On November 16, 2018, Wild West Domains, LLC confirmed by e-mail to the Forum that the <pilottravelcenters.org> 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 November 21, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 11, 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@pilottravelcenters.org. Also on November 21, 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.
A timely Response was received and determined to be complete on December 4, 2018. It shall be noted that Respondent did not file a formal Response. However, as noted above, on December 4, 2018, 2018, the Forum received informal email from Respondent, whose most relevant content will be summarized as follows.
On December 10, 2018 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Antonina Pakharenko-Anderson 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant offers its goods and services in connection with the PILOT TRAVEL CENTERS mark. Complainant has rights in the PILOT TRAVEL CENTERS mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,232,994, registered Mar. 16, 1999; Reg. No. 2,242,056, registered Apr. 27, 19994; Reg. No. 4,175,733, registered July 17, 2012).
2. The domain name <pilottravelcenters.org> is identical or confusingly similar to a trademark or service mark in which Complainant has rights. The domain name <pilottravelcenters.org> subsumes Complainant’s trademark/service mark in its entirety. Further, the domain name <pilottravelcenters.org> uses Complainant’s trademark/service mark along with .org. UDRP Rule 3(b)(ix)(1); UDRP Policy ¶ 4(a)(i).
3. Respondent (domain-name holder) has no rights or legitimate interests in respect of the domain name <pilottravelcenters.org>. Respondent is currently contacting Complainant’s vendors from an email APVendor.Processing@pilottravelcenters.org using this domain name. Respondent is emailing Complainant’s vendors and asking the vendor to update its banking information. Further, Complainant operates a legitimate website at pilottravelcenters.com.
4. The domain name <pilottravelcenters.org> should be considered as having been registered and being used in bad faith. With respect to bad faith, Respondent attempts to impersonate Complainant by contacting Complainant’s Vendors and requesting them to update banking information. Presumably, Respondent will use the banking information for nefarious purposes.
B. Respondent
Respondent claims that it is a victim of identity theft. He asserts that:
1. He only owns and controls two domains: cfo-dailyreport.com [and] cfosllc.com and that Who.is should verify this.
2. He was hacked by a sub-contractor who wrongly entered his information in the domains he [the sub-contractor] created.
3. He has no control over his [the sub-contractor`s] registrar's account.
4. He was able to delete the domains which he [the sub-contractor] acquired through Microsoft 365 with MS' help.
5. He believes that [the sub-contractor] may also have created domains through squarespace.com and through Google.
6. He does not have access to those accounts. He believes he was hacked and his identity was stolen.
7. He immediately terminated the sub-contractor when his actions became apparent to us him.
In the same time, on the contrary, Respondent did not substantiate his assertions by any evidence.
Complainant claims rights in the PILOT TRAVEL CENTERS marks based upon registrations of the marks with the USPTO (Reg. No. 2,232,994, registered Mar. 16, 1999; Reg. No. 2,242,056, registered Apr. 27, 19994; Reg. No. 4,175,733, registered July 17, 2012). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark).
Thus, the Panel finds that Complainant’s registration of the PILOT TRAVEL CENTERS mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <pilottravelcenters.org> domain name is identical and/or confusingly similar to Complainant’s PILOT TRAVEL CENTERS mark as it fully incorporates the mark in its entirety while adding the “.org” generic top-level domain (“gTLD”) to the mark.
Complainant also claims that Respondent has no rights or legitimate interests in the <pilottravelcenters.org> domain name as Respondent uses an email associated with the disputed domain name to pass off as Complainant in order to phish for vendors’ banking information.
Complainant states that Respondent registered and uses the <pilottravelcenters.org> domain name in bad faith as Respondent attempts to pass off as Complainant in furtherance of an email phishing scheme.
The disputed <pilottravelcenters.org> domain name was registered by Respondent on August 14, 2018.
Respondent claims that it is a victim of identity theft, but does not substantiate his assertions by any evidence hereof.
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Deficient Response
Respondent’s first email communication was received by the November 30, 2018. Then, in his following letters of December 3, 2018 and December 4, 2018 Respondent represents that the e-mail address used for domain registration of the <pilottravelcenters.org> domain does not belong to him as he was recently hacked. Later on, Respondent asserted by email that he was a victim of an identity theft (email of December 4, 2018).
The Panel notes, in particular, that Respondent’s letters of November 30, 2018, December 3, 2018 and December 4, 2018 do not conform to the requirements of Rule 5(b) of the Rules. Notably, it was submitted by email only, and, among other things, omits the certification required by Rule 5(b)(viii) that the information contained in the response is to the best of Respondent's knowledge complete and accurate, that the Response is not being presented for any improper purpose, and that the assertions in the Response are warranted under the Rules and applicable law.
The lack of a proper and elaborated Response does not automatically result in a favorable decision for Complainant. The burden for Complainant, under paragraph 4(a) of the Policy, is to show (See Koninklijke Philips Electronics N.V. v. Relson Limited, WIPO Case No. DWS2001-0003: “Each of the three stated elements are made up of a number of facts, each of which has to be proven in order for the Complainant to succeed [...]).
On his part, Respondent makes reference to the domain names controlled by him and to the identity theft by the sub-contractor without supplying any evidence thereof. As set forth in other UDRP cases, the Panel reiterates that it is not her role to look for evidence not supplied by the parties.(In The Skin Store, Inc. v. eSkinStore.com, WIPO Case No. D2004-0661, it was established: “The [p]anel suspects [...] that further evidence could have been produced, but it is not the job of the [p]anel to hunt it out”).
Furthermore, the identity theft issue, as represented by Respondent, is out of scope of the Panel`s competence in this case as the decision shall concern only the matter with the domain name in dispute, nothing else.
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.
Complainant claims rights in the PILOT TRAVEL CENTERS mark based upon registration of the mark with the USPTO (e.g., Reg. No. 2,232,994, registered Mar. 16, 1999). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). Previous panels also held that registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (“There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. … Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). See also Esquire Innovations, Inc. v. Iscrub.com, WIPO Case No. D2007-0856 (WIPO May 10, 2007) (“[P]aragraph 4 of the Policy does not require proof of any particular time at which the Complainant must have trademark or service mark rights... [The] Policy requires only that the complainant ‘has’ trademark rights, i.e. ‘has’ them at the time the decision is being made.”).
Complainant next argues Respondent’s <pilottravelcenters.org> domain name is confusingly similar to the PILOT TRAVEL CENTERS mark, as the name fully incorporates the mark with the addition of a “.org” gTLD. Adding a gTLD to a complainant’s mark may not be sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See 3M Company v. Kabir S Rawat, FA 1725079 (Forum May 9, 2017); Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.). Similarly, the addition of a gTLD is irrelevant to a confusingly similar analysis. 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 therefore agrees that Respondent has not included elements in the domain names that would provide distinction from Complainant’s mark under Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Panel therefore determines the <pilottravelcenters.org> domain name is confusingly similar to the PILOT TRAVEL CENTERS mark per Policy ¶ 4(a)(i).
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”). See also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
Complainant argues that Respondent has no rights or legitimate interests in the <pilottravelcenters.org> domain name; however, Complainant does not specifically contend that Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the PILOT TRAVEL CENTERS mark in any way. Regardless, WHOIS information can support a finding that the respondent is not commonly known by a disputed domain name. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) The WHOIS information of record identifies the registrant of the at-issue domain name as “John Michael Stolp,” and no information on the record indicates Respondent was authorized to register a domain name incorporating Complainant’s mark. The Panel finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the <pilottravelcenters.org> domain name.
Additionally, Complainant does not specifically argue that Respondent’s lack of rights or legitimate interests in the <pilottravelcenters.org> 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.
However, Complainant contends Respondent is using an email address associated with the disputed domain name to pass off as Complainant in order to obtain vendors’ banking information. Use of an email to pass off as a complainant in furtherance of a phishing scheme does not amount to a bona fide offering of goods or services or for a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“Passing off as a complainant through e-mails is evidence that a respondent lacks rights and legitimate interests under Policy ¶¶ 4(c)(i) & (iii).”). Complainant provides a copy of an email sent to one of Complainant’s vendors requesting an update on the vendor’s banking information.
“Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent.” WIPO Overview 3.0, section 2.13.1.
Therefore, the Panel finds that Respondent has no rights or legitimate interests in the <pilottravelcenters.org> domain name.
The Panel finds that while Complainant has not made arguments under Policy ¶ 4(b), such arguments are not required under the Policy—so long as Complainant shows bad faith use and registration in some manner. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith). The Panel therefore finds Complainant’s Policy ¶ 4(a)(iii) arguments are sufficient to establish bad faith.
Complainant contends that Respondent’s impersonation of Complainant in emails designed to fraudulently solicit vendors’ banking information evinces Respondent’s bad faith. Such use of a domain name can be used to support a finding of bad faith registration and use 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). The Panel recalls the emails sent from an email address hosted at the <pilottravelcenters.org> domain name.
Respondent registered the disputed domain name <pilottravelcenters.org> on August 14, 2018. The domain name does not resolve to an active website. In the same time, if to assume that Respondent became a victim of identity theft and he did not register the disputed domain name (as he represents), it is still unclear to the Panel why Respondent did not take any measures to eliminate the consequences of such an identity theft since almost five month passed from the date of the disputed domain name registration to the date Respondent received the claim of Complainant.
On the contrary, at least one of Complainant’s vendors was contacted from an email APVendor.Processing@pilottravelcenters.org using the <pilottravelcenters.org> domain name. The sender of this email (representing himself/herself as an AP Vendor Processing clerk Sharon McMillon) was asking Complainant’s vendor to update its banking information.
“Panels have held that the use of a domain name for purposes other than to host a website may constitute bad faith. Such purposes include sending email, phishing, identity theft, or malware distribution. (In some such cases, the respondent may host a copycat version of the complainant’s website.) Many such cases involve the respondent’s use of the domain name to send deceptive emails, e.g., to obtain sensitive or confidential personal information from prospective job applicants, or to solicit payment of fraudulent invoices by the complainant’s actual or prospective customers.” WIPO Overview 3.0. See, e.g., Accor v. SANGHO HEO / Contact Privacy Inc., WIPO Case No. D2014-1471 (phishing); Haas Food Equipment GmbH v. Usman ABD, Usmandel, WIPO Case No. D2015-0285 (“The essence of fraud is that the Respondent has used the Domain Name to pose as senior executive of the Complainant and to send false emails on behalf of that executive making the emails look like genuine emails coming from that executive. These false emails have then been used to reroute payments for the Complainant's goods to bank accounts in China, so they are received by the Respondent.”).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii) except for the identity theft allegations which, although, were never proved by Respondent by any sufficient evidence thereof.
As such, the Panel agrees with Complainant’s assertions and holds that Respondent does not use the domain names in connection with a bona fide offering of goods or services or for any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
The Panel therefore finds Respondent to have registered and used 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 <pilottravelcenters.org> domain name be TRANSFERRED from Respondent to Complainant.
Antonina Pakharenko-Anderson, Panelist
Dated: December 19, 2018
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