Henkel AG & Co. KGaA v. Wyatt Hyatt / WyattHyatt Inc
Claim Number: FA1812001819416
Complainant is Henkel AG & Co. KGaA (“Complainant”), represented by Elizabeth Alquist of Day Pitney LLP, Massachusetts, USA. Respondent is Wyatt Hyatt / WyattHyatt Inc (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hhenkel.us>, registered with NameCheap, Inc.
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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 4, 2018; the Forum received payment on December 4, 2018.
On December 4, 2018, NameCheap, Inc. confirmed by e-mail to the Forum that the <hhenkel.us> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 December 5, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 26, 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@hhenkel.us. Also on December 5, 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 December 30, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, 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 to the usTLD Dispute Resolution Policy (“Rules”). 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, Henkel AG & Co. KGaA, is a global chemical goods developer and manufacturer providing a wide array of hair care, beauty care, and home care products for consumers, as well as various adhesives, sealants, and functional coatings for its industrial clients. Complainant has rights in the HENKEL trademark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) dating back to at least 2005 although Complainant was founded in the year 1876. Respondent’s <hhenkel.us> domain name was registered on October 21, 2018 and is confusingly similar to Complainant’s mark because Respondent includes the HENKEL mark in the domain name, adds a single letter “h,” and adds the “.us” country-code top-level domain (“ccTLD”).
Respondent lacks rights and legitimate interests in the <hhenkel.us> domain name because Respondent is not commonly known by the disputed domain name and is not authorized or permitted to use Complainant’s mark in any fashion. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to send emails in connection with a phishing scheme aimed at Complainant’s wholesale distributors.
Respondent registered and uses the <hhenkel.us> domain name in bad faith. Respondent attempts gain commercially by using the domain to operate a phishing scheme. Moreover, Respondent engages in typosquatting. Further, Respondent had actual and/or constructive knowledge of Complainant’s rights in the HENKEL mark prior to registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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 the domain name; and
(3) the domain name has been registered or is being used 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 or 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 UDRP precedent as applicable in 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.”).
Complainant has rights in the HENKEL trademark based upon its registration of the mark with the USPTO. Registration with the USPTO generally establishes a complainant’s rights in a mark for purposes of Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”) Here, Complainant has submitted into evidence copies of its USPTO registrations for the HENKEL mark. Therefore, the Panel concludes that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Next, Complainant contends that Respondent’s <hhenkel.us> domain name is confusingly similar to Complainant’s HENKEL mark because Respondent includes the mark in the domain name and adds a single letter and a ccTLD. Such changes are typically insufficient to distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). See TripAdvisor, LLC / Smarter Travel Media LLC / Jetsetter, Inc. v. RAKSHITA MERCANTILE PRIVATE LIMITED, FA 1623459 (Forum July 17, 2015) (“Adding a single letter is not enough to prevent a domain name from being confusingly similar to a mark.”); see also Philip Morris USA Inc. v. Naveen Patnayak, FA 1731422 (Forum June 12, 2017) (“the addition of ‘.us’ is inconsequential to the claim of confusing similarity.”) Here, Respondent wholly incorporates the HENKEL mark in the domain name, adds the letter “h”, and also adds the “.us” ccTLD. These differences are insufficient to differentiate the domain name from the trademark. Finally, as the domain name is used for a phishing scheme with the specific intent of confusing email recipients as to the source of the correspondence, it is clear to this Panel that the Respondent itself considers the domain name to be confusingly similar to the Complainant’s mark.
In light of the above, the Panel concludes that Respondent’s <hhenkel.us> domain name is confusingly similar to Complainant’s HENKEL mark under 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). Should it succeed in this effort, the burden then shifts to Respondent to show that 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 lacks rights and legitimate interests in the <hhenkel.us> domain name because Complainant has not authorized Respondent to use its HENKEL mark and the Respondent is not otherwise known by the domain name. Where a response is lacking, relevant WHOIS information may be used to identify the respondent under Policy ¶ 4(c)(iii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Additionally, lack of authorization from complainant to use its marks may be further evidence that a respondent is not commonly known by a disputed domain name. See Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”) The Panel notes that the WHOIS record identifies Respondent as “Wyatt Hyatt / WyattHyatt Inc,” and no information in the record shows that Respondent is known otherwise or was authorized to use Complainant’s mark. Accordingly, the Panel concludes that Respondent lacks rights and legitimate interests in the <hhenkel.us> domain name under Policy ¶ 4(c)(ii).
Further, the Panel notes that there is nothing in the submitted 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)).
Next, Complainant argues that Respondent fails to use the <hhenkel.us> domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent uses the domain to conduct a phishing scheme. Use of a disputed domain name to send emails in furtherance of a phishing scheme is not considered a bona fide offering or a legitimate use under Policy ¶¶ 4(c)(ii) or (iv). See 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 provides printouts of email correspondence, originating from an email address associated with the <hhenkel.us> domain name, in which Respondent seeks to impersonate one of Complainant’s employees and attempts to solicit payments from one of Complainant’s wholesale distributors on false invoices that are claimed to be due. Complainant also provides attachments from such email in which Respondent seeks to impersonate both Complainant’s employee and Wells Fargo Bank personnel and it identifies a specific bank account to which the recipient is to deposit funds. In view of this phishing scheme perpetrated using the <hhenkel.us> domain name, the Panel concludes that Respondent fails to use the name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv).
Complainant argues that Respondent had constructive or actual knowledge of Complainant’s rights in the HENKEL mark prior to registering the disputed domain name. Actual knowledge may evince bad faith under Policy ¶ 4(a)(iii), and can be established by the respondent’s use of the mark. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Here, Complainant asserts that Respondent knew of Complainant’s business because Respondent used the infringing domain to impersonate its employees and send emails to one of Complainant’s business partners in furtherance of a phishing scheme. Based upon this evidence the Panel concludes that Respondent had actual knowledge of Complainant’s rights in the HENKEL mark prior to registering the disputed domain name and this supports a finding of bad faith under Policy ¶ 4(a)(iii).
Complainant next argues that Respondent registered and uses the <hhenkel.us> domain name in bad faith because Respondent sent emails in furtherance of a phishing scheme. Such use may evince bad faith under Policy ¶ 4(b)(iv). 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 per Policy ¶ 4(b)(iv)). The Panel notes that Complainant provides screenshots of emails and email attachments in which Respondent seeks to impersonate Complainant and bank employees in an effort to solicit payments from one of Complainant’s distributors. Therefore, the Panel concludes that Complainant registered and uses the <hhenkel.us> domain name in bad faith under Policy ¶ 4(b)(iv).
Finally, Complainant asserts that Respondent engages in typosquatting. Typosquatting may indicate bad faith registration or use under Policy ¶ 4(a)(iii). See Homer TLC, Inc. v. Artem Ponomarev, FA1506001623825 (Forum July 20, 2015) (“Finally, under this head of the Policy, it is evident that the <homededpot.com> domain name is an instance of typosquatting, which is the deliberate misspelling of the mark of another in a domain name, done to take advantage of common typing errors made by Internet users in entering into a web browser the name of an enterprise with which they would like to do business online. Typosquatting is independent evidence of bad faith in the registration and use of a domain name.”). Here, Respondent wholly incorporates the HENKEL mark in the <hhenkel.us> domain name, adds a single letter “h,” and adds the “.us” ccTLD. Therefore, the Panel concludes that Respondent has deliberately sought to create confusion between its domain name and the Complainant’s trademark, thus engaging in typosquatting. This provides additional support for a finding of bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hhenkel.us> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: January 2, 2019
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