Leidos, Inc. v. hudson ngaite
Claim Number: FA1606001680697
Complainant is Leidos, Inc. (“Complainant”), represented by Jennifer L. Elgin of Bean Kinney & Korman PC. Respondent is hudson ngaite (“Respondent”), New Jersey, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <leidosc.com>, registered with Web4Africa 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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 22, 2016; the Forum received payment on June 22, 2016.
On July 4, 2016, Web4Africa Inc. confirmed by e-mail to the Forum that the <leidosc.com> domain name is registered with Web4Africa Inc. and that Respondent is the current registrant of the name. Web4Africa Inc. has verified that Respondent is bound by the Web4Africa Inc. 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 29, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 19, 2016 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@leidosc.com. Also on June 29, 2016, 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 27, 2016, 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 is a recognized global leader in solving important problems in national security, health, and infrastructure. Complainant has registered the LEIDOS mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,937,101, filed Jan. 22, 2013, registered Apr. 12, 2016), which demonstrates Complainant’s rights in its mark. The <leidosc.com> domain is confusingly similar to Complainant’s mark as it incorporates the LEIDOS mark in its entirety and merely adds the letter “c” and the generic top-level domain (“gTLD”) “.com.”
ii) Respondent has no rights and legitimate interests in the domain. Respondent is not commonly known by the terms of the domain, and Complainant has not authorized Respondent’s use of the mark in any way or for any purpose. Respondent does not use the domain in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.
iii) Respondent registered and is using the domain in bad faith. First, Respondent has failed to make any active use of the domain. Second, Respondent uses the domain to engage in an e-mail phishing scheme, whereby Respondent sends phishing e-mails to impersonate Complainant and attempts to secure personal information and money from unsuspecting persons. Complainant submitted evidence, which contains an e-mail and attachment received by an individual from career@leidosc.com with the subject matter “Career Opportunities at Leidos” in which Respondent poses as “Leidos Company Canada.” Third, Respondent registered the domain with constructive and/or actual knowledge of Complainant’s mark. Fourth, Respondent has ignored Complainant’s demand letters.
B. Respondent
Respondent has failed to submit a response in this proceeding. The Panel notes that Respondent registered the domain on January 21, 2016.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed 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 is a recognized global leader in solving important problems in national security, health, and infrastructure. Complainant has registered the LEIDOS mark with the USPTO (Reg. No. 4,937,101, filed Jan. 22, 2013, registered Apr. 12, 2016), which Complainant argues demonstrates its rights in the mark. The Panel notes Complainant's Attached Exhibit for a copy of Complainant’s USPTO registration. The Panel finds that trademark registrations with the USPTO suffice to demonstrate a complainant’s rights in its mark for the purposes of Policy ¶ 4(a)(i), and that the complainant’s rights date back to the filing date of the trademark application. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); Thompson v. Zimmer, FA 190625 (Forum Oct. 27, 2003) (“As Complainant’s trademark application was subsequently approved by the U.S. Patent and Trademark Office, the relevant date for showing ‘rights’ in the mark for the purposes of Policy ¶ 4(a)(i) dates back to Complainant’s filing date.”). Thus, the Panel finds that Complainant has established its rights in its mark per Policy ¶ 4(a)(i) dating back to January 22, 2013.
Complainant argues that the <leidosc.com> domain is confusingly similar to Complainant’s mark as it incorporates the LEIDOS mark in its entirety and merely adds the letter “c” and the gTLD “.com.” Panels have held that the addition of letters to a complainant’s mark does not serve to adequately distinguish a respondent’s domain from a complainant’s mark under Policy ¶ 4(a)(i). See Kelson Physician Partners, Inc. v. Mason, CPR003 (CPR 2000) (finding that <kelsonmd.com> is identical or confusingly similar to the complainant’s federally registered service mark, KELSON), available at http://domainhandbook.com/udrp2.html. Panels have also held that the affixation of the “.com” gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant). For these reasons, the Panel finds that Respondent’s domain is confusingly similar to Complainant’s 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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See 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); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain
names.”).
Complainant argues that Respondent has no rights and legitimate interests in the domain. Complainant asserts that Respondent is not commonly known by the terms of the domain, and that Complainant has not authorized Respondent’s use of the mark in any way or for any purpose. The Panel notes that the WHOIS information merely lists “hudson ngaite” as registrant and that Respondent has failed to provide any evidence for the Panel’s consideration. As such, the Panel finds no basis in the available record to find Respondent commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Forum Feb. 10, 2003) (stating “nothing in [the respondent’s] WHOIS information implies that [the respondent] is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Complainant argues that Respondent does not use the domain in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Complainant asserts that Respondent has failed to make any active use of the domain. The Panel observes Complainant's Attached Exhibit for a screenshot of the webpage that resolves from the domain. Panels have consistently held that a respondent lacks rights and legitimate interests in a disputed domain where it fails to make any active use of a domain. See Bloomberg L.P. v. Sandhu, FA 96261 (Forum Feb. 12, 2001) (finding that no rights or legitimate interests can be found when the respondent fails to use disputed domain names in any way). As such, the Panel finds that Respondent is not using the domain in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
While Complainant does not make any contentions that fall within the articulated provisions of Policy ¶ 4(b), the Panel notes that these provisions are meant to be merely illustrative of bad faith, and that Respondent’s bad faith may be demonstrated by ancillary allegations considered under the totality of the circumstances. See CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (“[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith”).
Complainant argues that Respondent has failed to make any active use of the domain. The Panel recalls Complainant's Attached Exhibit for a screenshot of Respondent’s resolving webpage. The Panel agrees that the passive holding of a domain name does not necessarily circumvent a finding that the domain name is being used in bad faith within the requirements of paragraph 4(a)(iii) of the Policy. Panels have decided that a respondent’s failure to make any active use of a domain constitutes bad faith registration and use under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy). See also Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (finding that in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the panel must give close attention to all the circumstances of the respondent’s behavior, and a remedy can be obtained under the Policy only if those circumstances show that the respondent’s passive holding amounts to acting in bad faith.) The particular circumstances of this case that the Panel has considered are:
i) Complainant is a recognized global leader in solving important problems in national security, health, and infrastructure. Complainant works extensively with the US government, foreign governments and selected commercial markets in the areas of national security, health, and engineering. Complainant reported $5.09 billion in revenue in 2015 well before the registration date of the disputed domain name. As of February 2016, Complainant has over 19,000 employees worldwide, with offices in almost every state in the United States and ten (10) countries. As such, the Complainant’s mark ‘LEIDOS’ is considered as being a well-known and reputable trademark prior to the registration of the disputed domain name.
ii) Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name.
Taking into account all of the above, the Panel concludes that Respondent’s passive holding of the disputed domain name constitutes bad faith under Policy, paragraph 4(a)(iii) and that Respondent is using the disputed domain name in bad faith.
Complainant contends that Respondent uses the disputed domain name to engage in an e-mail phishing scheme, whereby Respondent sends phishing e-mails to impersonate Complainant and attempts to secure personal information and money from unsuspecting persons. The Panel observes Complainant's Attached Exhibit, which allegedly contains an e-mail and attachment received by an individual from career@leidosc.com with the subject matter “Career Opportunities at Leidos” in which Respondent poses as “Leidos Company Canada.” Panels have determined that a respondent demonstrates bad faith where it uses a domain for the purpose of phishing for Internet users’ personal and/or private information. See Hess Corp. v. GR, FA 770909 (Forum Sept. 19, 2006) (determining that the respondent demonstrated bad faith registration and use because it was attempting to acquire the personal and financial information of Internet users through a confusingly similar domain name). As the Panel finds that Respondent’s alleged behavior constitutes phishing, in the absence of Respondent's adequate response, it finds that Respondent has engaged in bad faith registration and use.
Complainant asserts that Respondent registered the disputed domain with constructive and/or actual knowledge of Complainant’s mark. In so arguing, Complainant alleges that its trademark registration of the LEIDOS mark put Respondent on notice of Complainant’s mark and its rights therein. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel infers that, due to the fame of Complainant’s mark, Respondent had actual knowledge of the mark and Complainant’s rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).
For the reasons above, the Panel finds that Respondent registered and is using the disputed domain 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 <leidosc.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: August 4, 2016
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