Fortescue Metals Group Ltd. v. NEV POWER / FORTESCUE METALS GROUP
Claim Number: FA1607001682113
Complainant is Fortescue Metals Group Ltd. (“Complainant”), Western Australia. Respondent is NEV POWER / FORTESCUE METALS GROUP (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fmglcareers.com>, registered with eNom, 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 1, 2016; the Forum received payment on July 1, 2016.
On July 1, 2016, eNom, Inc. confirmed by e-mail to the Forum that the <fmglcareers.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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 July 7, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 27, 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@fmglcareers.com. Also on July 7, 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 August 4, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant Fortescue Metals Group Ltd registered the FORTESCUE mark (Reg. No. 1,152,054, registered Dec. 4, 2006).
Complainant uses the mark in connection with the sale of metals and their alloys.
The <fmglcareers.com> domain name was registered in an attempt to imitate an official Fortescue Metals Group careers website. Additionally, documents downloaded from the site are making unauthorized use of the Fortescue Metals Group name and company logo.
The website is in no way officially connected to Fortescue Metals Group Ltd and merely redirects to the official Fortescue Metals Group Ltd website.
The site’s purpose is to entice users to download an FMG branded document that requests personal information such as bank details and passport numbers. People are being directed to this site via fake Fortescue Metals Group job advertisements on popular job sites.
The WHOIS data for the site lists Fortescue Metals Group Ltd.’s CEO, Neville Power as the site contact. This is also false.
There is potential for damage to the reputation of Fortescue Metals Group Ltd. by this unauthorized use of the company name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the FORTESCUE mark through its registration of such mark in Australia. Complainant’s trademark is incorporated into its business name Fortescue Metals Group Ltd.
Respondent is not affiliated with Complainant and has not been authorized to use Complainant’s trademark or business name in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in its relevant trademark.
Respondent uses the at-issue domain name to address a website where users may download an FMG branded document that requests personal information such as bank details and passport numbers.
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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of its FORTESCUE mark with the Australian trademark authority establishes Complainant’s rights in such mark for the purposes of Policy 4(a)(i). See Capital One Financial Corp. v. Paydayloanz.com, FA1463493 (Forum Oct. 22, 2012) (concluding that Complainant has “secured rights in its CAPITAL ONE mark through its various global trademark registrations.”).
The at-issue domain name starts with the initials of Complainant’s business name (Fortescue Metals Group Ltd.). To these initials is added the descriptive term “careers” followed by the top-level domain name “.com.” However, the differences between Respondent’s domain name and Complainant’s FORTESCUE trademark are insufficient to distinguish one from the other for the purposes of the Policy as the “fmgl” portion of the domain name, given the totality of the circumstances, is indicative of Complainant and its FORTESCUE trademark. Therefore, the Panel finds that the <fmglcareers.com> domain name is confusingly similar to Complainant’s FORTESCUE mark under Policy ¶ 4(a)(i). See Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark); see also Allstate Insurance Company v. HI-LIVE / TRIAL VERSION, FA 1621874 (Forum July 8, 2015) (stating, “As a general rule … the addition of a gTLD [is] insufficient to distinguish a domain name from the mark at issue.”).
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 Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006).
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.
WHOIS information for the at-issue domain name lists “NEV POWER” as the domain name’s registrant and there is nothing in the record that suggests Respondent is commonly known by the <fmglcareers.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Respondent uses the at-issue domain name to attempt to pass itself off as Complainant in an effort to phish for certain personal information associated with visitors to Respondent’s <fmglcareers.com> website. These circumstances indicate that Respondent is involved in a phishing scheme. Such use of the confusingly similar domain name is neither a bona fide offering of goods and services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). 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).”).
Given the forgoing, Complainant satisfies its initial burden under Policy ¶ 4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name.
The domain name was registered and used in bad faith. As discussed below, Policy ¶ 4(b) specific bad faith circumstances are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
As mentioned above concerning Respondent’s rights and interests, Respondent uses the at-issue domain name to phish for personal information about visitors to the <fmglcareers.com> website. Such activity disrupts Complainant’s business. Respondent’s use of the domain name to phish for personal information thus demonstrates Respondent’s bad faith under Policy ¶ 4(b)(iii). See Textron Innovations Inc. v. DENNIS BROOKS, FA 1667443 (Forum May 4, 2016) (“The Panel find that phishing, in any form, is adequately disruptive, and finds that Respondent uses the <textron-incorporated.com> domain name in bad faith under Policy ¶ 4(b)(iii).”)
Furthermore, Respondent’s use of the <fmglcareers.com> domain to pass itself off as Complainant shows that Respondent has attempted to benefit from the goodwill associated with Complainant and its FORTESCUE trademark. Therefore, the evidence also demonstrates Respondent’s bad faith under Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <fmglcareers.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: August 5, 2016
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