Actifio, Inc. v. james miller / Not Acceptable
Claim Number: FA1607001683935
Complainant is Actifio, Inc. (“Complainant”), Massachusetts, United States. Respondent is james miller / Not Acceptable (“Respondent”), Washington, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <actifioinc.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 15, 2016; the Forum received payment on July 15, 2016.
On July 19, 2016, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <actifioinc.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 July 19, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 8, 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@actifioinc.com. Also on July 19, 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 12, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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
[a.] The domain ‘actifioinc.com’ represents a form of the Company’s registered trademark and is being used to fraudulently represent the respondent as the trademark owner and for the purposes of which the trademark was granted. The respondent is also utilizing the Company’s name, mailing address, web site, branding, and other collateral to represent itself as the complainant.
[b.] The respondent has purchased and is utilizing the ‘actifioinc.com’ domain to directly impersonate Actifio, Inc. for the purpose of criminal activity, including but not limited to a “money mule” scam.
The respondent has posted fraudulent job postings to multiple job hunting sites as well as directly contacted unemployed job seekers on various States’ unemployment sites.
The respondent is listed in the artists against 419 ("aa419") database as the registrant of other fraudulent web sites (https://db.aa419.org/fakebanksview.php?key=113543).
The respondent has then, utilizing multiple personas and email accounts within the ‘actifioinc.com’ domain represented itself as the complainant and lured victims into providing personal and financial information for a job offering that does not exist. After obtaining this information, the respondent or respondent’s associates ask for monies of questionable origin to be deposited in the victims’ accounts.
Numerous victims have contacted the complainant. The respondent’s criminal activity is ongoing and as such the complainant requests this matter be handled in an expedited manner to protect future victims.
[c.] Actifio, Inc. believes the respondent has registered the ‘actifioinc.com’ name for the sole purpose of conducting criminal activity while impersonating the complainant and infringing upon the complainant’s trademark and intellectual property. Actifio, Inc. further believes that the respondent has deliberately supplied a false and non-existent address as the domain’s registrant.
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 respect of the domain name; and
(3) the domain name has been registered and 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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(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.”).
As the reader has no doubt noted, Complainant’s Complaint is one of the shortest ever seen by this Panel. In order to understand some of the statements, the Panel has conducted an independent investigation. This includes trying to view the resolving website at the disputed domain name (there was none) because Complainant did not provide copies or describe the circumstances fully. This Panel did not send the matter back for additional material in light of Complainant’s request for an expedited resolution because Respondent is impersonating Complainant.
Complainant is a leader of copy data storage technology utilized by large enterprises and governments to reduce the amount of storage required while providing advanced data protection. Complainant registered the ACTIFIO mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,050,274, registered Nov. 1, 2011). Registration of a mark with a governmental authority (such as the USPTO) adequately demonstrates a Complainant’s rights to a mark under Policy ¶4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶4(a)(i)). Complainant has established its rights in the ACTIFIO mark.
Complainant claims the <actifioinc.com> domain is confusingly similar to its mark. The domain adds the generic term “inc” and the generic top-level domain (“gTLD”) “.com.” A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. Likewise, the absence of spaces (between “ACTIFIO” and “inc”) must be disregarded under a Policy ¶4(a)(i) analysis because domain name syntax prohibits spaces. Adding the generic term “inc” does not adequately distinguish the disputed domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Magnum Piering, Inc. v. Mudjackers, D2000-1525 (WIPO Jan. 29, 2001) (finding that the generic term “INC” does not change the confusing similarity); see also Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Respondent’s domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) satisfied.
Complainant must first make a prima facie case 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 has 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.”).
While Complainant does not present any explicit argument Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii), it seems moderately evident the registrant’s name (“James Miller” of “Not acceptable” … whatever that means) bears no obvious relationship to the domain name in question. Absent other information (or explanation) by Respondent, the Panel concludes Respondent is not commonly known by the domain name solely based upon the information in the WHOIS. See Am. W. Airlines, Inc. v. Paik, FA 206396 (Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”). Complainant has (barely) met its burden under Policy ¶4(c)(ii).
Complainant claims Respondent uses the domain solely to impersonate Complainant for criminal purposes, including but not limited to a “money mule” scam (there is no resolving web site at the domain name). Complainant has not provided any detailed evidence about the “money mule” scam. There is no doubt Respondent is issuing emails impersonating Complainant and its personnel to offer third parties fictitious employment (and to get their personal information, which suggests there may a phishing scheme going on as well). A respondent lacks rights and legitimate interests in a domain when it uses the domain to either engage in illegal activity or operate a phishing scam. See Nycomed Danmark ApS v. Diaz, D2006-0779 (WIPO Aug. 15, 2006) (concluding that the respondent’s use of a disputed domain name to operate a website promoting an illegal food supplement was not a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(iii)); see also 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).”). Respondent’s use of its domain name constitutes neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶¶4(c)(i) and (iii).
The Panel finds Policy ¶ 4(a)(ii) satisfied.
While Complainant does not make any contentions that fall within the articulated provisions of Policy ¶ 4(b), these provisions are meant to be merely illustrative of bad faith. Respondent’s bad faith may be demonstrated by ancillary allegations considered under the totality of the circumstances. 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).
Complainant claims Respondent registered the domain for the sole purpose of conducting criminal activity while impersonating Complainant. Respondent phishes for the personal and financial information of Internet users and, after obtaining this information, requests monies of questionable origin to be deposited in the victims’ accounts (although no copies of such emails were provided, Respondent did not contest this). Using a domain to engage in illegal and/or phishing activities is evidence of bad faith registration and use. See Wells Fargo & Co. v. Maniac State, FA 608239 (Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers); see also Minn. State Lottery v. Mendes, FA 96701 (Forum Apr. 2, 2001) (finding bad faith because it would be illegal for the respondent to use the domain name <mnlottery.com> without government approval). Complainant provided copies of the emails asking for personal information and offering fictitious employment. It seems clear Respondent registered and is using the domain in bad faith.
Complainant claims Respondent deliberately supplied a false and non-existent address for the domain’s registrant. This is a fairly conclusory allegation, which Respondent has failed to contest. A quick check on Google maps was unable to find the address (and Complainant could have included this information with its complaint). Another check on the post office web site confirmed there was no such address (once again, something that could have been included with the complaint). This Panel has long held providing false WHOIS information (or using a privacy service) raises a rebuttable presumption of bad faith in the commercial context. Respondent has done nothing to rebut that presumption. Therefore, this Panel finds Respondent registered and uses the domain name in bad faith.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <actifioinc.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Wednesday, August 17, 2016
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page