Index Exchange Inc. v. KASHIF ISMAIL / none / (Name redacted)
Claim Number: FA1706001735480
Complainant is Index Exchange Inc. (“Complainant”), represented by Zak Muscovitch of Muscovitch Law P.C., Canada. Respondent is KASHIF ISMAIL / none / (Name redacted) (“Respondent”), Pakistan.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <casalemedia.com.co>, <casalemedia.online> and <casalemedia.top>, registered with Key-Systems, LLC.
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.
Preliminary Issue 1: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant contends that the disputed domain names were registered by Respondent because each disputed domain name was registered at roughly the same date and time and with the same registrar, Key Systems, LLC. Upon lifting the privacy service engaged by Respondent, the WHOIS information of record for <casalemedia.com.co> and <casalemedia.top> lists “KASHIF ISMAIL” as the registrant of both domain names. The <casalemedia.online> WHOIS information fraudulently lists (Name redacted), the officer and director of Complainant’s company, as the registrant. In a recent UDRP case involving the same parties and a similar phishing scheme, the Panel held that Respondent was the true registrant of the disputed domain name and had deceitfully used the name and address of the officer and director of Complainant’s company. See Casale Media, Inc. v. (Name redacted) / PERFECT PRIVACY, LLC, FA 1610001696719 (Forum Nov. 10, 2016). Here too, the Panel finds that Respondent is the registrant of each of the disputed domain names and has again forged the name of the officer and director of Complainant’s company in an attempt to evade accountability. The Panel therefore holds that the domain names are commonly controlled by a single Respondent who is using multiple aliases.
Preliminary Issue 2: Redaction of Respondent’s Identity
As stated above, recent URS and UDRP decisions held that Respondent reported fraudulent WHOIS registrant information by purporting to be Complainant’s company officer and director, (Name redacted). In those cases, the name of the Respondent was redacted so as not to force Complainant to name its own officer and director as a respondent in that preceding.
In the present case, Respondent used the same alias, (Name redacted), as the registrant of <casalemedia.online>. Complainant requests that the Panel redact the name “(Name redacted)” from the proceeding as a previous Panel has conclusively held that (Name redacted) is not a legitimate Respondent in a similar case. The Panel accepts Complainant’s request and chooses to redact the name of the officer and director of Complainant’s company from the Panel’s decision.
Complainant submitted a Complaint to the Forum electronically on June 12, 2017; the Forum received payment on June 12, 2017.
On June 13, 2017, Key-Systems, LLC confirmed by e-mail to the Forum that the <casalemedia.com.co>, <casalemedia.online> and <casalemedia.top> domain names are registered with Key-Systems, LLC and that Respondent is the current registrant of the names. Key-Systems, LLC has verified that Respondent is bound by the Key-Systems, 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 June 14, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 5, 2017 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@casalemedia.com.co, postmaster@casalemedia.online, postmaster@casalemedia.top. Also on June 14, 2017, 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 11, 2017, 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, an Internet marketing and advertising corporation, registered its CASALE MEDIA mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,205,802, registered Feb. 6, 2007), and has rights in the mark under Policy ¶ 4(a)(i). The disputed domain names are identical to Complainant’s mark because each merely appends a generic top-level domain (“gTLD”) to the fully incorporated mark.
ii) Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not licensed or otherwise authorized Respondent to use its CASALE MEDIA mark in any fashion and Respondent is not commonly known by any of the disputed domain names. Respondent attempts to conceal its true identity by engaging a privacy service as well as purporting to be an employee of Complainant. Further, Respondent is not using any of the disputed domain names in connection with any bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). Respondent’s <casalemedia.online> and <casalemedia.top> domain names resolve to inactive websites and the <casalemedia.com.co> domain name is used for a phishing scheme.
iii) Respondent has registered and is using the disputed domain names in bad faith. Respondent was recently party to both a UDRP and URS decision involving Complainant where the Panel held Respondent had registered domain names in bad faith and consequently, transferred the disputed domain names to Complainant. In the present case, Respondent has registered multiple infringing domains and fraudulently used the same employee name as a registrant. These circumstances indicate a pattern of bad faith registration and use under Policy ¶ 4(b)(ii). Moreover, Respondent attempts to disrupt the business of Complainant—under Policy ¶ 4(b)(iii)—by diverting Internet users searching for Complainant’s website to Respondent’s websites. Respondent is also attempting to attract Internet traffic and commercially benefit from the goodwill of the CASALE MEDIA mark by creating confusion as to the source, sponsorship, affiliation, or endorsement of its website by using the marks of Complainant. Two of the disputed domain names resolve to inactive websites while the other is used in connection with a phishing scheme. Finally, Respondent’s use of a privacy shield, fraudulent WHOIS information, and actual knowledge of Complainant’s rights in the CASALE MEDIA mark evince bad faith.
B. Respondent
Respondent did not submit a Response. However, the Panel notes that each disputed domain name was registered on August 26, 2016.
Complainant established that it had rights in the mark contained in the disputed domain names. Each of the disputed domain names is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain names.
Respondent registered and used the disputed domain names 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 registered its CASALE MEDIA mark with the USPTO (e.g. Reg. No. 3,205,802, registered Feb. 6, 2007), and has rights under Policy ¶ 4(a)(i). A USPTO registration confers rights in a mark. See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “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).”). Complainant has provided a Corporation Profile Report that indicates it is still the rightful owner of the name despite its company name change in 2015 from Casale Media, Inc. to Index Exchange, Inc. Thus, the Panel finds that Complainant has rights in the CASALE MEDIA mark under Policy ¶ 4(a)(i).
Complainant asserts that the disputed domain names are identical to Complainant’s mark because each merely eliminates the space and appends a gTLD to the fully incorporated mark. The addition of a gTLD is not sufficiently distinguishing to negate confusing similarity. See Reebok Int’l Ltd. v. Ohno, FA 511463 (Forum Aug. 23, 2005) (holding that the <reebok.net> domain name was identical to the complainant’s REEBOK mark because it fully incorporates the mark and merely adds a generic top-level domain); see also Oculus VR, LLC v. Ivan Smirnov, FA 1625898 (Forum July 27, 2015) (concluding that “Panels have consistently held that the addition of a gTLD does not distinguish a domain name from a mark, and that the removal of spaces between words of a mark is irrelevant.”). Here, the disputed domain names differ from Complainant’s CASALE MEDIA mark through the appendage of the gTLDs “.com.co,” “.online,” and “top” respectively and the elimination of the space. Therefore, the Panel holds that each of the disputed domain names is confusingly similar to Complainant’s mark.
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 asserts that Respondent has no rights or legitimate interests in the disputed domain names. Complainant claims it has not licensed or otherwise authorized Respondent to use its CASALE MEDIA mark in any fashion. A lack of contradicting evidence in the record that a respondent was authorized to use a complainant’s mark in a domain name can be evidence of a lack of rights and legitimate interests. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Additionally, WHOIS information can be used to support a finding under Policy ¶ 4(c)(ii) that a respondent is not commonly known by a disputed domain name, especially where a privacy service has been engaged. See CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015) (“The Panel notes that the WHOIS information merely lists a privacy service as registrant. In light of Respondent’s failure to provide any evidence to the contrary, the Panel finds there is no basis to find Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).”).The Panel notes that a privacy service was used by Respondent, but was lifted as a result of the commencement of this proceeding. The Panel also notes that after the privacy service was lifted, the WHOIS information of record lists “KASHIF ISMAIL” as the registrant of <casalemedia.com.co> and <casalemedia.top>. Further, according to the WHOIS information of record, Respondent also provided fraudulent information about the <casalemedia.online> registrant by listing the officer and director of Complainant’s company, (Name redacted). Therefore, the Panel holds that Respondent is not commonly known by the disputed domain names per Policy ¶ 4(c)(ii).
Complainant argues that Respondent has not made any bona fide offering of goods or services or any legitimate noncommercial or fair use of the disputed domain name because Respondent is using one of the resolving webpages to pass itself off as Complainant. Such use cannot be construed as bona fide offerings of goods or services or legitimate noncommercial or fair use of a domain name. See Kmart of Mich., Inc. v. Cone, FA 655014 (Forum Apr. 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website); see also Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name). Here, Complainant has provided screenshots of Respondent’s <casalemedia.com.co> website which displays Complainant’s CASALE MEDIA mark, as well as the stylized mark and information stating that the website is associated with Complainant. Therefore, the Panel agrees that this evidence supports a finding that Respondent has not made a bona fide offering of goods or services or legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) or (iii).
Next, Complainant argues that Respondent has not made any bona fide offering of goods or services or any legitimate noncommercial or fair use of the disputed domain names because the resolving webpages for <casalemedia.online> and <casalemedia.top> are inactive. Inactive holding does not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). Complainant has provided a screenshot of Respondent’s inactive webpages. Therefore, the Panel agrees that this evidence supports a finding that Respondent has not made a bona fide offering of goods or services or legitimate noncommercial or fair use of the disputed domain names under Policy ¶¶ 4(c)(i) or (iii).
Complainant further alleges that Respondent has registered the <casalemedia.com.co> domain name as part of a phishing scheme. A respondent’s registration and use of a domain name for the purpose of phishing for Internet users’ personal information is evidence of a lack of rights and legitimate interests in the name and a failure to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Morgan Stanley v. Zhange Sheng Xu / Zhang Sheng Xu, FA1501001600534 (Forum Feb. 26, 2015) (“The Panel agrees that the respondent’s apparent phishing attempt provides further indication that the respondent lacks any rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”); see also Virtu Financial Operating, LLC v. Lester Lomax, FA1409001580464 (Forum Nov. 14, 2014) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii) where the respondent was using the disputed domain name to phish for Internet users personal information by offering a fake job posting on the resolving website). Here, Complainant provides email evidence that Respondent used the <casalemedia.com.co> to lure Internet users into providing information under the guise of a Casale Media employee. Upon this evidence, the Panel finds that Respondent was attempting to impersonate an employee of Complainant for the purpose of collecting Internet users’ personal information and avert payment for Internet users’ services. As such, the Panel further holds that use of the disputed domain name for a phishing scheme violates Policy ¶ 4(a)(ii), 4(c)(i) and (iii).
Complainant contends that Respondent has engaged in bad faith registration in the instant case by registering multiple domains. Registration of multiple infringing domain names evinces bad faith under Policy ¶ 4(b)(ii). See Philip Morris USA Inc. v. RapidClic / VAUCLIN Olivier, FA1309001520008 (Forum Nov. 7, 2013) (finding that the respondent’s registration of multiple infringing domain names indicates a pattern of bad faith registration and use under Policy ¶ 4(b)(ii)). Here, Respondent has registered eight identical or confusing domain names. Additionally, Complainant provided a recent URS and UDRP Panel decision granting transfer of domain names from Respondent to Complainant upon a finding of Respondent’s bad faith registration. (Casale Media, Inc. v. (Name redacted) / Perfect Privacy, LLC, FA 1610001696719 (forum Nov. 10, 2016)). Therefore, the Panel holds that Respondent engaged in bad faith registration in the present case.
Complainant asserts that Respondent is disrupting its business by attempting to divert Internet users searching for Complainant’s site to Respondent’s sites. Attempting to disrupt a complainant’s business through diversion is viewed as evidence of bad faith under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). Complainant has provided screenshot evidence of Respondent’s resolving webpage which displays Complainant’s stylized mark and content describing Complainant’s business. As such, the Panel holds that Respondent has acted in bad faith under Policy ¶ 4(b)(iii).
Complainant contends Respondent has registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(iv) by attempting to attract Internet traffic and commercially benefit from the goodwill of the CASALE MEDIA mark. Use of a disputed domain name to create confusion as to the source, sponsorship, affiliation or endorsement of the content therein constitutes 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.”). Here, Complainant has provided screenshot evidence of <casalemedia.com.co> displaying similar content to Complainant in a color scheme and format identical to Complainant’s <casalemedia.com> website. Therefore, the Panel concludes that Respondent created confusion and therefore registered and used the domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant also contends that in light of the fame and notoriety of Complainant’s CASALE MEDIA mark, it is inconceivable that Respondent could have registered the disputed domain names without actual and/or constructive knowledge of Complainant’s rights in the mark. Arguments of bad faith based on constructive notice are irrelevant, however, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy.").
However, actual knowledge of a complainant's rights in the mark prior to registering the disputed domain name is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). A respondent has actual knowledge of a complainant’s rights in a mark when a complainant’s mark is famous. See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum March 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”). Here, Complainant’s CASALE MEDIA mark has created significant good will and consumer recognition and has been in use by Complainant since 2002. Therefore, due to the fame of Complainant’s mark, the Panel finds that Respondent had actual knowledge of Complainant’s rights when the domain names were registered and subsequently used.
Complainant contends that Respondent is not making an active use of the <casalemedia.online> and <casalemedia.top> resolving webpages. A respondent’s failure to make an active use of a disputed domain name’s resolving webpage is evidence of bad faith. See Caravan Club v. Mrgsale, FA 95314 (Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that [failure to make an active use] of a domain name permits an inference of registration and use in bad faith). Complainant has provided screenshot evidence of the disputed domain names’ inactive resolving webpages. 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. See 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.). See also 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).
The particular circumstances of this case that the Panel has considered are:
i) Complainant’s CASALE MEDIA trademark has a good reputation and is widely known, as evidenced by the fact that Complainant had a long and well established reputation in connection with the provision of Internet marketing and advertising services at the time of Respondent’s registration, and ii) Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain names. As the Panel finds such a failure to make an active use here, the Panel finds that Respondent uses the domains in bad faith under Policy ¶ 4(a)(iii).
Complainant contends that Respondent is using the disputed domain name in connection with a phishing scheme. Phishing for Internet user’s information under the guise of an affiliate of a complainant is evidence of bad faith under 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). Here, Complainant has provided email correspondence containing evidence of Respondent’s attempts to phish for Internet users’ personal banking information. Therefore, the Panel finds that Respondent engaged in a phishing scheme, and thus, acted in bad faith under 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 <casalemedia.com.co>, <casalemedia.online>, and <casalemedia.top> domain names be TRANSFERRED from Respondent to Complainant.
Ho Hyun NAHM, Esq., Panelist
Dated: July 19, 2017
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page