WestRock Shared Services, LLC v. NICOLE A CERVATES / Microsoft
Claim Number: FA1903001833627
Complainant is WestRock Shared Services, LLC (“Complainant”), represented by Brandon M. Ress of King & Spalding LLP, Texas, USA. Respondent is NICOLE A CERVATES / Microsoft (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <westrook.com>, registered with Google 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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 12, 2019; the Forum received payment on March 12, 2019.
On March 12, 2019, Google LLC confirmed by e-mail to the Forum that the <westrook.com> domain name is registered with Google LLC and that Respondent is the current registrant of the name. Google LLC has verified that Respondent is bound by the Google 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 March 13, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 2, 2019 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@westrook.com. Also on March 13, 2019, 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 April 3, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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
The Complainant is one of the world’s largest paper and packaging companies with over $19 billion in annual revenue and approximately 50,000 employees in 30 countries. Complainant has rights in the WESTROCK trademark through its registration of the trademark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 5,115,300, registered Jan. 3, 2017). Respondent’s <westrook.com> domain name is confusingly similar to Complainant’s mark as it merely misspells the mark by replacing the letter “c” with the visually similar letter “o” and adding the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <westrook.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the trademark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the domain name in connection with a fraudulent email scheme designed to impersonate Complainant and trick consumers into believing Respondent is Complainant.
Respondent registered and uses the <westrook.com> domain name in bad faith. Respondent uses the domain name in a fraudulent scheme targeting Complainant’s customers using email addresses associated with the domain name to seek payment on fraudulent invoices to bank accounts under Respondent’s control. Further, Respondent engages in typosquatting by intentionally misspelling Complainant’s WESTROCK trademark. Finally, Respondent had actual knowledge of Complainant’s trademark when registering the domain name as shown by Respondent using the domain name to pass off as Complainant over email.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the following U.S. trademark registrations:
No. 5,115,300 WESTROCK (word), registered January 3, 2017 for goods and services in classes 1, 7, 16, 20, 21, 35, 37, 39, 40;
No. 5,219,057 WESTROCK (word & device), registered June 6, 2017 for goods and services in classes 1, 7, 16, 20, 21, 35, 37, 39, 40.
Respondent registered the <westrook.com> domain name on November 21, 2018.
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 claims rights in the WESTROCK trademark through its registration of the trademark with the USPTO (e.g. Reg. No. 5,115,300, registered Jan. 3, 2017). Registration of a trademark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that Complainant has established rights in the WESTROCK trademark for the purposes of Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <westrook.com> domain name is confusingly similar to Complainant’s trademark as it merely misspells the trademark by replacing the letter “c” with the visually similar letter “o” and adding the “.com” gTLD. Replacing a letter in a mark and adding a gTLD are generally considered insufficient to distinguish a domain name from a mark for the purposes of Policy ¶ 4(a)(i). See Vanguard Trademark Holdings USA LLC v. Shuai Wei Xu / Xu Shuai Wei, FA 1784238 (Forum June 1, 2018) (“Respondent arrives at each of the disputed domain names by merely misspelling each of the disputed domain names and adding the gTLD ‘.com.’ This is insufficient to distinguish the disputed domain names from Complainant’s trademark.”). The Panel agrees with the Complainant that the letter “o” may well be mistaken for a “c” in a quick online view of an e-mail address, and therefore finds that the <westrook.com> domain name is confusingly similar to the WESTROCK mark under Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). 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 contends that Respondent has no rights or legitimate interests in the <westrook.com> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the trademark. Relevant information includes the WHOIS, assertions by a complainant regarding the nature of its relationship with a respondent, and other evidence in the record to support these assertions. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same); see also Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sep. 4, 2018) (concluding that Respondent was not commonly known by the disputed domain name where “the WHOIS of record identifies the Respondent as “Bhawana Chandel,” and no information in the record shows that Respondent was authorized to use Complainant’s mark in any way.”). The WHOIS identifies “NICOLE A CERVATES / Microsoft” as the registrant, and nothing in the record indicates that Complainant authorized Respondent to use the trademark for any purpose. Accordingly, the Panel agrees that Respondent is not commonly known by the <westrook.com> domain name under Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent uses the domain name in connection with a fraudulent email scheme designed to impersonate Complainant and trick consumers into believing Respondent is Complainant. Using a confusingly similar domain name to phish for personal/financial information by passing off as a complainant in emails can evince a lack of rights and legitimate interests under Policy ¶¶ 4(c)(i) and (iii). See Caterpillar Inc. v. ruth weinstein, FA 1770352 (Forum Mar. 7, 2018) (“Use of a disputed domain name in an attempt to pass itself off as a complainant and to conduct a phishing scheme is indicative of a failure to use said domain name in connection with a bona fide offer of goods and services per Policy ¶ 4(c)(i) or a legitimate noncommercial or otherwise fair use per Policy ¶ 4(c)(iii).”). The Panel notes that Complainant provides copies of various emails sent using the <westrook.com> domain name, which shows emails sent from an individual under the WESTROCK trademark and logo requesting payment of past due invoices. Accordingly, the Panel finds that Respondent uses the domain name in connection with a phishing scheme when conducting its Policy ¶¶ 4(c)(i) and (iii) analysis, evidence of lacking rights and legitimate interests in the domain name.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which bad faith may be found. See, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000). The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. See, e.g., Match.com, LP v. BillZag and NWLAWS.ORG, D2004-0230 (WIPO June 2, 2004). While Complainant has not made any arguments that would fit within the bounds of Policy ¶ 4(b) elements, the Panel therefore considers Respondent’s actions under a nonexclusive inquiry of Policy ¶ 4(a)(iii).
Complainant claims that Respondent uses the domain name in a fraudulent scheme targeting Complainant’s customers using email addresses associated with the domain name to seek payment on fraudulent invoices to bank accounts under Respondent’s control. Using a confusingly similar domain name to pass off as a complainant and phish for personal or financial information can indeed provide evidence of bad faith registration and use under the Policy. See Airbnb, Inc. v. JAMES GRANT, FA1760182 (Forum Dec. 28, 2017) (“Using a misleading email address to defraud unwary customers certainly constitutes bad faith.”). The Panel notes that Complainant has provided copies of various emails sent using the <westrook.com> domain name, which shows emails sent from an individual, adding the WESTROCK trademark and logo, with “cc” e-mails that looks as the correct spelled e-mail addresses from the Complainant, requesting payment of past due invoices. The Panel therefore agrees accordingly that Respondent’s apparent phishing scheme does not amount to any good faith use per Policy ¶ 4(a)(iii).
Next, Complainant avers that Respondent engages in typosquatting by intentionally misspelling Complainant’s WESTROCK trademark. A finding of typosquatting can be evince bad faith under Policy ¶ 4(a)(iii). See Adorama, Inc. v. Moniker Privacy Services, FA1503001610020 (Forum May 1, 2015) (“Respondent has also engaged in typosquatting, which is additional evidence of bad faith registration and use under Policy ¶ 4(a)(iii). Respondents who capitalize on common typing errors engage in bad faith registration under Policy ¶ 4(a)(iii).”). Here, Respondent replaced the letter “c” in the WESTROCK trademark with the letter “o” and made no other changes to the trademark within the domain name. Thus, the Panel finds that Respondent’s changes of Complainant’s trademark in the domain name further demonstrates Respondent’s bad faith.
Finally, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the WESTROCK trademark at the time of registering the <westrook.com> domain name. Actual knowledge of a complainant's rights in a trademark prior to registering a confusingly similar domain name can evince bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Complainant contends that Respondent’s knowledge can be inferred given Respondent’s use of the domain name to pass off as Complainant over email. The Panel finds that the actual use of the disputed domain name clearly indicates that Respondent had prior knowledge of the Complainant’s trademark rights, demonstrating bad faith registration 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 <westrook.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: April 13, 2019
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