Mystery Science, Inc. v. Hulmiho Ukolen / Poste restante
Claim Number: FA1903001835788
Complainant is Mystery Science, Inc. (“Complainant”), represented by Stevan Lieberman of Greenberg & Lieberman, LLC, Washington DC, USA. Respondent is Hulmiho Ukolen / Poste restante (“Respondent”), Finland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mysteryscience.org>, registered with Gransy, s.r.o.
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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 26, 2019; the Forum received payment on March 26, 2019.
On April 2, 2019, Gransy, s.r.o. confirmed by e-mail to the Forum that the <mysteryscience.org> domain name is registered with Gransy, s.r.o. and that Respondent is the current registrant of the name. Gransy, s.r.o. has verified that Respondent is bound by the Gransy, s.r.o. 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 April 5, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 25, 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@mysteryscience.org. Also on April 5, 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 26, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David A. Einhorn 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 provides online publications in the nature of e-books in the field of science education, featuring courses, lesson plans, classroom activities, teaching methods and instruction in the field of science. Complainant has rights in the MYSTERY SCIENCE mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 5,131,741, registered Jan. 31, 2017, filed Feb. 23, 2016). Respondent’s <mysteryscience.org> domain name is identical to Complainant’s mark as it merely adds the “.org” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <mysteryscience.org> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. 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 landing page that advertises Complainant’s competitors. Further, when users select these links, it foists what is believed to be malware onto prospective customers’ computers.
Respondent registered and uses the <mysteryscience.org> domain name in bad faith. Respondent registered the domain name for the purpose of garnering income from Complainant’s prominence. Further, upon information and belief, Respondent uses the domain name in connection with malware. Additionally, Respondent had actual knowledge of Complainant’s mark when it registered the domain name given the massive traffic to Complainant’s website, long use and virtual exclusivity of its use around the world.
B. Respondent
Respondent failed to submit a response in this proceeding. The Panel notes that Respondent registered the <mysteryscience.org> domain name on August 30, 2016.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant claims rights in the MYSTERY SCIENCE mark through its registration of the mark with the USPTO (e.g. Reg. No. 5,131,741, registered Jan. 31, 2017, filed Feb. 23, 2016). Registration of a mark 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 MYSTERY SCIENCE mark for the purposes of Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <mysteryscience.org> domain name is identical to Complainant’s mark as it merely adds the “.org” gTLD. Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See Tupelo Honey Hospitality Corporation v. King, Reggie, FA 1732247 (Forum July 6, 2017) (“Addition of a gTLD is irrelevant where a mark has been fully incorporated into a domain name and the gTLD is the sole difference.”). The Panel therefore finds that the <mysteryscience.org> domain name is identical to the MYSTERY SCIENCE mark under Policy ¶ 4(a)(i).
Complainant contends that Respondent has no rights or legitimate interests in the <mysteryscience.org> 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 mark. 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 “Hulmiho Ukolen / Poste restante” as the registrant, and nothing in the record indicates that Complainant authorized Respondent to use the mark for any purpose. Accordingly, the Panel agrees that Respondent is not commonly known by the <mysteryscience.org> domain name under Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent uses the domain name in connection with a landing page that advertises Complainant’s competitors. Using a domain name to display hyperlink advertisements to services relating to a complainant generally does not amount to any bona fide offering of goods or services or a legitimate noncommercial or fair use. See Barclays PLC v. Antwan Barnes, FA 1806411 (Forum Oct. 20, 2018) (“Using a domain name to offer links to services in direct competition with a complainant does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).”). Complainant provides a screenshot of the resolving webpage, which displays links such as “Kid Science” and “Science for Kids – Science for Kids.” Accordingly, the Panel agrees and finds that Respondent’s use of the domain name to offer competing hyperlinks fails to confer rights and legitimate interests in the domain name for the purposes of Policy ¶¶ 4(c)(i) or (iii).
Further, Complainant argues that when users select these links, it foists what is believed to be malware onto prospective customers’ computers. Using a domain name in connection with malware can indicate a lack of rights and legitimate interests in a domain name under Policy ¶¶ 4(c)(i) and (iii). See Coachella Music Festival, LLC v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1785199 (Forum June 5, 2018) (“Respondent uses the <coechella.com> domain name to direct internet users to a website which is used to attempt to install malware on visiting devices. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶4(c)(i), nor a non-commercial or fair use under Policy ¶4(c)(iii).”). Complainant provides a screenshot of the error message allegedly confronting users when they select a link on the webpage associated with the domain name, which states “WARNING! Your Flash Player may be out of date. Please install Open Software Updater to keep programs always up to date.” Respondent has provided no response to these allegations. Accordingly, the Panel agrees with Complainant and holds that Respondent’s use of the domain name to distribute malware does not amount to any bona fide offering of goods or services or a legitimate noncommercial or fair use under this Policy.
Thus, Complainant has also satisfied Policy ¶ 4(a)(ii).
Complainant claims that Respondent registered and uses the <mysteryscience.org> domain name in bad faith, as Respondent registered the domain name for the purpose of garnering income from Complainant’s prominence. Using a confusingly similar domain name to trade upon the goodwill of a complainant’s mark for commercial gain can evince bad faith under Policy ¶ 4(b)(iv). See Menard, Inc. v. Domain Admin / Whois Privacy Corp., FA 1785761 (Forum June 13, 2018) (“A respondent’s appropriation of a complainant’s mark in a confusingly similar domain name to divert potential consumers to its own web site is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum Jan. 8, 2018) (“Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the <geddiploma.org> domain name pursuant to Policy ¶ 4(b)(iv)”). As earlier described, Complainant has provided a screenshot of the resolving webpage, which displays links such as “Kid Science” and “Science for Kids – Science for Kids.” Accordingly, the Panel agrees that Respondent attempted to commercially benefit off Complainant’s mark in bad faith under Policy ¶ 4(b)(iv).
Next, Complainant avers that upon information and belief, Respondent uses the domain name in connection with malware. Using a domain name to install malware onto a users’ computer can show bad faith under Policy ¶ 4(a)(iii). See Google LLC v. Above.com Domain Privacy, FA1753950 (Forum Nov. 14, 2017) (Complainant demonstrates that Respondent engages in a phishing scheme to obtain users’ information and downloads malware onto the users’ computers. Using a confusingly similar domain name to phish for personal or financial information and downloading malware are both evidence of bad faith registration and use within the meaning of Policy ¶ 4(a)(iii)). Complainant provides a screenshot of the error message allegedly confronting users when they select a link on the webpage associated with the domain name, which states “WARNING! Your Flash Player may be out of date. Please install Open Software Updater to keep programs always up to date.” Respondent does not refute these allegations. Accordingly, the Panel agrees that Respondent’s apparent use of the domain name in connection with malware provides evidence of bad faith under Policy ¶ 4(a)(iii).
Further, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the MYSTERY SCIENCE mark at the time of registering the <mysteryscience.org> domain name. Actual knowledge of a complainant's rights in a mark prior to registering a confusingly similar domain name can evince bad faith under Policy ¶ 4(a)(iii). Respondent’s domain name, which is identical to Complainant’s mark, was registered after the filing date of Complainant’s trademark application. Respondent has not submitted a response denying knowledge of the mark at the time it registered this domain name.
Thus, the Panel infers that Respondent had actual knowledge of Complainant’s mark at the time of registration of its domain, demonstrating bad faith registration under Policy ¶ 4(a)(iii).
Complainant has therefore also satisfied 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 <mysteryscience.org> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: May 9, 2019
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page