Xerafy (Shanghai) Co., Ltd. v. Dennis KHOO / Khoo Hock Chuan / personal
Claim Number: FA1905001843266
Complainant is Xerafy (Shanghai) Co., Ltd. (“Complainant”), represented by Zoe Axelrod Cates, New York, USA. Respondent is Dennis KHOO / Khoo Hock Chuan / personal (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <xerafy.com> and <xerafy.co> registered with GoDaddy.com, LLC.
Each undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as a Panelist in this proceeding.
Scott R. Austin, Presiding Panelist
Paul M. DeCicco, Panelist
Michael A. Albert, Panelist
Complainant submitted a Complaint to the Forum electronically on May 15, 2019; the Forum received payment on May 15, 2019.
On May 16, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <xerafy.com> and <xerafy.co> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 May 21, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 10, 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@xerafy.com, postmaster@xerafy.co. Also, on May 21, 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.
A timely Response was received and determined to be complete on May 28, 2019.
On May 30, 2019, pursuant to Respondent's request to have the dispute decided by a three-member Panel, the Forum appointed Scott R. Austin as the Chair of the three-member Panel along with Michael A. Albert and Paul M. DeCicco as Panelists.
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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following contentions:
1. Complainant, Xerafy (Shanghai) Co., Ltd., a China corporation, is successor in interest since 2017 to Shanghai YAO-CHUAN
INFORMATION TECHNOLOGY CO., LTD., a China corporation, which operates a website for the sale of electronic RFID tags.
2. Complainant has asserted facts establishing common law rights through its predecessor in interest in the mark XERAFY since at least as early as December 2009 through use of the term in commerce and as part of the disputed domain name <xerafy.com>, registered January 11, 2010, to run a fully operational website for the sale of its electronic RFID tags at <www.xerafy.com> to service customers worldwide, as well as post information and news about Complainant and its company.
3. Complainant has established trademark rights in the mark XERAFY VERIFY. QUANTIFY. through its international trademark registration filed under the Madrid Protocol in China and the European Union (Reg. No. 1,113,390), registered March 13, 2012 and filed to extend protection of Complainant’s Mark with the United States Patent and Trademark Office (“USTPO”) for US Trademark Registration (Reg. No. 4,294,014) registered on Feb. 26, 2013 for “Electronic tags for goods; computer software recorded on computer media for asset tracking and system management; integrated circuit cards, namely, blank smart cards; downloadable computer programs for asset tracking and system management; antennas; transmitters of electronic signals; printed circuits; bar code readers; data processors; data processing equipment in the nature of acoustic couplers.” in International Class 9.
4. The mark “Xerafy Verify. Quantify.” is the subject of incontestable United States Federal Trademark Registration No. 4,294,014.
5. Complainant has also filed for the mark “Xerafy” in China, on December 1, 2018 (Application Ser. No. 35405748), which application is currently pending, and will proceed with registration under the Madrid Protocol.
6. Respondent is a former employee and CEO of Complainant who was let go from the Complainant company on November 28, 2018 but had access and control of the disputed domain names before Respondent was terminated from the company.
7. During the time in which Respondent was employed by Complainant, Respondent had control and/or access to the domains and the ability to transfer control and/or ownership of the domains.
8. Respondent inappropriately registered the disputed domain name <xerafy.com> in Respondent’s individual name instead of Complainant’s name without authorization. Respondent had no agreement with Complainant that Respondent would in any way retain ownership or control of the domain names in the event that Respondent was no longer employed by Complainant.
9. On Nov. 30, 2018, two days after Respondent’s termination from his position as CEO of Complainant on November 28, 2018, Respondent registered the disputed domain name <xerafy.co> in his individual name without authorization from Complainant.
10. Respondent retains control of the disputed domain names and has refused to relinquish that control when demanded by Complainant.
11. Complainant through its longstanding use of its trademarks has made considerable business advertising expenditures and achieved significant annual sales and as such has invested substantial resources in promoting the goods and services marketed under such marks over a period of over nine years.
12. Respondent registered the <xerafy.co> domain name on November 30, 2018; nearly nine (9) years after Complainant began using the mark XERAFY in commerce.
13. Respondent’s disputed domain names <xerafy.com> and <xerafy.co>, which are confusingly similar to Complainant’s marks, belong to the Complainant company Xerafy (Shanghai) Co., Ltd.
14. Respondent is not commonly known by the disputed domain names <xerafy.com> or <xerafy.co>, nor has Complainant authorized Respondent’s use of the disputed domain names or Complainant’s trademarks.
15. Respondent has no legal right to use Complainant’s trademarks, or the domain names, yet has refused to transfer ownership of the domain names back to Complainant, which shows that Respondent lacks rights and legitimate interests in the domain name.
16. Respondent lacks rights and legitimate interests in the <xerafy.com> and <xerafy.co> domain names because Respondent uses one of the disputed domain names to offer Complainant’s products for sale.
17. Respondent by registering the disputed domain names in his individual name and not in the name of the Complainant company he managed, registered the domain names in bad faith and his continued refusal to turn them over to Complainant shows he is using the disputed domain names in bad faith.
18. Respondent’s refusal to allow access to Complainant’s website by retaining control over the disputed domain names to leverage his position in an ongoing shareholder dispute with Complainant evinces bad faith and is intended to harm the business of Complainant.
19. Respondent uses the <xerafy.com> and <xerafy.co> domain names in bad faith because Respondent attempts to use such domain names to disrupt Complainant’s business.
20. Respondent has lied in email communication, plainly stating that he did not possess the disputed domain names, when Whois data continues to list him as the registrant of record for both disputed domain names.
B. Respondent makes the following contentions:
1. Complainant does not have rights in the <xerafy.com> and <xerafy.co> domain names because the registered mark XERAFY VERIFY. QUANTIFY. is a tagline for the “Identification of Assets” and Complainant has no rights in XERAFY alone.
2. Complainant further has no rights in the disputed domain names because part of a pending asset sale included domain names and the disputed domain names were not part of the agreed upon domain name transfers.
3. Respondent has rights in the disputed domain names as Respondent originally registered the disputed domain names in connection with the founding of the business.
4. Complainant lacks rights and legitimate interests in the disputed domain names because Complainant is not a legitimate owner or shareholder of the company.
5. Respondent does have rights and legitimate interests in the disputed domain names because the disputed domain names are in no way infringing on the trademark and Complainant is still able to access the <xerafy.com> domain name.
6. Respondent did not register or use the <xerafy.com> and <xerafy.co> domain names in bad faith because the disputed domain names were registered on January 11, 2010.
7. The XERAFY VERIFY. QUANTIFY. mark was registered on February 26, 2013.
8. Complainant has provided no evidence to support its claims that Respondent acted in bad faith.
Complainant has asserted facts establishing Complainant’s common law trademark rights in the XERAFY mark though Exhibits showing use of its website since 2010 using the mark, supporting over 9 years of continuous use, combined with its various international trademark registrations as Exhibits annexed to the Complaint, sufficient to establish trademark rights in the mark XERAFY VERIFY. QUANTIFY.
Respondent’s disputed domain names, <xerafy.com> and <xerafy.co> are confusingly similar to Complainant’s marks, because they were chosen and obtained by its former CEO to incorporate Complainant’s XERAFY mark in its entirety and the predominant and distinctive fanciful portion of its XERAFY VERIFY. QUANTIFY. mark in each disputed domain name and add only the generic TLDs “.com” and “.co” As such, this addition does not distinguish the disputed domain name from Complainant’s marks.
Respondent’s Whois information identifies Respondent by his Chinese name Khoo Hock Chuan or his English alias Dennis KHOO as registrant of the disputed domain names, which evinces that he registered the disputed domains in his personal name instead of the Complainant’s company name without authorization by the Complainant. However, the fact that the same personal email address is used, same telephone and same postal code, is proof that the two registrant names identify the same person and, therefore, one Respondent.
Respondent is not commonly known by Complainant’s XERAFY trademark or its XERAFY VERIFY. QUANTIFY. trademark, nor is Respondent licensed by Complainant to use either of the marks or authorized to use either of the disputed domain names.
Respondent is not an authorized vendor, supplier, or distributor of Complainant’s goods or services.
Respondent has not used the disputed domain name for a bona fide offering of goods or services, or for a legitimate noncommercial or fair use.
Respondent registered and is using the disputed domain names <xerafy.com> and <xerafy.co> in bad faith because Respondent attempts to disrupt Complainant’s business and otherwise.
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.
Preliminary Issue 1: Concurrent Court Proceedings
In situations where concurrent court proceedings are pending, as is the situation with respect to the instant Complaint, prior panels have chosen to proceed with the UDRP filing. See eProperty Direct LLC v. Miller, FA 836419 (Forum Jan. 3, 2007) (holding that the panel could decide the dispute under Rule 18(a) of the Policy “since the legal proceedings referred to by the parties appear to be concluded and Orders made. Moreover,… those Orders do not touch directly on the disposition of the disputed domain name or on the parties’ intellectual property rights.”); see also W. Fla. Lighting v. Ramirez, D2008-1122 (WIPO Oct. 2, 2008) (deciding to proceed under the UDRP despite concurrent court proceedings because “the Panel does not find that it is necessary or advantageous to await a judicial determination of the issues raised in the federal litigation in order to reach a decision strictly under the Policy. This administrative proceeding under the Policy concerns only control of the Domain Name, not any of the other remedies at issue in the federal litigation. It is not binding on the court, and it does not preclude the prosecution of any claims, defenses, or counterclaims in the federal litigation”); see also Mary’s Futons, Inc. v. Tex. Int’l Prop. Assocs., FA 1012059 (Forum Aug. 13, 2007) (choosing to proceed under the UDRP despite concurrent court proceedings for multiple reasons, including that the proceedings appeared to be filed in a court that did not commonly adjudicate intellectual property issues and that the court proceedings were filed by the respondent on the same day the response in these proceedings was filed).
The Panel finds that the materials submitted by Respondent in its Response Annex do not appear to involve court proceedings other than Respondent’s employment claim set forth in Resp. Annex Exhibit F under the heading “Termination and Compensation” recently filed by Respondent against the Complainant in the Singapore State Courts Employment Claims Tribunal. See Resp. Annex, Ex. F. Respondent’s Annex Exhibit E, providing a copy of a counsel letter concerning questions over the share price to be obtained for shareholders of the Complainant (including the Respondent as a 45% majority shareholder) through a sale of shares by a receiver and questioning the transparency and adequacy of the sale process does not appear to be a court proceeding and neither this dispute nor the Case Management Conference Notice submitted by Respondent for its pending employment claim show court proceedings involving the adjudication of intellectual property interests. As such, the Panel agrees with prior panels that have proceeded with a case presented where, as here, the proceedings submitted as evidence by Respondent appear to be filed in an employment disputes court that does not commonly adjudicate intellectual property issues. Mary’s Futons, Inc. v. Tex. Int’l Prop. Assocs., FA 1012059 (Forum Aug. 13, 2007)
Preliminary Issue 2: Multiple Respondents
In the instant proceedings, Complainant has alleged that the persons referenced on the Whois report as Registrants which control the domain names at issue are effectively the same person, operating under slightly different but related names, i.e. an alias or two sides of the same coin. 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 and the Panel, upon review of the evidence agrees that the Whois search results for the <xerafy.com> domain name with registrar GoDaddy displays “Dennis KHOO” as Registrant Name and “Khoo Hock Chuan” as Registrant Organization. Similarly, the Whois results for the <xerafy.co> domain name display “Dennis Khoo,” as Registrant Name and “personal” as Registrant Organization. Exhibits in the Annex to the Response submitted by Respondent admit that Dennis Khoo and Khoo Hock Chuan are one in the same person and that Khoo Hock Chuan is the name of an individual and not an organization or juridical entity. Compare Resp. Annex Ex. E (Shareholders Counsel letter referencing termination of “the CEO and major shareholder of the business (one of our clients, Dennis Khoo)” and Resp. Annex Ex. G (Argument by Respondent to Panel stating, “the domain names www.xerafy.com and www.xerafy.co have been registered previously by the majority Shareholder (45%) and CEO of the Xerafy, Khoo Hock Chuan”). Complainant further supports this contention by corresponding Whois evidence that reveals each disputed domain name bears the same registrant email address, registrant telephone number, and same state/province, postal code, and country for their physical mailing address. The Panel finds, therefore, that as Complainant contends, Khoo Hock Chuan and Dennis Khoo are respectively the Chinese and English names of the same individual and that individual is the current registrant controlling each of the disputed domain names in this proceeding.
Complainant claims that it has established common law rights in the mark XERAFY through its continued operation of its website using the domain name <xerafy.com> accessed at the URL <www.xerafy.com> to service customers worldwide, as well as post information and news about Complainant and its company since at least as early as December 2009. Common-law rights, such as Complainant's rights in the XERAFY mark, are uniformly found to be sufficient grounds for filing a complaint under the UDRP. See, e.g., Douglas Forrester v. Chris Hoffman d/b/a Planned Childhood, Inc., FA0170644 (Forum Sep. 3, 2003) (holding “It is well established that registration of a mark is not an essential element of proving that a complainant ‘has rights' in a mark pursuant to Policy ¶ 4(a)(i)” and that complainant's use of his common law mark DOUG FORRESTER for fundraising services is sufficient to grant standing under the UDRP).
Complainant has also established rights in the related mark XERAFY VERIFY. QUANTIFY. based upon its use and registration of the mark through its international trademark registration filed under the Madrid Protocol in China and the European Union (Reg. No. 1,113,390), registered March 13, 2012, and filed to extend protection of that mark in the US through the United States Patent and Trademark Office (“USTPO”) under US Trademark Registration (Reg. No. 4,294,014) registered on Feb. 26, 2013, for “Electronic tags for goods; computer software recorded on computer media for asset tracking and system management; integrated circuit cards, namely, blank smart cards; downloadable computer programs for asset tracking and system management; antennas; transmitters of electronic signals; printed circuits; bar code readers; data processors; data processing equipment in the nature of acoustic couplers.” in International Class 9.
Registration with the USTPO generally establishes a complainant’s rights in the mark for the purposes of Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Complainant has provided in the Annex to its Complaint copies of its registration of the mark with the USTPO (Reg. No. 4,294,014) on Feb. 26, 2013. Accordingly, the Panel finds that Complainant has established trademark rights in the XERAFY and XERAFY VERIFY. QUANTIFY. marks for the purposes of Policy ¶ 4(a)(i).
The Panel notes that the <xerafy.com> and <xerafy.co> disputed domain names each incorporate in their entirety the fanciful term “xerafy” which is the dominant, distinctive portion of Complainant’s XERAFY VERIFY. QUANTIFY mark with the addition of only the generic top-level domains (“gTLD”) “.com” or “.co” respectively. A disputed domain name which deletes some common or generic term portions of a complainant’s mark but still retains the dominant portion will sustain a finding of confusing similarity, especially when adding only a gTLD, which is insufficient to overcome a finding of confusing similarity under Policy ¶ 4(a)(i). See Huron Consulting Group Inc. v. David White, FA 1701395 (Forum Dec. 6, 2016) (finding that Respondent’s <huroninc.net> domain name is confusingly similar to the HURON CONSULTING GROUP and HURON HEALTHCARE marks under Policy ¶ 4(a)(i) because in creating the domain name, the respondent contains the dominant portion of the marks and appends the term “inc” and a gTLD). The Panel finds that the inclusion of “xerafy” in each of the disputed domain names constitutes inclusion of Complainant’s common law mark XERAFY in its entirety and the dominant portion of Complainant’s registered XERAFY VERIFY. QUANTIFY mark, and finds, therefore, that the disputed domain names are confusingly similar to a trademark in which the Complainant has established rights. Complainant has satisfied the first requirement of Paragraph 4(a) of the Policy.
Rights and Legitimate Interests: Policy ¶ 4(a)(ii).
Respondent lacks rights and legitimate interests in respect of the at-issue domain names.
The Panel is mindful that 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), then the burden shifts to Respondent to show it does have rights or legitimate interests. 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”).
Under the UDRP, the respondent's rights or legitimate interests to the domain name may be established by demonstrating any of the following three conditions: “(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” Policy ¶ 4(c)(i) - (iii).
The Panel finds based on the Whois search results and the status of Respondent as registrant as discussed above under Preliminary Issue 2, that Respondent is not commonly known by either of the disputed domain names and has used Complainant’s marks for the disputed domain names without any rights in the marks or authorization from Complainant to use them and thereby fails to meet the requirements of Paragraph 4(c)(ii) of the Policy.
Complainant argues that Respondent fails to use the <xerafy.com> and <xerafy.co> domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent is intentionally using the domain names to harm Complainant and its company by refusing to transfer control and/or ownership of the domain names back to Complainant following Respondent’s departure from Complainant’s company. Complainant also contends that Respondent without authorization or license from Complainant continues to retain the disputed domain name <xerafy.com> to offer Complainant’s products for sale after leaving the Complainant’s company, which is now unable to update or properly access its domain name used for its website. Complainant further contends that Respondent’s refusal to transfer ownership and control of the domain names back to Complainant, leaving it unable to access its domain while Respondent controls it is an attempt to intentionally harm Complainant, and disrupt its business. Such use evinces a lack of a bona fide offering or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See The Lincoln Electric Company v. Privacy protection service - whoisproxy.ru, FA 1651493 (Forum Jan. 13, 2016) (noting that, as Respondent used the disputed domain to promote Complainant’s distributor without license to do so, Respondent did not demonstrate any bona fide offering of goods or services or any legitimate noncommercial or fair use).
Complainant argues Respondent lacks rights and legitimate interests because Complainant was the intended and rightful owner of the <xerafy.com> domain name and that Respondent inappropriately registered the disputed domain name to himself while he was CEO of the Complainant’s company, has retained the disputed domain after termination of his employment and now, as a former employee of Complainant, refuses to return that disputed domain name. The record shows that Complainant had the ability to control registration of the disputed domain name <xerafy.com>, and that while Respondent was CEO and an employee of Complainant, Respondent became the nominal registrant of the at-issue domain name without Complainant's permission or authorization. Complainant also contends that Respondent purposely registered the <xerafy.co> domain name two days after he was let go by Complainant’s company in order to retaliate against the company. Respondent's registration or acquisition of the disputed domain names as a former officer and employee of Complainant does not demonstrate any right to or legitimate interest in the disputed domain names.
In cases involving the registration of domain names by employees, many UDRP panels have held that former employees do not have a right to or legitimate interest in domain names incorporating the marks of their former employers. See, e.g. Dominic Vetere v. DAVE CARRIER / DC FINANCE INC, FA 1707259 (Forum Jan. 24, 2017) (holding that “former employees of a company no longer hold any rights or legitimate interests in the company’s mark”); Ruby's Diner, Inc. v. Joseph W. Popow, D2001-0868 (WIPO Aug. 29, 2001) (“An employee or former employee is not a licensee, and thus has no authorization to use a company's trademark or a confusingly similar variation thereof without permission. The Policy contains no exception providing a special right to use a trademark belonging to one's employer or former employer in a domain name. Consistent with such an interpretation, previous decisions have decisively refused to recognize such a right or interest.”); Savino Del Bene Inc. v. Graziano Innocenti Gennari, D2000-1133 (WIPO Dec. 20, 2000) (“…this Panel finds that, as a rule, former employees do not have a legitimate right or interest in registering in their own name their former employer's trademark as a domain name.”). Here, Complainant argues that Respondent not only registered his company’s <xerafy.com> domain name in his own name without permission while he was CEO, but as the former CEO of Complainant’s business after Respondent was terminated, Respondent purposely registered the <xerafy.co> domain name in order to retaliate against the company. Based on its review of the evidence presented by both Complainant and Respondent, the Panel finds the evidence sufficient to show that Respondent lacks rights and legitimate interests in the disputed domain names. The Panel finds that Complainant has satisfied the second requirement of paragraph 4(a) of the Policy.
Complainant argues that Respondent uses the <xerafy.com> and <xerafy.co> domain names in bad faith because Respondent attempts to disrupt Complainant’s business by not allowing Complainant access to its own domain names. Attempting to disrupt a complainant’s business may evince bad faith under Policy ¶ 4(b)(iii). See H-D U.S.A., LLC v. Auliya ulfiyanto, FA 1682051 (Forum Aug. 17, 2016) (adopting a broad interpretation of “compete and disrupt” in Policy ¶ 4(b)(iii), and finding bad faith where the respondent was “operating a website whose activities are in opposition to Complainant”). Here, Complainant argues that Respondent is a former employee of Complainant and attempts to disrupt Complainant’s business by barring Complainant from accessing its own domain names. The Panel finds this evidence sufficient that Respondent used the disputed domain names in bad faith under Policy ¶ 4(b)(iii).
Complainant also contends that because Respondent was not only an employee, but CEO of Complainant, there is little question that he knew of Complainant's rights in its marks XERAFY and XERAFY VERIFY. QUANTIFY. when he registered the disputed domain names in his own name without Complainant's permission. By registering the disputed domain names with knowledge of Complainant's rights in its marks, Respondent acted in bad faith. UDRP panels have consistently held that registration of a trademark-related domain name by an employee with knowledge of the trademark owner's rights in the mark constitutes bad faith. See, e.g., Kinko's Ventures, Inc. v. Fernando Rigonan, FA100168 (Forum Nov. 5, 2001) (“…because Respondent was an employee of Complainant when it registered the <kinkoids.com> domain name, registration of the infringing domain name is considered an act of bad faith.”); Savino Del Bene Inc. v. Graziano Innocenti Gennari, D2000-1133 (WIPO Dec. 20, 2000) (“[r]espondent's registration of the company name of his former employer as a domain name is an act of bad faith.”).
Finally, Complainant argues that Respondent’s bad faith is further evidence by Respondent’s actions in his own interest and against that of the Complainant in his former positions within Complainant’s business. A former employee registering and using a disputed domain name that is linked to a complainant may evince bad faith under Policy ¶ 4(a)(iii). See DINOFLEX Mfg. Ltd. v. Recreational Tech. Indus. Ltd., FA 292846 (Forum Aug. 17, 2004) (“The Panel finds that Respondent registered and used the Disputed Domain Name in bad faith since Respondent wilfully registered the name despite its knowledge of Complainant’s rights in the PLAYTILES mark, which can be inferred from the involvement of Mr. Damberg in the industry and as a past or current employee of Complainant and Respondent respectively.”); see also, The Glorya Kaufman Dance Foundation and Glorya Kaufman v. Carolyn B. Baker & Associates and “Glorya Kaufman Dance Foundation,” formerly Domains By Proxy, Inc., D2010-0034 (WIPO March 11, 2010) Complainant argues that Respondent’s position as a former employee displays bad faith as Respondent denies control of the disputed domain names and refuses to assist Complainant in regaining access to the disputed domain names. Complainant references the WHOIS search results in the record to identify Respondent as the owner of the disputed domain names. The Panel finds that Respondent acted in bad faith and that Complainant has satisfied the third requirement of paragraph 4(a) 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 <xerafy.com> and <xerafy.co> domain names be TRANSFERRED from Respondent to Complainant.
Scott R. Austin, Presiding Panelist
Paul M. DeCicco, Panelist
Michael A. Albert, Panelist
Dated: June 13, 2019
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