Pilot Travel Centers LLC v. Codee Solutions
Claim Number: FA1907001851165
Complainant is Pilot Travel Centers LLC (“Complainant”), represented by Seth Hudson of Clements Bernard Walker PLLC, North Carolina, USA. Respondent is Codee Solutions (“Respondent”), Nigeria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pilottrevelcenters.com>, registered with Namecheap Inc; NameCheap, Inc..
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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 8, 2019; the Forum received payment on July 8, 2019.
On July 9, 2019, Namecheap Inc; NameCheap, Inc. confirmed by e-mail to the Forum that the <pilottrevelcenters.com> domain name is registered with Namecheap Inc; NameCheap, Inc. and that Respondent is the current registrant of the name. Namecheap Inc; NameCheap, Inc. has verified that Respondent is bound by the Namecheap Inc; NameCheap, Inc. 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 9, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 29, 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@pilottrevelcenters.com. Also on July 9, 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 August 1, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, 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
Complainant operates vehicular service stations and retail stores. Complainant has rights in the trademarks PILOT and PILOT TRAVEL CENTERS through its registrations with the United States Patent and Trademark Office (“USPTO”) dating back to 1958. Respondent’s <pilottrevelcenters.com> domain name, registered on March 7, 2019, is confusingly similar to Complainant’s PILOT TRAVEL CENTERS mark as Respondent uses the mark in its entirety and substitutes the “a” in “travel” with the letter “e.”
Respondent lacks any rights or legitimate interests in the <pilottrevelcenters.com> domain name as Respondent is not authorized to use the PILOT TRAVEL CENTERS mark in any way, nor is Respondent commonly known by the disputed domain name. Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses an email address associated with the disputed domain name to pass itself off as an actual employee of Complainant in order to engage in a phishing scheme.
Respondent registered and uses the <pilottrevelcenters.com> domain name in bad faith as Respondent attempts to pass itself off as an actual employee of Complainant in furtherance of a phishing scheme.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the disputed domain name was registered and is being used by Respondent 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 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 to have rights in the PILOT and PILOT TRAVEL CENTERS marks through its registrations with the USPTO. Registration of a mark with the USPTO is sufficient to establish rights in a mark per 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.”). Here, Complainant has provided the Panel with copies of its USPTO registrations for the PILOT and PILOT TRAVEL CENTERS marks. Therefore, the Panel finds that Complainant has adequately shown rights in the PILOT and PILOT TRAVEL CENTERS marks per Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <pilottrevelcenters.com> domain name is confusingly similar to Complainant’s PILOT and PILOT TRAVEL CENTERS marks as Respondent uses the mark in its entirety and substitutes the “a” in “travel” with the letter “e.” While not argued by Complainant, the Panel notes that the disputed domain name also adds the “.com” generic top-level domain (“gTLD”). A minor misspelling like the substitution of a single letter in a fully formed mark and the addition of a gTLD does not distinguish the domain name from a mark per Policy ¶ 4(a)(i). See WordPress Foundation v. Bernat Lubos, FA 1613444 (Forum May 21, 2015) (finding that the <worspress.org> domain name is confusingly similar to the WORDPRESS mark under Policy ¶4(a)(i), stating, “On a standard QWERTY keyboard, the letters ‘s’ and ‘d’ are adjacent. A minor misspelling is not normally sufficient to distinguish a disputed domain name from a complainant’s mark.”); see also MTD Products Inc v. Mike Kernea / Skyline, FA 1775278 (Forum Apr. 19, 2018) (“The mere addition of a gTLD is inconsequential and does not avoid a finding of identity.”). Therefore, the Panel finds that Respondent’s domain name is confusingly similar to Complainant’s PILOT and PILOT TRAVEL CENTERS marks per Policy ¶ 4(a)(i).
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). Should it succeed in this effort, the burden then shifts to Respondent to show that 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”).
Complainant argues that Respondent lacks rights or legitimate interest in the <pilottrevelcenters.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been given license or consent to use the PILOT or PILOT TRAVEL CENTER marks or to register domain names using Complainant’s marks. Information from the WHOIS record may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding that a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain name lists the registrant as “Codee Solutions” and there is no evidence to suggest that Respondent is known otherwise or that it was authorized to use the Complainant’s marks or was commonly known by the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant argues that Respondent has failed to use the <pilottrevelcenters.com> domain name to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses an email address associated with the disputed domain name to pass itself off as an actual employee of Complainant in order to engage in a phishing scheme. Use of a disputed domain name to pass oneself off as a complainant through an email address in order to gain personal and financial information is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Emerson Electric Co. v. Adilcon Rocha, FA 1735949 (Forum July 11, 2017) (finding that respondent’s attempt to pass itself off as complainant through emails does not constitute a bona fide offering of goods or services and, as such, respondent lacked rights or legitimate interests in the disputed domain name); see also DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (”Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”) Here, Complainant has provided the Panel with a screenshot of an email conversation that shows Respondent using an email address associated with the <pilottrevelcenters.com> domain name which impersonates one of Complainant’s actual, named employees. Through this email exchange, Respondent references a false legal claim against Complainant and is trying to obtain financial information from the email recipient. Therefore, the Panel finds that Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Complainant argues that Respondent registered and uses the <pilottrevelcenters.com> domain name in bad faith as Respondent attempts to pass itself off as an actual employee of Complainant in furtherance of a phishing scheme. Use of an email address associated with a disputed domain name to pass oneself off as an employee of a complainant in furtherance of phishing may be evidence of bad faith per Policy ¶¶ 4(b)(iii) or (iv). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the <abbuie.com> domain name to impersonate Complainant’s CEO. Such use is undeniably disruptive to Complainant’s business and demonstrates bad faith pursuant to Policy ¶ 4(b)(iii), and/or Policy ¶ 4(b)(iv)”); see also 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 per Policy ¶ 4(b)(iv)). Here, Complainant has provided the Panel with a screenshot of an email conversation that shows Respondent using an email address associated with the <pilottrevelcenters.com> domain name to impersonate an actual, named employee of Complainant’s in an effort to obtain financial information from the email recipient. While the Complaint does not explain all of the details of Respondent’s phishing scheme, enough evidence is provided to convince the Panel that the Respondent is, by a preponderance of the evidence, seeking commercial gain through use of a confusingly similar domain name. Respondent provides no response or other submission in this case to refute this evidence. Therefore, the Panel finds that Respondent registered and used the <pilotrevelcenters.com> domain name in bad faith per Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <pilottrevelcenters.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: August 2, 2019
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