TurbineAero, Inc. v. Eliana / Eliana Cartes
Claim Number: FA1907001855234
Complainant is TurbineAero, Inc. (“Complainant”), represented by Greenberg Traurig, LLP, Arizona, USA. Respondent is Eliana / Eliana Cartes (“Respondent”), South Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <turbinaero.com>, registered with Hostinger, UAB.
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 July 31, 2019; the Forum received payment on July 31, 2019.
On August 2, 2019, Hostinger, UAB confirmed by e-mail to the Forum that the <turbinaero.com> domain name is registered with Hostinger, UAB and that Respondent is the current registrant of the name. Hostinger, UAB has verified that Respondent is bound by the Hostinger, UAB 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 August 6, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 26, 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@turbinaero.com. Also on August 6, 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 29, 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 is a leading provider of Auxiliary Power Unit Maintenance Repair and Overhaul (“APU MRO”) that offers a variety of services in the global aerospace community. Complainant has common law rights in the TURBINEAERO mark as early as February 9, 2017. Respondent’s <turbinaero.com> domain name is identical to Complainant’s TURBINEAERO mark as it incorporates the mark in its entirety, merely deleting the letter “e”.
Respondent has no rights or legitimate interests in the <turbinaero.com> domain name. Respondent is not permitted to use Complainant’s TURBINEAERO mark and is not commonly known by the disputed domain name. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent’s domain name resolves to an inactive website. Furthermore, Respondent uses an email address associated with the disputed domain name to impersonate Complainant and conduct a phishing scheme.
Respondent registered and uses the <turbinaero.com> domain name in bad faith. Respondent attempts to disrupt Complainant’s business and commercially benefit by impersonating Complainant through an email phishing scheme. Respondent also failed to actively use the disputed domain name. Finally, Respondent had knowledge of Complainant’s rights in the TURBINEAERO mark prior to registering and subsequently using the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel notes that the <turbinaero.com> domain name was registered on July 2, 2019.
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 TURBINEAERO mark through its continuous and substantially exclusive use of the mark in commerce as early as February 9, 2017. Comlpainant further contends that it has spent a considerable amount of time, effort and money developing, promoting, and advertising its mark. A complainant is not required to have a registered mark if it asserts common law rights. See Psyonix Inc. v. robert gray / notpsyonix, FA 1759780 (Forum Jan. 3, 2018) (“Policy ¶ 4(a)(i) does not require a complainant to own a trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”). In order to demonstrate common law rights, a complainant must show that its mark has acquired secondary meaning. See Lokai Holdings, LLC v. Domain Admin / Whois Privacy Corp., 1763598 (Forum Jan, 22, 2018) (Complainant established common law rights with evidence of secondary meaning, including “annual sales of $50 million” and “advertisements of Complainant’s FIND YOUR BALANCE bracelets from Google searches, advertisements for Complainant’s goods found on social media, and a certification from, “Complainant’s manager..”). Complainant claims it has spent approximately $950,000.00 on advertising, marketing and promotional efforts with respect to this mark. Therefore, the Panel finds that Complainant has sufficiently established common law rights in the TURBINEAERO mark per Policy ¶ 4(a)(i).
Next, Complainant claims that Respondent’s <turbinaero.com> domain name is confusingly similar to Complainant’s TURBINEAERO mark as it merely incorporates a misspelled version of the mark (removes an “e”). Such a change is generally insufficient to overcome an identical/confusing similarity analysis under 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.”). Therefore, the Panel finds that Respondent’s disputed domain name is identical or confusingly similar to Complainant’s TURBINEAERO mark per Policy ¶ 4(a)(i).
Complainant argues that Respondent has no rights or legitimate interests in the <turbinaero.com> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the TURBINEAERO mark in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by a disputed domain name. The WHOIS information of record identifies the registrant of the at-issue domain name as “Eliana / Eliana Cartes,” and no information in the record indicates Respondent was authorized to register a domain name incorporating Complainant’s mark. The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the <turbinaero.com> domain name.
Complainant next claims that Respondent’s use of an email associated with the <turbinaero.com> domain name to pass off as Complainant indicates it lacks rights or legitimate interests in the name. Use of an email address associated with the disputed domain name to pass off in furtherance of phishing may not establish rights or legitimate interests therein per Policy ¶¶ 4(c)(i) or (iii). See Enterprise Holdings, Inc. v. I S / Internet Consulting Services Inc., FA 1785242 (Forum June 5, 2018) (“On its face, the use of a domain name that is confusingly similar to the mark of another in order to facilitate a phishing scheme cannot be described as either a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(iii).”); see also Cubist Pharmaceuticals, Inc. v. Gregory Stea, FA1550388 (Forum May 5, 2014) (wherein Respondent was using the domain name in emails to various IT hardware suppliers in an attempt to impersonate complainant and defraud its customers). Complainant provides copies of emails sent to Complainant’s customers requesting payment on alleged fake invoices. Therefore, the Panel finds that Respondent fails to use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Complainant also asserts that Respondent’s inactive holding of the <turbinaero.com> domain name indicates that it does not have rights or legitimate interests in the name. Inactive holding of a domain name does not demonstrate rights or legitimate interests in the name per Policy ¶¶ 4(c)(i) or (iii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name). Complainant contends that Respondent’s domain name does not resolve to an active webpage. The Panel therefore finds that Respondent does not have rights or legitimate interests in the domain name per Policy ¶¶ 4(c)(i) or (iii).
Thus, Complainant has satisfied Policy ¶4(a)(ii).
Complainant contends that Respondent’s impersonation of Complainant in emails designed to fraudulently extract payments from its customers evinces Respondent’s bad faith. Evidence of such use of a domain name can be used to support a finding of bad faith registration and use per Policy ¶¶ 4(b)(iii) and (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 Microsoft Corporation v. Terrence Green / Whois Agent / Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr. 4, 2016) (finding the Respondent’s use of the disputed domain names to send fraudulent emails supported a finding of bad faith registration and use under Policy ¶ 4(b)(iii)); 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). Complainant has provided evidence of emails sent from an email address hosted at the <turbinaero.com> domain name. The Panel therefore finds Respondent to have registered and used the disputed domain name in bad faith per Policy ¶¶ 4(b)(iii) and/or (iv).
Complainant asserts that Respondent’s failure to use the <turbinaero.com> domain name is evidence of its bad faith. Inactive holding of a domain name can be evidence of bad faith under Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). Complainant has provided evidence that the domain name does not resolve to an active website. The Panel finds Respondent’s inactive holding of the domain name to be evidence of its bad faith per Policy ¶ 4(a)(iii).
Complainant further asserts that Respondent’s use of the domain name to impersonate Complainant through an email phishing scheme indicates that it had actual knowledge of Complainant’s rights. The Panel agrees and finds Respondent had actual knowledge of Complainant’s rights in the mark and thus registered and used the name in bad faith.
Therefore, Complainant has 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 <turbinaero.com> domain name be TRANSFERRED from Respondent to Complainant
David A. Einhorn, Panelist
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