Twilio Inc. v. Domain Admin / Whois Privacy Corp.
Claim Number: FA2111001971473
Complainant is Twilio Inc. (“Complainant”), represented by Jessica Tam of Cobalt LLP, California, USA. Respondent is Domain Admin / Whois Privacy Corp. (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <authy.app>, registered with TLD Registrar Solutions Ltd..
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 1, 2021; the Forum received payment on November 1, 2021.
On November 10, 2021, TLD Registrar Solutions Ltd. confirmed by e-mail to the Forum that the <authy.app> domain name is registered with TLD Registrar Solutions Ltd. and that Respondent is the current registrant of the name. TLD Registrar Solutions Ltd. has verified that Respondent is bound by the TLD Registrar Solutions Ltd. 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 November 10, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 30, 2021 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@authy.app. Also on November 10, 2021, 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 December 6, 2021 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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
1. Complainant, Twilio Inc., is a cloud communications company that provides identification authentication services. Complainant has rights in the AUTHY mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., 5,013,675, registered Aug. 2, 2016). The <authy.app>[i] domain name is confusingly similar to Complainant’s mark because Respondent has incorporated the entire mark and added the “.app” generic top level domain (“gTLD”).
2. Respondent does not have rights or legitimate interests in the <authy.app> domain because Respondent is not commonly known by the domain name and is not authorized to use Complainant’s AUTHY mark. Additionally, Respondent fails to use the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use because the domain is used to redirect consumers to a webpage which offers competing goods and services.
3. Respondent has registered and uses the <authy.app> domain name in bad faith because Respondent diverts internet users to a webpage that offers competing goods and services. Respondent also had constructive and/or actual knowledge of Complainant’s rights in the AUTHY mark when it registered the domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the AUTHY mark. Respondent’s domain name is confusingly similar to Complainant’s AUTHY mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <authy.app> domain name and that Respondent registered and uses the domain name 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 has rights in the AUTHY mark based on registration with the United States Patent and Trademark Office. Registration with the USPTO is sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Complainant provides evidence of its registration with the USPTO for the AUTHY mark (e.g., 5,013,675, registered Aug. 2, 2016). Therefore, Complainant has rights in the AUTHY mark under Policy ¶ 4(a)(i).
The <authy.app> domain name is confusingly similar to Complainant’s AUTHY mark because Respondent has incorporated the entire mark and added a gTLD. Domain names which incorporate the entire mark of a complainant are usually considered confusingly similar, while adding a gTLD generally creates no distinction between a complainant’s mark and a domain name under Policy ¶ 4(a)(i). See Bittrex, Inc. v. HOUSNTA BENSLEM, FA 1760232 (Forum Jan. 3, 2018) (“[S]ince the disputed domain name differs from the trademark only by the addition of the gTLD “.cam” the Panel finds the domain name to be legally identical to the trademark.”). Respondent has added the “.app” gTLD which does not create a sufficient distinction between the <authy.app> domain name and Complainant’s mark. In addition, the confusing similarity exists because the domain name is essentially identical to Complainant’s webpage <www.authy.com> where it offers information about its goods and services. Therefore, Respondent’s domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <authy.app> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent.). The Panel holds that Complainant has made a prima facie case.
Complainant claims that Respondent does not have rights or legitimate interests in the <authy.app> domain name because Respondent is not commonly known by the domain name and is not associated with Complainant or authorized to use Complainant’s AUTHY mark. When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by a domain name under Policy ¶ 4(c)(ii). See Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the guardair.com domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). Additionally, lack of authorization to use a complainant’s mark may demonstrate the respondent is not commonly known by a domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Here, there is no evidence available in the WHOIS information to suggest that Respondent is known by the <authy.app> domain name and no information suggests Complainant authorized Respondent to use the AUTHY mark. The WHOIS information lists the registrant of the domain as “Admin/WhoIs Privacy Corp.” Therefore, the Panel holds that Respondent is not commonly known by the <authy.app> domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent does not use the <authy.app> domain name in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Under Policy ¶¶ 4(c)(i) and (iii), no bona fide offering a domain name in incorporating the mark of a complainant is used to directly compete with a complainant. See Invesco Ltd. v. Premanshu Rana, FA 1733167 (Forum July 10, 2017) (“Use of a domain name to divert Internet users to a competing website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.”). Respondent uses the <authy.app> domain to redirect consumers to a competing authenticator app. Therefore, the Panel holds that Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and uses the <authy.app> domain name in bad faith as Respondent redirects internet users to a webpage that offers competing services. Use of a domain name incorporating the mark of another to redirect internet users to competing services is evidence of bad faith per Policy ¶¶ 4(b)(iii) and (iv). See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”), see also LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum Jan. 9, 2018) (finding that the respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under Policy ¶ 4(b)(iii)). Here, Complainant has provided the Panel with a screenshot of Respondent’s domain name’s resolving webpage that offers competing and similar services to Complainant’s business. Therefore, the Panel holds that Respondent registered and uses the <authy.app> domain name in bad faith per Policy ¶¶ 4(b)(iii) and (iv).
Complainant alleges that Respondent must have had actual knowledge of its rights in the AUTHY mark prior to registration of the <authy.app> domain name because of Complainant’s widespread use of the mark. Actual knowledge may be found under Policy ¶ 4(a)(iii) based on the fame and notoriety of a mark. See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”). Complainant argues that Respondent had actual knowledge of its rights in the AUTHY mark because Respondent purposely registered a confusingly similar domain name years after Complainant registered its mark with the USPTO to take advantage of Complainant’s goodwill and its consumers and included in the domain name Complainant’s mark, exactly. Therefore, the Panel finds Respondent had actual knowledge of Complainant’s rights in the AUTHY mark.
The Panel finds Complainant has 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 <authy.app> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: December 13, 2021
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