Carahsoft Technology Corp. v. Thomas Harris / Mid America Mortgage, Inc.
Claim Number: FA2202001984617
Complainant is Carahsoft Technology Corp. (“Complainant”), represented by Adam D. Mandell of Millen, White, Zelano & Branigan, P.C., Virginia, USA. Respondent is Thomas Harris / Mid America Mortgage, Inc. (“Respondent”), Tennessee, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <carahs0fts.com>, registered with Google LLC.
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.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 16, 2022; the Forum received payment on February 16, 2022.
On February 16, 2022, Google LLC confirmed by e-mail to the Forum that the <carahs0fts.com> domain name is registered with Google LLC and that Respondent is the current registrant of the name. Google LLC has verified that Respondent is bound by the Google 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 February 21, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 14, 2022 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@carahs0fts.com. Also on February 21, 2022, 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 March 21, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho-Hyun Nahm, 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
i) Complainant, Carahsoft Technology Corp., provides information regarding technology products, services and training to federal state, state and local governments, educational institutions and prime contractors. Complainant has rights in the CARAHSOFT mark based on registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,685,627, registered Sep. 22, 2009). The disputed domain name is confusingly similar to Complainant’s CARAHSOFT mark as it incorporates the entire mark, merely replacing the letter “O” with a zero and adding the letter “S” and the “.com” generic top level domain (“gTLD”) to form the disputed domain name.
ii) Respondent does not have rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name and Complainant has not authorized Respondent to use the CARAHSOFT mark. Additionally, Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use as the domain resolves to an error message.
iii) Respondent registered and uses the disputed domain name in bad faith. Respondent may use the disputed domain name to pass off as Complainant and engage in phishing. Additionally, Respondent inactively holds the disputed domain name. Furthermore, Respondent’s bad faith is evidenced by the use of a WHOIS privacy service to conceal its identity. Finally, the disputed domain name constitutes typosquatting.
B. Respondent
Respondent did not submit a response.
1. The disputed domain name was registered on February 7, 2022.
2. Complainant has established rights in the CARAHSOFT mark based on registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,685,627, registered Sep. 22, 2009).
3. The disputed domain name resolves to an error message.
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 asserts rights in the CARAHSOFT mark based on registration of the mark with the USPTO (e.g., Reg. No. 3,685,627, registered Sep. 22, 2009). Registration of a mark with the USPTO is a valid showing of rights in a mark. 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).”). Since Complainant provides evidence of registration of the CARAHSOFT mark with the USPTO, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that the disputed domain name is confusingly similar to Complainant’s CARAHSOFT mark as it incorporates the entire mark, merely replacing the letter “O” with a zero and adding the letter “S” and the “.com” gTLD to form the disputed domain name. Visually similar misspellings of a complainant’s mark by replacing and/or adding a letter, plus the addition of a gTLD, are not sufficient to distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). See Oxygen Media, LLC v. Primary Source, D2000-0362 (WIPO June 19, 2000) (finding that the domain name <0xygen.com>, with zero in place of letter “O,” “appears calculated to trade on Complainant’s name by exploiting likely mistake by users when entering the url address”); see also Acme Lift Company, L.L.C. v. VistaPrint Technologies Ltd, FA 1607039 (Forum Apr. 11, 2015) (stating, “Where a respondent has created a domain name in an effort to visually deceive Internet users via a simple misspelling (and when such misspellings are visually similar to the mark), a finding of confusing similarity under Policy ¶ 4(a)(i) is appropriate.”); see additionally PathAdvantage Associated v. VistaPrint Technologies Ltd, FA 1625731 (Forum July 23, 2015) (holding that the <pathadvantages.com> domain name was confusingly similar to the PATHADVANTAGE trademark because the domain name “merely adds the letter ‘s’ to Complainant’s mark”); see furthermore Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Thus, the Panel finds that the disputed domain name is confusingly similar to the CARAHSOFT mark under 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), 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”).
Complainant argues that Respondent does not have rights or legitimate interests in the disputed domain name because Respondent is not commonly known by the disputed domain name and Complainant has not authorized Respondent to use the CARAHSOFT mark. When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names.”). Additionally, lack of authorization to use a mark constitutes a further showing that a respondent is not commonly known by the disputed domain name. See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sept. 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.”). Here, the WHOIS information identifies “Thomas Harris / Mid America Mortgage, Inc.” as the registrant and Complainant asserts Respondent has not been authorized to use Complainant’s mark. The Panel therefore finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Additionally, Complainant argues that Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use as the domain resolves to an error message. Failure to make active use of a disputed domain name indicates a respondent does not use the domain for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018) (“both Domain Names resolve to a web site that shows the words, ‘Not Found, The requested URL / was not found on this server.’ Inactive holding of a domain name does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii).”). Here, Complainant provides a screenshot showing the disputed domain name resolves to an error message. Thus, the Panel finds that Respondent is not using the domain name for 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).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant argues that Respondent registered and uses the disputed domain name in bad faith since Respondent may use the disputed domain name to pass off as Complainant and engage in phishing. The Panel notes that Complainant provides no evidence regarding this contention, and thus the Panel does not consider Complainant’s contention.
Additionally, Complainant argues Respondent registered and uses the disputed domain name in bad faith since Respondent inactively holds it. The Panel recalls that Complainant provides a screenshot showing the disputed domain name resolves to a webpage with an error message. The Panel agrees that the passive holding of a domain name does not necessarily circumvent a finding that the domain name is being used in bad faith within the requirements of paragraph 4(a)(iii) of the Policy. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (finding that in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the panel must give close attention to all the circumstances of the respondent’s behavior, and a remedy can be obtained under the Policy only if those circumstances show that the respondent’s passive holding amounts to acting in bad faith.)
The particular circumstances of this case that the Panel has considered are:
i) Complainant is a leading provider of software and IT services to public sector customers. Since at least as early as 1999, Complainant has used Complainant’s mark CARAHSOFT in connection with value-added reseller services, namely, distributorship services featuring information technology (“IT”) products. For years, sales of goods and services offered under Complainant’s mark have exceeded billions of dollars on an annual basis. Complainant spends in excess of ten million US dollars ($10,000,000.00) per year on marketing and promoting the goods and services rendered under Complainant’s mark. Over the years, Complainant has received more than 100 awards from its partners in recognition for outstanding performance. The company has also been recognized by numerous industry publications and media outlets as a fast growth, top revenue producing company. As a result of its enormous commercial success, the considerable funds and significant efforts in advertising, the various awards and other achievements and its enforcement efforts, Complainant has established an enviable reputation, acquired substantial goodwill, and attained distinctiveness in Complainant’s mark throughout the entire United States, and
ii) Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name.
Taking into account all of the above, the Panel concludes that Respondent’s passive holding of the disputed domain name constitutes bad faith under Policy, paragraph 4(a)(iii) and that Respondent is using the disputed domain name in bad faith.
Finally, Complainant argues the disputed domain name constitutes typosquatting. Typosquatting is the purposeful misspelling of a complainant’s mark and is itself evidence of bad faith. See Homer TLC, Inc. v. Artem Ponomarev, FA1506001623825 (Forum July 20, 2015) (“Finally, under this head of the Policy, it is evident that the <homededpot.com> domain name is an instance of typosquatting, which is the deliberate misspelling of the mark of another in a domain name, done to take advantage of common typing errors made by Internet users in entering into a web browser the name of an enterprise with which they would like to do business online. Typosquatting is independent evidence of bad faith in the registration and use of a domain name.”). The disputed domain name replaces the letter “O” in Complainant’s CARAHSOFT mark with the visually similar number zero and adds the letter “S.” Therefore, the Panel finds bad faith in the registration and use of the disputed domain name per 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 <carahs0fts.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: March 28, 2022
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