Kinross Gold Corporation v. big apple / Jamie Lim
Claim Number: FA2206001998815
Complainant is Kinross Gold Corporation (“Complainant”), represented by Fabricio Vayra of Perkins Coie LLP, District of Columbia, USA. Respondent is big apple / Jamie Lim (“Respondent”), Malaysia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <kinross.org> and <kinrosscapital.com>, registered with DropCatch.com 1341 LLC and 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 June 1, 2022; the Forum received payment on June 1, 2022.
On June 2, 2022, DropCatch.com 1341 LLC and NameCheap, Inc. confirmed by e-mail to the Forum that the <kinross.org> and <kinrosscapital.com> domain names are registered with DropCatch.com 1341 LLC and NameCheap, Inc. and that Respondent is the current registrant of the names. DropCatch.com 1341 LLC and NameCheap, Inc. has verified that Respondent is bound by the DropCatch.com 1341 LLC and 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 June 3, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 23, 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@kinross.org, postmaster@kinrosscapital.com. Also on June 3, 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 July 5, 2022, 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 names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. 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.” Despite being presented with WHOIS records that name different Registrants, prior Panels have held that consolidation of a case against multiple domain names is appropriate where there are other similarities that indicate a likelihood of common ownership. See, e.g., American Airlines, Inc. v. Ramadhir Singh, WhoisGuard Protected, WhoisGuard, Inc. / Reema Gupta, Ballu Balwant, Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / Lucy Lionel, Lucy99, Red Keep, D2021-0294 (WIPO Mar. 11, 2021) (consolidation upheld based on “the similar content and layout of the websites that were linked to the disputed domain names; the fact that all the disputed domain names target a specific sector and the same trademark within this sector; the similar patterns in the disputed domain names; and the identical reaction of the Respondents to the Complaint, not replying to the Complainant’s contentions.”); Brooks Sports, Inc. v. Shuai Li / Nan Zhang, FA 1932371 (Forum Mar. 18, 2021) (similar website content, use of same registrars and privacy services).
Complainant contends that, despite their respective WHOIS records listing different Registrant names, the disputed domain names are controlled by the same entity because: 1) one domain name previously redirected to the website of the other; 2) both domain names use Cloudflare as a pass-through proxy host; and 3) the WHOIS record for both registrants reflect addresses in Malaysia in the province of Johor.
In light of the above similarities, and in the absence of participation in these proceedings by any party claiming to be a Registrant of these domain names, the Panel determines it to be more likely than not that both of the disputed domain names are under common control by the same domain name holder. As such, the present case will proceed against all of the disputed domain names and their holder will be referred to in the singular as “Respondent”.
A. Complainant
Complainant is an internationally recognized company that specializes in gold mining and related investment services. Complainant claims rights in the trademark KINROSS through its use in commerce since 1993 and its registration with both the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,801,642, issued on June 15, 2010) and the Canadian Intellectual Property Office (“CIPO”) (e.g., Reg. No. 1,398,429 issued on November 18, 2009). The disputed domain names <kinross.org> and <kinrosscapital.com> registered on March 14, 2020 and June 22, 2020 respectively (hereafter referred to as “the disputed domain names”), are confusingly similar because they wholly incorporate Complainant’s KINROSS mark, differing only through the addition of the descriptive and relevant term “capital”, in one case, and the addition of the “.org” or “.com” generic top-level domains (“gTLD”).
Respondent lacks rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain name and Complainant has not authorized Respondent to use the KINROSS mark in any way. Additionally, Respondent fails to use the disputed domain name in connection with either a bona fide offering of goods or services or for any legitimate noncommercial or fair use. Instead, Respondent uses the disputed domains to pass itself off as Complainant in furtherance of a phishing scheme.
Respondent registered and uses the disputed domains in bad faith. First, Respondent uses the disputed domain to create confusion, pass itself off as Complainant in furtherance of a phishing scheme, and to disrupt Complainant’s business. Next, Respondent had actual knowledge of Complainant’s rights in the KINROSS mark. Respondent also failed to respond to a cease and desist letter regarding the disputed domain. Finally, Respondent provided false or misleading contact information to the WHOIS database and used a privacy service to register the disputed domains.
B. Respondent
Respondent failed to submit a Response in this proceeding.
- Both of the disputed domain names may be consolidated into this single proceeding;
- Complainant has demonstrated its ownership of rights in the KINROSS trademark and that each of the disputed domain names is confusingly similar to the mark;
- Respondent is not commonly known by the disputed domain names, it does not make a bona fide use or a legitimate noncommercial or fair use thereof where it operates a phishing scheme;
- By engaging in a phishing scheme based on confusion with Complainant’s trademark, Registrant has registered and it uses the disputed domain names in bad faith; and
- The use of a WHOIS privacy service and the provision of false WHOIS information further supports a finding of 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 and evidence 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 and supported 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”).
Next, Complainant argues that each of the disputed domain names is confusingly similar to Complainant’s mark because it wholly incorporate the KINROSS mark and in one case differs only through the addition of the “.org” gTLD while, in the other, it only differs from the mark because it is followed by the term “capital” and the “.com” gTLD. The addition of a generic or descriptive phrase and a gTLD generally fails to sufficiently distinguish a disputed domain name from an asserted mark per Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists under Policy ¶ 4(a)(i) where “Respondent’s <minecraft4free.us> domain name contains Complainant’s entire trademark and differs only by the addition of the generic or descriptive word ‘free,’ and the ccTLD ‘.us.’”) The Panel finds that each the <kinrosscapital.com> and <kinross.org> domain names is confusingly similar to Complainant’s KINROSS 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). 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 disputed domain names as Respondent is not commonly known by such names nor has Respondent been given license or consent to use the KINROSS mark or register domain names using the mark. In addressing this issue, WHOIS information 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 relevant WHOIS information gave no indication that the respondent is 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 relevant to the present case, as revealed to the Forum by the concerned Registrar, does not indicate that Respondent is known by either of the disputed domain names. The registrant for <kinrosscapital.com> is named as “Jamie Lim” and the registrant for <kinross.org> is named as “big apple.” Further, Complainant asserts that Respondent was not given rights to use the KINROSS mark and Respondent has not participated in this case so it does not dispute this. Therefore, the Panel finds no grounds upon which to conclude that Respondent is commonly known by either of the disputed domain names under Policy ¶ 4(c)(ii).
Complainant further argues that Respondent does not use the disputed domain names for any bona fide offering of goods or services and it also does not make a legitimate noncommercial or fair use thereof. Instead, Respondent uses the disputed domain names to pass itself off as Complainant as part of a phishing scheme. Using a disputed domain name to pass oneself off as a complainant is not a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii). See 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.”) Complainant has provided screenshots of the <kinrosscapital.com> website which utilizes Complainant’s mark and a logo that borrows certain attributes of Complainant’s own logo (i.e., a single letter “K” in a serif font, the color gold, a square border, etc.) Respondent purports to offer gold investment services that are identical to some of the services offered by Complainant and it offers “products” identified as “Official Kinross Gold Accessories” including gold coins, “Official Kinross Gold Chips,” gold sequins, and “Official Kinross Gold Bar”.
Furthermore, Complainant alleges that the <kinross.org> domain name automatically redirects users to the <kinrosscapital.com> website and that this site is part of a fraudulent phishing scheme. Phishing is a practice used to defraud internet users into revealing sensitive personal, financial, and other information, typically with the goal of commercial gain through hacking, identity theft, and the like. See Juno Online Servs., Inc. v. Nelson, FA 241972 (Forum Mar. 29, 2004) (“‘Phishing’ involves the use of e-mails, pop-ups or other methods to trick Internet users into revealing credit cards, passwords, social security numbers and other personal information to the ‘phishers’ who intend to use such information for fraudulent purposes.”) Use of a domain name in a phishing scheme is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor is it a legitimate noncommercial or fair use of a domain name under Policy ¶ 4(c)(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).”) Here, Complainant alleges that Respondent’s website is an impersonation to “defraud Complainant’s customers and other Internet users in an attempt to extract payments and/or sensitive personal or financial information”. The Panel notes that the site promotes gold-related investment services, contains a “Members Login Here” link, and header links, some of which are titled “Team”, “Our Fund”, “Products”, and “Contact”. Further, there are a number of grammatical errors on the page such as the description of its “Legal Regulatory Department” as “giving full play to the compliance and legal departments at all stages of the company Important role, escort all-round.” Also, as the website states that “Kinross Fund Company is registered in Cayman Island”, Complainant conducted searches for various configurations of this name, and submitted screenshots of the results into evidence, but it found no entity using the name “Kinross” which approached the name listed on Respondent’s site. It is also noted that Complainant reported the <kinross.org> domain name to the concerned Registrar which then suspended this domain name on the basis that it was being used for an illegal purpose.
Finally, the <kinrosscapital.com> website identifies its Chief Executive Officer as a Mr. Padriag Seif and it displays a photo of an individual next to a description of his experience and approach to investing in precious metals. Complainant’s representative sent a demand letter to Mr. Seif and received a reply stating “I am afraid I will not be much use to you or your client, given that any involvement I may have had with the company you identify in your letter was terminated in 2021.” Complainant then asked Mr. Seif for any “contact information you may have for any parties responsible for these domains/websites…” The reply states “I have no knowledge as to who registered, or who currently holds the registration, of the domains you mention” but Mr. Seif provided two email addresses for “contact points”. Complainant subsequently sent a demand letter to these addresses but it received no response. However, after this letter was sent, the <kinross.org> domain name stopped redirecting to the <kinrosscapital.com> site and another website at <kinross.my>, with content identical to that of the presently disputed domain names, was taken down.
Based upon all of the assertions and evidence presented, the Panel finds that Complainant has made a prima facie case that the website to which the <kinrosscapital.com> and <kinross.org> domain names resolve is a façade that is used as part of a phishing scheme inviting prospective customers to provide sensitive information. Respondent has failed to file a Response or make any other submission in this case to rebut Complainant’s positions or otherwise explain its use of the disputed domain names. As such, the Panel finds, based upon a preponderance of the evidence, that Respondent does not use the disputed domain names for a bona fide offering of goods or services and that it does not make a legitimate noncommercial or fair use thereof per Policy ¶ 4(c)(i) and 4(c)(iii)).
Complainant argues that Respondent had actual knowledge of its rights in the KINROSS mark at the time the disputed domain names were registered. Actual knowledge of an asserted trademark may form the foundation upon which to build a case for bad faith. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“the Panel here finds actual knowledge through the name used for the domain and the use made of it.”) Further, the reputation of a given mark may indicate a high likelihood of a respondent’s prior knowledge thereof. See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Complainant claims that the “KINROSS Marks are well known” and, in support of this assertion, it submits screenshots of its own www.kinross.com website, and of its social media pages at Facebook, Twitter, LinkedIn, and YouTube. It also points to the Respondent’s use of a variation of Complainant’s trademark and logo on the <kinrosscapital.com> website in an attempt to mimic Complainant’s site. Under the circumstances, the Panel finds it more likely than not that Respondent did have actual knowledge of Complainant’s right in its mark at the time that it registered the disputed domain names.
Complainant next alleges that Respondent uses the disputed domain names to pass itself off as Complainant and conduct a phishing scheme to defraud those seeking Complainant’s services as well as other internet users. Using a confusingly similar domain name to pass oneself off as a trademark holder in furtherance of a phishing scheme demonstrates bad faith disruption of Complainant’s business, as well as attraction for commercial gain under 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)”). As previously noted, Complainant claims that Respondent is engaged in a phishing scheme at the website to which the disputed domain names resolve. It provides evidence of this in the form of website screenshots showing use of the KINROSS trademark as well as text, a logo, and other graphics intended to pass Respondent off as Complainant while inviting users to make contact supposedly to engage gold investment services and provide sensitive information. Respondent has not participated in this case and so it does not dispute any of Complainant’s claims or evidence. Thus, the Panel finds a preponderance of the evidence in favor of Respondent having registered and used the disputed domain names in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Moreover, Complainant argues that Respondent failed to respond to cease-and-desist letters regarding the disputed domain names which further indicates bad faith. See Bloomberg Finance L.P. v. Usman Ik / Divers Marine Contracting LLC, FA 1820452 (Forum Jan. 10, 2019) (“…in light of the nonexclusive nature of Policy ¶ 4(b), failure to respond to a cease-and-desist notice has been held to support a finding of bad faith.”); see also Seiko Epson Corporation v. Ashish Sen, FA 1702054 (Forum Dec. 12, 2016) (finding that failing to respond to a cease-and-desist demand letter constitutes bad faith). Complainant provides copies of its cease-and-desist letters to which Respondent failed to respond. Considering all of the circumstances of this case, the Panel finds that Respondent’s failure to respond to Complainant’s cease-and-desist letters further supports a finding of bad faith under Policy ¶ 4(a)(iii).
Finally, Complainant argues that Respondent’s use of false or misleading WHOIS contact information and utilization of a privacy service when registering the disputed domain names further demonstrates bad faith. Prior decisions have noted that providing false WHOIS contact information to a registrar and using a privacy service may demonstrate a bad faith attempt to hinder a trademark owner from attempting to assert its rights. See Farouk Systems, Inc. v. Jack King / SLB, FA 1618704 (Forum June 19, 2015) (finding bad faith registration and use pursuant to Policy ¶ 4(a)(iii) where the respondent had provided false contact information when registering the disputed domain name); see also Microsoft Corporation v. Arif Khan, FA 1907105 (Forum Aug. 31, 2020) (“in the context of this case Respondent’s use of a WHOIS privacy service further supports a finding of bad faith under Policy ¶ 4(a)(iii).”) Complainant alleges that Respondent used the false name “big apple” in the Registrant Name field for the <kinross.org> domain name, along with using the fictitious street address of “123, jalan 123” and this is borne out by the WHOIS verification provided by the concerned Registrar. Further, the pubic WHOIS records for both of the disputed domain names demonstrate that the registrant engaged a service called Withheld for Privacy ehf. The Panel agrees that the <kinross.org> information appears to be false and that both domain names reflect the use of a privacy service to hide the Respondent’s identity. Against the backdrop of the use to which the disputed domain names have been put – namely, impersonation and phishing – the Panel finds that Respondent’s use of false contact information and a privacy service further demonstrates its bad faith in this case under 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 <kinross.org> and <kinrosscapital.com> domain names be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: July 12, 2022
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