DECISION

 

Mantua Manufacturing Company v. Withheld for Privacy Purposes

ehf / Name Redacted

Claim Number: FA2208002009714

PARTIES

Complainant is Mantua Manufacturing Company, represented by Dominic A. Frisina of Buckingham Doolittle and Burroughs LLC, United States of America (“United States”).  Respondent is Privacy service provided by Withheld for Privacy Purposes ehf. Iceland / Name Redacted.[1]

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <rizebed.net> (the “disputed domain name”), registered with NameCheap, Inc. (the “Registrar”).

 

PANEL

The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Lynda M. Braun as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on August 25, 2022; the Forum received payment on August 25, 2022.

 

On August 25, 2022, the Registrar confirmed by e-mail to the Forum that the <rizebed.net> disputed domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name.  NameCheap, Inc. has verified that Respondent is bound by the 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 August 26, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 15, 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@rizebed.net.  Also on August 26, 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 September 26, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Lynda M. Braun 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.

 

RELIEF SOUGHT

Complainant requests that the disputed domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.   Complainant

Complainant sells electric adjustable beds. Complainant has rights in the RIZE trademark based on its several registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., United States Reg. No. 4,475,101, registered on Jan. 28, 2014) (hereinafter collectively referred to as the “RIZE Mark”.

 

Respondent has incorporated the RIZE Mark in its entirety into the disputed domain name, followed by the descriptive word “bed”, and then followed by the “.net” generic Top-Level Domain (“gTLD”). The disputed domain name resolves to a landing page with no content.

 

Complainant contends that Respondent’s disputed domain name is confusingly similar to the RIZE Mark, that Respondent lacks rights and legitimate interests in the disputed domain name, and that Respondent registered and is using the disputed domain name in bad faith. Complainant also contends that the name of Respondent is that of a former employee of Complainant whose identity was stolen by the registrant of the disputed domain name. As a result, Complainant requests, in accordance with Forum Supplemental Rule 15(b), that the Respondent’s name in the instant case be stricken from the resulting published decision to prevent further negative impact related to the theft of her identity. Therefore, the Panel has redacted Respondent’s personal information from this Decision to prevent the further victimization of Respondent.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The Panel finds that Complainant has rights in the RIZE Mark as described above. The Panel also finds that the disputed domain name is confusingly similar to the Complainant’s RIZE Mark, that Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered and is being used in bad faith.

 

DISCUSSION

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 disputed domain name should be cancelled or transferred:

 

(1)  the disputed 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 disputed domain name; and

(3)  the disputed 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”).

 

Identical and/or Confusingly Similar

The Panel finds that the disputed domain name is confusingly similar to the RIZE Mark as set forth below.

 

Complainant has rights in the RIZE Mark based on its registration with the USPTO. Registration with the USPTO is sufficient to establish rights in a trademark pursuant to 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)). Here, Complainant provides copies of its RIZE trademark registrations with the USPTO (e.g., United States Reg. No. 4,475,101, registered on Jan. 28, 2014). Therefore, the Panel finds that Complainant has rights in the RIZE Mark per Policy ¶4(a)(i).

 

The Panel also concludes that the disputed domain name is confusingly similar to Complainant’s RIZE Mark. It contains Complainant’s trademark in its entirety, followed by the descriptive term “bed”, and then followed by the gTLD “.net”. The addition of a descriptive term does not prevent the disputed domain name from being deemed confusingly similar to the RIZE Mark as long as the RIZE Mark itself is recognizable. Finally, the addition of a descriptive term and a gTLD to a trademark is insufficient to distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). See MTD Products Inc v J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”).

 

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been established by Complainant.

 

Rights or Legitimate Interests

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”).  Here, the Panel holds that Complainant has made out a prima facie case.

 

The Panel agrees with Complainant’s assertion that Respondent has no rights or legitimate interests in the disputed domain name as Respondent has not provided evidence nor proven that it is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the RIZE Mark.  Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. Further, 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 uses the disputed domain name to impersonate Complainant in a fraudulent phishing scheme aimed at defrauding Complainant and its customers. Respondent uses the disputed domain name to send fraudulent emails, purporting to come from one of Complainant’s former employees, which use is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(ii) and (iv). See 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 purportedly from agents of complainant to be neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).

 

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been established by Complainant.

 

Registration and Use in Bad Faith

This Panel finds that, based on the record, Complainant has demonstrated the existence of Respondent’s bad faith registration and use pursuant to paragraph 4(b)(iv) of the Policy as described below.

 

First, the use of a disputed domain name to intentionally attempt to attract Internet users to a respondent’s website or online location by creating a likelihood of confusion or a false association with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website or online location demonstrates registration and use in bad faith. See AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006).

 

Second, the RIZE Mark, which was used and registered by Complainant in advance of Respondent’s registration of the disputed domain name, renders it wholly implausible that Respondent created the disputed domain name independently. Moreover, where a disputed domain name is so obviously connected with a well-known name, product or service, its use by someone with no connection to the name, product or service indicates bad faith. Therefore, the Panel concludes that Respondent had actual knowledge of Complainant’s rights in the RIZE Mark, and this constitutes bad faith under Policy ¶ 4(a)(iii). It therefore strains credulity to believe that Respondent had not known of the Complainant or its RIZE Mark when registering the disputed domain name. Thus, as here, prior knowledge of a complainant’s trademark before registering a domain name is sufficient to find bad faith under Policy ¶4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum February 6, 2014) (finding actual knowledge due to the domain name chosen and the use made of it).

 

Third, registration and use of a disputed domain name which is confusingly similar to a complainant’s mark and using that disputed domain name as part of an email to pass off as affiliated with the complainant in furtherance of a phishing scheme is evidence of bad faith per Policy ¶ 4(b)(iv). See 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). Here, Complainant has provided a copy of an email sent using the disputed domain name. In the email, the email signature block of one of Complainant’s former employees was used, along with an accurate telephone number, fax number, email, web, and physical, address, and the email demanded payment for items sold by Complainant to Complainant’s customers. Complainant further contends that Respondent has hacked Complainant’s servers and has stolen sensitive proprietary information identifying Complainant’s customers, including names, addresses, email addresses, invoice numbers and other billing information stored on Complainant’s servers. Respondent purportedly used the stolen information to make fraudulent demands for payment sent from the disputed domain name.

 

Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been established by Complainant.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <rizebed.net> disputed domain name be TRANSFERRED from Respondent to Complainant.

 

Lynda M. Braun, Panelist

Dated:  September 30, 2022

 

 

 

 

ANNEX 1

 

Mantua Manufacturing Company v. Withheld for Privacy Purposes

ehf / Name Redacted

Claim Number: FA2208002009714

 

 

 

 

According to the verification report received from the Registrar, NameCheap, Inc., the record of registration lists “Athena Waggoner”, a former employee of Complainant, as registrant of the disputed domain name <rizebed.net>.

 

Because the Panel has determined that the above-mentioned disputed domain name was most likely registered by a third-party without the involvement of the above-mentioned Respondent, the Panel has redacted its name from the Decision to which this Annex is appended.  The concerned Registrar is nevertheless directed to transfer the disputed domain name listed under the above-mentioned Respondent to Complainant.

 

 

 

_________________

Lynda M. Braun

Panelist

Date:  September 30, 2022