The Mosaic Company v. Marshal Lyckky
Claim Number: FA2210002015463
Complainant is The Mosaic Company (“Complainant”), represented by Michael Gale-Butto of Patterson Thuente IP, United States of America. Respondent is Marshal Lyckky (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mosaico-us.com>, registered with 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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to Forum electronically on October 10, 2022; Forum received payment on October 10, 2022.
On October 11, 2022, NameCheap, Inc. confirmed by e-mail to Forum that the <mosaico-us.com> 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 October 14, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 3, 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@mosaico-us.com. Also on October 14, 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, Forum transmitted to the parties a Notification of Respondent Default.
On November 7, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons as Panelist (the "Panel").
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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 asserts trademark rights in MOSAIC and submits that the domain name is confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name since it has been used for a nefarious purpose.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision are that:
1. Complainant is the owner of United States Patent & Trademark Office (“USPTO”) Reg. No. 3,143,074, registered September 12, 2006, for the trademark, MOSAIC;
2. there is no relationship between the parties and Complainant has not authorized Respondent to use its trademark or register any domain name incorporating that trademark;
3. the disputed domain name was registered on February 3, 2022, and resolves to a parked page with miscellaneous links, none connected with Complainant’s business under the trademark; and
4. the disputed domain name has also been used as part of an email address and for the fraudulent purpose later described.
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 the domain name be 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 based on 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory[i].
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights[ii]. The Panel finds that Complainant has rights in MOSAIC by reason of its USPTO registration.
The disputed domain name is an obvious telescoping of the trademark with the abbreviation for the word company, “co”, hyphenated with the country abbreviation “US”, and the gTLD, “.com”. The Panel finds the trademark to be the distinctive and recognizable part of the whole and so finds that the disputed domain name is confusingly similar to the trademark for the purposes of paragraph 4(a)(i) of the Policy[iii].
Accordingly, Complainant has satisfied the first element of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved, based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests[iv].
The publicly available WhoIs information shielded the name of the underlying domain name registrant but in consequence of these proceedings the Registrar disclosed the name of the actual holder as “Marshal Lyckky”. That name provides no prima facie evidence that Respondent might be known by the disputed domain name. There is nothing else to suggest that Respondent is commonly known by the domain name and there is no evidence it has trademark rights of its own.
Complainant provides evidence that the domain name resolves to the Registrar’s site where numerous links are shown to goods and services having no connection with Complainant. Further, the domain name has been used to further a fraudulent scheme to defraud potential customers of Complainant. The address sales@mosaico-us.com has been used to communicate with third parties with offers to sell products identical to those offered by Complainant. The communications misappropriate the name of an actual employee of Complainant.
The Panel finds that Complainant has made a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name[v]. The onus shifts to Respondent to establish a legitimate interest and, absent a Response, that prima facie case is not rebutted.
The Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied this second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered and used in bad faith.
Guidance is found in paragraph 4(b) of the Policy which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.
The Panel finds, as separate matters, registration in bad faith and use in bad faith. Any doubt that the domain name is an example of typosquatting is put to rest by evidence that since Complainant’s establishment in 2004 its online presence has been at the website, www.mosaicco.com. The Panel finds registration in bad faith. The use, already described, is clearly in bad faith[vi].
The Panel finds that Complainant has satisfied the third and final element of the Policy.
Having established all three elements required under the ICANN Policy in respect of the domain name, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mosaico-us.com> domain name be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Date: November 13, 2022
[i] See, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true; Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”)
[ii] See, for example, State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”)
[iii] See, for example, The Mosaic Company v. Anonymous Code (FA2209002013060) (October 24, 2022) ordering transfer of the <miosaicco.com> domain name; GLOCK, Inc. v. Domain Administrator / See PrivacyGuardian.org (FA2012001926822) (Forum Jan. 27, 2021) finding that “the addition of the generic term ‘us’ and a hyphen to the Complainant's mark does not prevent confusing similarity between the Domain Name and the Complainant's trade mark pursuant to the Policy.”
[iv] See, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
[v] See, for example, Vance Int’l Inc. v. Abend, FA 0970871 (Forum June 8, 2007) finding no bona fide offering of goods or services or a legitimate noncommercial or fair use, whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially benefitting from ‘click through fees’; Virtu Financial Operating, LLC v. Lester Lomax, FA 1580464 (Forum November 14, 2014) finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii) where the respondent was using the disputed domain name to phish for Internet users personal information by offering a fake job posting on the resolving website.
[vi] See, for example, Vivint, Inc. v. Online Management, FA1403001549084 (Forum Apr. 23, 2014) holding that the respondent had registered and used the disputed domain name in bad faith according to Policy ¶ 4(b)(iv) where the disputed domain name resolved to a parking page that featured no content besides sponsored advertisements and links; Betchel Group, Inc. v. ucy kay, FA1511001647177 (Forum Dec. 22, 2015) finding bad faith where Respondent used the domain to send fraudulent job offers to phish for personal information); Advance Magazine Publishers Inc. v. Domains By Proxy LLC/Marculles Brackard, Rock Your Fashion, Inc., WIPO Case No. DCO2016-0006 finding bad faith where the Respondent used the disputed domain name to send fraudulent emails impersonating the Editor-in-Chief).
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