RK HOLDINGS, LLP v. genaris james
Claim Number: FA2210002017696
Complainant is RK HOLDINGS, LLP (“Complainant”), represented by JungJin Lee of Trademark Lawyer Law Firm, PLLC, Michigan, USA. Respondent is genaris james (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ruralksing.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.
The Honorable Neil Anthony Brown KC as Panelist.
Complainant submitted a Complaint to Forum electronically on October 26, 2022; Forum received payment on October 26, 2022.
On October 27, 2022, NameCheap, Inc. confirmed by e-mail to Forum that the <ruralksing.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 November 1, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 21, 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@ruralksing.com. Also on November 1, 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 29, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC as Panelist.
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 made the following contentions.
Complainant provides a broad range of necessities, essential goods, food, feed, seed, and other farm and home products. Rural King was founded in 1962 to serve the Mattoon, Illinois area and has served its community in that area under the Rural King name and mark since its inception. Complainant has trademark rights to the RURAL KING mark by virtue of the registration of the mark with the United States Patent and Trademark Office (“USPTO”) in Reg. No. 2,927,520, registered February 22, 2005). Through Complainant’s continuous and extensive use in international commerce, the Rural King Mark has achieved substantial goodwill in the mark. The <ruralksing.com> domain name is confusingly similar to the RURAL KING mark as it is designed to direct customers into thinking that they had reached the Complainant’s actual site through a typographical error.
Complainant submits that Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name. Respondent is not using the disputed domain name in connection with any bona fide offering of goods and services or for any legitimate or fair use because Respondent is passing itself off as Complainant and misleading the public into purchasing items and submitting their payment information on the phishing site.
Respondent registered and uses the <ruralksing.com> domain name in bad faith. Respondent uses the disputed domain name for the purpose of disrupting the business of the Complainant and to attempt to attract Internet users to Respondent’s website for commercial gain. Additionally, Respondent had actual knowledge of Complainant’s rights in the Rural King mark prior to registration of the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that provides a broad range of necessities, essential goods, food, feed, seed, and other farm and home products.
2. Complainant has established its rights to the RURAL KING mark by virtue of its registration of the mark with the United States Patent and Trademark Office (“USPTO”) in Reg. No. 2,927,520, registered February 22, 2005).
3. Respondent registered the <ruralksing.com> domain name on October 31, 2021.
4. Respondent has caused the disputed domain name to be used in passing itself off as Complainant and misleading the public into purchasing items and submitting their payment information on Respondent’s phishing website.
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”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the RURAL KING mark by virtue of its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,927,520, registered February 22, 2005). See Compl. Ann. 2. Registration with a governmental trademark authority is sufficient to demonstrate rights in a mark per Policy ¶ 4(a)(i). 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).”). Therefore, the Panel finds that Complainant has rights in the RURAL KING mark per Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s RURAL KING mark. Complainant contends that the <ruralksing.com> domain name is confusingly similar to Complainant’s RURAL KING mark as it is designed to direct customers into thinking that they have reached the Complainant’s actual site through a typographical error. Typographical errors used to divert Internet users to a webpage controlled by a Respondent will not defeat an finding of confusing similar per Policy ¶ 4(a)(i). See Webster Financial Corporation and Webster Bank, National Association v. IS / ICS INC, FA 16070016833 (Forum Aug. 11, 2016) (“Typosquatting is a practice whereby a domain name registrant, such as Respondent, deliberately introduces typographical errors or misspellings into a trademark and then uses the string in a domain name. The conniving registrant wishes and hopes that Internet users will inadvertently type the malformed trademark or read the domain name and believe it is legitimately associated with the target trademark. In doing so, wayward Internet users are fraudulently directed to a web presence controlled by the confusingly similar domain name’s registrant.”). Therefore, as the Panel agrees, it finds that the <ruralksing.com> domain name is confusingly similar to Complainant’s RURAL KING mark per Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s RURAL KING mark and to use it in its domain name adding only the letter “s” to the mark, so that the domain name reads as <ruralksing.com>;
(b) Respondent registered the domain name on October 31, 2021;
(c) Respondent has caused the disputed domain name to be used in passing itself off as Complainant and misleading the public into purchasing items and submitting their payment information on Respondent’s phishing site;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant contends that Respondent is not commonly known by the <ruralksing.com> domain name. Where there is no response, WHOIS information can substantiate a finding that a respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). The WHOIS information of record names “genaris james” as the registrant of the disputed domain name. The Panel therefore finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii);
(f) Complainant submits that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or for any legitimate or fair use because the Respondent is directing Internet users to a website that resembles Complainant’s official website but is controlled by Respondent who is passing itself off as Complainant and misleading the public into purchasing items and submitting their payment information on the phishing site. Passing off as a complainant and conducting a phishing scheme is not a bona fide offering of goods and services or a legitimate or fair use per Policy ¶ 4(c)(i) and (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.”). Here, Complainant provides screenshot evidence of the infringing website. See Compl. Ann. 3. As the Panel agrees with Complainant, it finds Respondent diverted Internet users to a website passing itself off as Complainant in furtherance of a phishing scheme per Policy ¶ 4(c)(i) and (iii).
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 does not have a right or legitimate interest in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant contends Respondent registered and uses the <ruralksing.com> domain name in bad faith as Respondent uses the disputed domain name for the purpose of disrupting the business of the Complainant and to attempt to attract Internet users to Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s site. Use of a disputed domain name for disruption and commercial gain is evidence of bad faith per Policy ¶ 4(b)(iii) and (iv). See Nestlé Waters North America, Inc. v. Domain Administrator / Fundacion Privacy Services LTD, FA 1792308 (Forum July 22, 2018) (Finding Respondent uses the domain names to point to a site which offers links relating to Complainant’s business. “Accordingly, the Panel finds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, affiliation or endorsement of the web site likely to disrupt the business of the Complainant.”). Here, Complainant provides screenshot evidence of Respondent’s infringing website. See Compl. Ann. 3. Therefore, as the Panel agrees, it finds Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iii) and (iv).
Secondly, Complainant submits that Respondent registered the <ruralksing.com> domain name with actual knowledge of Complainant’s rights in the Rural King mark. Constructive knowledge is insufficient for a finding of bad faith registration of a disputed domain name; actual knowledge, however, is sufficient for a finding of bad faith per Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Here, Complainant contends Respondent had actual knowledge of Complainant’s rights in the RURAL KING mark based on Respondent’s use of the disputed domain name to sell counterfeit Rural King goods as well as from the notoriety of Complainant’s RURAL KING trademark. Complainant further submits and the Panel finds that Complainant first used the RURAL KING mark in 1962, well before Respondent registered the disputed domain name on October 31, 2021. See Compl. Ann. 1. Therefore, as the Panel agrees, it finds Respondent registered the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Thirdly, in addition and having regard to the totality of the evidence, the Panel
finds that, in view of Respondent’s registration of the disputed domain name using the RURAL KING mark and in view of the conduct that Respondent has
engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ruralksing.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown KC
Panelist
Dated: November 30, 2022
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