Formlabs Inc. v. Ahmed Kendrick / Jacky
Claim Number: FA2212002022776
Complainant is Formlabs Inc. (“Complainant”), USA, represented by Robert M. O'Connell of Orrick, Herrington & Sutcliffe LLP, California, USA. Respondent is Ahmed Kendrick / Jacky (“Respondent”), Italy.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fornlabs.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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 Forum electronically on December 5, 2022; Forum received payment on December 5, 2022.
On December 6, 2022, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to Forum that the disputed domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 December 8, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 28, 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@fornlabs.com. Also on December 8, 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 December 29, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Ho-Hyun Nahm, Esq. 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
i) Complainant, Formlabs Inc., is a developer and manufacturer of 3D printing technology. Complainant has rights in the FORMLABS mark through trademark registration, including with the United States Patent and Trademark Office (“USPTO”) (e.g., USPTO Reg. No. 4,432,238, registered on November 12, 2013). The disputed domain name is nearly identical to the FORMLABS mark as it merely misspells the mark and adds a generic top-level domain (“gTLD”).
ii) Respondent lacks rights and legitimate interests in the disputed domain name since Respondent is not commonly known by the disputed domain name and Complainant has never authorized Respondent to use the FORMLABS mark. Respondent is also typosquatting and not actively using the disputed domain name.
iii) Respondent registered and uses the disputed domain name in bad faith by impersonating Complainant through fraudulent emails to defraud Complainant’s clients. Respondent also fails to make active use of the disputed domain name and had knowledge of Complainant’s rights in the FORMLABS mark.
B. Respondent
Respondent did not submit a response in this proceeding.
1. The disputed domain name was registered on September 28, 2022.
2. Complainant has established rights in the FORMLABS mark through trademark registration with the USPTO (e.g., USPTO Reg. No. 4,432,238, registered on November 12, 2013).
3. Respondent passes off as Complainant through fraudulent and misleading emails.
4. Respondent has engaged in illegal phishing activity, impersonating Complainant to defraud Complainant’s clients, directing them to deposit payments into a false account.
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 claims rights in the FORMLABS mark through trademark registration, including with the USPTO (e.g., USPTO Reg. No. 4,432,238, registered on November 12, 2013). Registration of a mark with the USPTO is a valid showing of rights in a mark under Policy ¶ 4(a)(i). Since Complainant provides evidence of registration of the FORMLABS mark with the USPTO, the Panel finds Complainant has established rights in the FORMLABS mark per Policy ¶ 4(a)(i).
Complainant argues that the disputed domain name <fornlabs.com> is nearly identical to its FORMLABS mark as it simply misspells the mark, exchanging the “m” for “n,” and adds the “.com” gTLD. Misspelling of a mark is insufficient to defeat a finding of confusing similarity. See WordPress Foundation v. Bernat Lubos, FA 1613444 (Forum May 21, 2015) (finding that the <worspress.org> domain name is confusingly similar to the WORDPRESS mark under Policy ¶4(a)(i), stating, “On a standard QWERTY keyboard, the letters ‘s’ and ‘d’ are adjacent. A minor misspelling is not normally sufficient to distinguish a disputed domain name from a complainant’s mark.”). Further, gTLDs are irrelevant for purposes of Policy ¶4(a)(i) analysis. Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s FORMLABS 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 has no rights or legitimate interests in the disputed domain name because Respondent is not commonly known by the disputed domain name and Complainant has never licensed rights to or authorized Respondent to use the FORMLABS mark. In the absence of a response, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name. 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); see also CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015) (“The Panel notes that the WHOIS information merely lists a privacy service as registrant. In light of Respondent’s failure to provide any evidence to the contrary, the Panel finds there is no basis to find Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).”). In addition, where there is no evidence to indicate a complainant has authorized the use of a mark, it may act as support that a respondent is not commonly known by the disputed domain name and thus lacks any rights or legitimate interest in 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)”); see also Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration).
The unmasked WHOIS information for the disputed domain name lists the registrant as “Ahmed Kendrick” with the organization “Jacky.” There is no other evidence to suggest that Respondent was authorized, licensed rights to, or otherwise permitted to use the FORMLABS mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name, and lacks rights or legitimate interest in the disputed domain name per Policy ¶ 4(c)(ii).
Complainant further contends that Respondent is not making any active use of the disputed domain name. Failure to actively use a disputed domain name does not constitute either a bona fide offering of goods or services or a legitimate noncommercial or fair use. 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).”). Complainant provides a screenshot of the disputed domain name resolving to a page that says “This site can’t be reached.” The Panel finds that Respondent makes neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name under Policy ¶¶ 4(c)(i) and (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 by impersonating Complainant through fraudulent emails. Passing off as a complainant and confusing Internet users as to the source or affiliation of a domain name has been found to show bad faith. See Am. Univ. v. Cook, FA 208629 (Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); see also Smiths Group plc v. Snooks, FA 1372112 (Forum Mar. 18, 2011) (finding that the respondent’s attempt to impersonate an employee of the complainant was evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).
Complainant provides evidence of several emails that were sent with the disputed domain name, including an email that purported to be from an actual employee. Therefore, the Panel agrees that Respondent passes off as Complainant through fraudulent and misleading emails, and finds Respondent’s bad faith registration and use of the disputed domain name per Policy ¶¶ 4(b)(iii) and/or (iv).
Complainant further contends that Respondent is impersonating Complainant to defraud Complainant’s clients, directing them to deposit payments into a false account. Previous panels have consistently found phishing and other fraudulent activity to be proof of bad faith under Policy ¶ 4(b)(iii). See, e.g., 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); SHUAA Capital psc v. Oba Junkie / shuaa capital psc, FA14009001581255 (Forum Oct. 29, 2014) (“The Panel finds that Respondent’s use of the domain name’s e-mail suffix for fraudulent purposes illustrates Policy ¶ 4(a)(iii) bad faith.”). As noted above, Complainant provides the emails sent from the disputed domain name soliciting payment. Therefore, the Panel finds that Respondent has engaged in illegal phishing activity, which supports a finding of bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(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 <fornlabs.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: January 2, 2023
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