Vanguard Trademark Holdings USA LLC v. Idah Idah
Claim Number: FA2212002022839
Complainant is Vanguard Trademark Holdings USA LLC (“Complainant”), represented by Joel R. Samuels of Harness, Dickey & Pierce, PLC, US. Respondent is Idah Idah (“Respondent”), ID.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <alam9.com> (“Domain Name”), registered with Key-Systems GmbH.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to Forum electronically on December 5, 2022; Forum received payment on December 5, 2022.
On December 07, 2022, Key-Systems GmbH confirmed by e-mail to Forum that the <alam9.com> domain name is registered with Key-Systems GmbH and that Respondent is the current registrant of the name. Key-Systems GmbH has verified that Respondent is bound by the Key-Systems GmbH 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 12, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 3, 2023 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@alam9.com. Also on December 12, 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 January 5, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Nicholas J.T. Smith 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, Vanguard Trademark Holdings USA LLC, provides vehicle rental and leasing services. Complainant asserts rights in the ALAMO mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,097,722, registered July 25, 1978). Respondent’s <alam9.com> is confusingly similar to Complainant’s ALAMO trademark because it changes the letter “O” in the ALAMO mark to the number “9” and adds the generic top-level domain name (“gTLD”) “.com”.
Respondent does not have rights or legitimate interests
in the <alam9.com> domain name. Respondent is not licensed or
authorized to use Complainant’s ALAMO
mark and is not commonly known by the Domain
Name. Respondent also does not use the Domain
Name for any bona fide offering of
goods or services or legitimate noncommercial or fair use. Rather,
Respondent appears to be using or preparing to use the Domain Name for a
phishing scheme. Respondent engages in typosquatting.
Respondent registered and uses the <alam9.com> domain name in bad faith. Respondent is seeking to disrupt Complainant’s business and has a pattern of bad faith registration. Respondent registered the Domain Name using a privacy service. Respondent had actual knowledge of Complainant’s rights in the ALAMO mark at the time of registration. Respondent is using or seeking to use the Domain Name for a phishing scheme.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the ALAMO mark. The Domain Name is confusingly similar to Complainant’s ALAMO mark. Complainant has established that Respondent lacks rights or legitimate interests in the Domain Name and that Respondent registered and has used the Domain Name in 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 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 asserts rights in the ALAMO mark through its registration of the mark with the USPTO (e.g., Reg. No. 1,097,722, registered July 25, 1978). Registration of a mark with the USPTO is generally sufficient to establish rights in the 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).”).
The Panel finds that the <alam9.com> domain name is confusingly similar to Complainant’s ALAMO mark as it is a misspelling of the ALAMO mark, merely substituting the letter “O” with the number “9” (the number directly above the letter “O” on the QWERTY keyboard) and adding the gTLD “.com”. Misspelling a mark by adding, deleting, or exchanging a letter or number is not sufficient to avoid confusion between a domain name and a mark. See Omaha Steaks International, Inc. v. DN Manager / Whois-Privacy.Net Ltd, FA 1610122 (Forum July 9, 2015) (finding, “The domain name differs from the mark only in that the domain name substitutes the letter ‘a’ in the word ‘steak’ with the letter ‘c’ and adds the generic Top Level Domain (‘gTLD’) ‘.com.’ These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy.”); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the ALAMO mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS lists “Idah Idah” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).
The Domain Name resolves to a website which requests that the user “click ‘allow’ if you are not a robot”. There is no other content on the website or further explanation. Such website content is often used as a mechanism to facilitate the download of malicious software onto the visitor’s computer. This conduct is not a bona fide offering or a legitimate noncommercial or fair use. See Coachella Music Festival, LLC v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1785199 (Forum June 5, 2018) (“Respondent uses the <coechella.com> domain name to direct internet users to a website which is used to attempt to install malware on visiting devices. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use under Policy ¶ 4(c)(iii).”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds on the balance of probabilities that, at the time of registration of the Domain Name, August 11, 2022, Respondent had actual knowledge of Complainant’s ALAMO mark. The ALAMO mark is a well-known mark that has been used by the Complainant for over 40 years. There is no obvious reason (and none has been provided) why an entity would register a Domain Name containing a misspelling of the ALAMO mark and use it for a site apparently facilitating the download of malicious software/malware other than to take advantage of the similarity between the Domain Name and the ALAMO mark. In the absence of rights or legitimate interests of its own the Panel finds that Respondent’s registration of the Domain Name in awareness of the ALAMO mark demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
Furthermore, Respondent’s registration of the Domain Name is part of a pattern of bad faith registration and use of domain names. The Panel is aware of at least 5 prior UDRP cases where Respondent, Idah Idah, has been ordered to transfer ownership of domain names. A pattern of bad faith registration can be established by a showing of prior adverse UDRP precedent, and such a pattern can indicate bad faith per Policy ¶ 4(b)(ii). See Webster Financial Corporation and Webster Bank, National Association v. Above.com Domain Privacy, FA1209001464477 (Forum Nov. 30, 2012) (finding where the record reflected that the respondent had been a respondent in other UDRP proceedings in which it was ordered to transfer disputed domain names to various complainants established a pattern of bad faith registration and use of domain names and stood as evidence of bad faith in the registration and use of domain names under Policy ¶ 4(b)(ii)). The Panel therefore finds that the registration and use of the Domain Name is part of a pattern and is evidence of Respondent’s bad faith per Policy ¶ 4(b)(ii).
Finally, the Panel finds that Respondent registered and uses the Domain Name in bad faith as Respondent uses the Domain Name to deceive Internet users into installing malicious software on their computers. Use of a disputed domain name to impersonate a complainant in furtherance of a scheme to encourage malware is evidence of bad faith use per Policy ¶ 4(a)(iii). See Asbury Communities, Inc. v. Tiffany Hedges, FA 1785054 (Forum June 18, 2018) (“The Panel here finds that Respondent [installation of malware] further support the conclusion that Respondent registered and used the <asburymethodistvillage.com> domain name in bad faith 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 <alam9.com> domain name be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: January 6, 2023
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