Carahsoft Technology Corp. v. David Mayor
Claim Number: FA2303002037139
Complainant is Carahsoft Technology Corp. (“Complainant”), USA, represented by Adam D. Mandell of Millen, White, Zelano & Branigan, P.C., Virginia, USA. Respondent is David Mayor (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <carahsoftcareers.com>, registered with Google LLC.
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 March 23, 2023; Forum received payment on March 23, 2023.
On March 24, 2023, Google LLC confirmed by e-mail to Forum that the <carahsoftcareers.com> domain name is registered with Google LLC and that Respondent is the current registrant of the name. Google LLC has verified that Respondent is bound by the Google LLC 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 March 28, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 17, 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@carahsoftcareers.com. Also on March 28, 2023, 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 April 21, 2023, 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, Carahsoft Technology Corp., is an information technology distributorship service and provider of technology-related information and trainings. Complainant has rights in the CARAHSOFT mark through trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,685,627, which was registered on September 22, 2009). The disputed domain name is confusingly similar to the CARAHSOFT mark as it incorporates the entire mark, merely adding a descriptive term and generic top-level domain (“gTLD”).
ii) Respondent lacks rights or legitimate interests in the disputed domain name since Respondent is not licensed or authorized to use Complainant’s CARAHSOFT mark and is not commonly known by the disputed domain name. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Respondent impersonates Complainant through email to defraud consumers. The disputed domain name is not actively used.
iii) Respondent registered and uses the disputed domain name in bad faith by passing off as Complainant in furtherance of fraud. Respondent also does not actively use the disputed domain name. Respondent registered the disputed domain name with a privacy service. Complainant’s CARAHSOFT mark is unique and well-known, so there was no reason for Respondent to register or use the disputed domain name other than to trade off Complainant’s goodwill in the mark.
B. Respondent
Respondent did not submit a response in this proceeding.
1. The disputed domain name was registered on March 16, 2023.
2. Complainant has established rights in the CARAHSOFT mark through trademark registrations with the USPTO (e.g., Reg. No. 3,685,627, which was registered on September 22, 2009).
3. Respondent used the disputed domain name to host email pretending to be from Complainant.
4. The disputed domain name resolves to an inactive page.
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 CARAHSOFT mark through trademark registrations with the USPTO (e.g., Reg. No. 3,685,627, which was registered on September 22, 2009). 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 CARAHSOFT mark with the USPTO, the Panel finds Complainant has established rights in the CARAHSOFT mark per Policy ¶ 4(a)(i).
Complainant argues the disputed domain name <carahsoftcareers.com> is confusingly similar to its CARAHSOFT mark since it incorporates the entire mark and simply adds a descriptive term “careers” and “.com” gTLD. When a disputed domain name wholly incorporates another’s mark, panels have found additional terms insufficient to defeat a finding of confusing similarity. 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.”); see also Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy paragraph 4(a)(i).). Given that the disputed domain name incorporates Complainant’s mark in its entirety and merely adds a descriptive term “careers” and the “.com” gTLD, the Panel finds the disputed domain name is confusingly similar to Complainant’s 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 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 CARAHSOFT 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 Tercent Inc. v. Lee Yi, FA 139720 (Forum Feb. 10, 2003) (stating “nothing in [the respondent’s] WHOIS information implies that [the respondent] is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply). In addition, where there is no evidence to indicate a complainant has authorized the use of a mark, it may 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 Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA 1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The unmasked WHOIS information for disputed domain name lists the registrant as “David Mayor.” Further, there is no evidence to suggest Respondent was authorized, licensed rights to, or otherwise permitted to use the CARAHSOFT mark. Therefore, the Panel finds Respondent is not commonly known by, and lacks rights or legitimate interests in, the disputed domain name per Policy ¶ 4(c)(ii).
Complainant also contends Respondent is impersonating Complainant through fraudulent emails. Panels have held that a respondent’s use of a disputed domain name to impersonate and pass off as a complainant does not constitute either a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Emerson Electric Co. v. Adilcon Rocha, FA 1735949 (Forum July 11, 2017) (finding that respondent’s attempt to pass off as complainant through emails does not constitute a bona fide offering of goods or services and, as such, respondent lacked rights or legitimate interests in the disputed domain name.). Complainant provides a copy of an email that Respondent sent to an individual seeking employment with Complainant to support its contention. The Panel finds Respondent’s attempt to pass off as Complainant through emails does not constitute a bona fide offering of goods or services.
Complainant further argues the disputed domain name resolves to an inactive page. A respondent’s failure to make active use of a disputed domain may indicate a lack of rights or legitimate interests. 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’s resolving page, which displays the error message, “This site can’t be reached.” The Panel finds Respondent’s failure to actively use the disputed domain name demonstrates a lack of rights or legitimate interests under Policy ¶ 4(c)(ii).
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 Respondent registered and uses the disputed domain name in bad faith by passing off as Complainant through email to defraud consumers. Passing off with email for phishing or fraud supports finding Respondent acts in bad faith. 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); see also Emdeon Business Services, LLC v. HR Emdeon Careers, FA 1507001629459 (Forum Aug. 14, 2015) (finding that the respondent had engaged in an email phishing scheme indicating bad faith under Policy ¶ 4(a)(iii), where respondent was coordinating the disputed domain name to send emails to Internet users and advising them that they had been selected for a job interview with the complainant and was persuading the users to disclose personal information in the process). As previously noted, Respondent used the disputed domain name to host email pretending to be from Complainant in furtherance of a fraudulent scheme to impersonate Complainant and defraud Internet users seeking employment with Complainant. Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith.
Complainant further contends that Respondent had knowledge of Complainant’s rights in the CARAHSOFT mark at the time of registering the disputed domain name. To support this assertion, Complainant points out that the disputed domain name was registered many years after Complainant had commenced use of Complainant’s CARAHSOFT mark and well after it had become well-known and incontestable. The Panel infers, due to the notoriety of Complainant’s mark and the manner of use of the disputed domain name that Respondent had knowledge of Complainant’s rights in the CARAHSOFT mark at the time of registering the disputed domain name, and finds that Respondent registered the disputed 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 <carahsoftcareers.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: April 25, 2023
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