Arrowhead Engineered Products, Inc., f/k/a Arrowhead Electrical Products, Inc. v. alex williamson
Claim Number: FA2303002038259
Complainant is Arrowhead Engineered Products, Inc., f/k/a Arrowhead Electrical Products, Inc. (“Complainant”), represented by Timothy D. Sitzmann of Winthrop & Weinstine, P.A., Minnesota, USA. Respondent is alex williamson (“Respondent”), Minnesota, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <arrowheadengineeredproducts.us>, 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.
Charles A. Kuechenmeister, Panelist.
Complainant submitted a Complaint to Forum electronically on March 31, 2023; Forum received payment on March 31, 2023.
On March 31, 2023, NameCheap, Inc. confirmed by e-mail to Forum that the <arrowheadengineeredproducts.us> domain name (the 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 the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On March 31, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of April 20, 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@arrowheadengineeredproducts.us. Also on March 31, 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 27, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Charles A. Kuechenmeister as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of a Response from Respondent.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
A. Complainant
Complainant manufactures, distributes and sells aftermarket vehicle parts and accessories. It has common law rights in the ARROWHEAD ENGINEERED PRODUCTS mark with first use in commerce on or before January 2017 as well as rights in the ARROWHEAD ELECTRICAL PRODUCTS mark through its registration of that mark with the United States Patent and Trademark Office (“USPTO”). The <arrowheadengineeredproducts.us> Domain Name is identical or confusingly similar to Complainant’s mark. It incorporates the common law ARROWHEAD ENGINEERED PRODUCTS mark in its entirety, merely adding the “.us” country code top level domain (“ccTLD”).
Respondent has no rights or legitimate interests in the Domain Name. It is not commonly known by the Domain Name, it falsely registered the Domain Name in the name of Complainant, Complainant has not authorized or licensed Respondent to use in the ARROWHEAD ENGINEERED PRODUCTS mark, and Respondent is not using the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use as it does not resolve to an active website and Respondent uses it to impersonate Complainant and send fraudulent emails to phish for personal information.
Respondent registered or uses the Domain Name in bad faith. It is using the confusingly similar Domain Name to attract Internet users to its email address for commercial gain by impersonating Complainant and engaging in phishing, and it had actual knowledge of Complainant’s rights to the ARROWHEAD ENGINEERED PRODUCTS mark when it registered the Domain Name. Finally, Respondent has demonstrated bad faith by providing false contact information to the registrar.
B. Respondent
Respondent did not submit a Response in this proceeding.
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 a complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:
(1) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) the respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
In view of Respondent's failure to submit a Response, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations 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 as true unless the evidence is clearly contradictory. Nevertheless, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. 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”), WIPO Overview 3.0, at ¶ 4.3 (“In cases involving wholly unsupported and conclusory allegations advanced by the complainant, . . . panels may find that—despite a respondent’s default—a complainant has failed to prove its case.”).
The Panel finds as follows with respect to the matters at issue in this proceeding:
Complainant has not registered its ARROWHEAD ENGINEERED PRODUCTS mark with the USPTO. It is well-settled, however, that a complainant need not show registration to establish rights in a mark for the purposes of Policy ¶ 4(a)(i). Common law rights are sufficient for that purpose if the complainant can establish such rights by showing that the mark has acquired secondary meaning. Oculus VR, LLC v. Ivan Smirnov, FA 1625898 (Forum July 27, 2015) (“A complainant does not need to hold registered trademark rights in order to have rights in a mark under Policy ¶ 4(a)(i) and it is well established that a Complainant may rely on common law or unregistered trademarks that it can make out”.), Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark). Secondary meaning is proven by showing exclusive use of the mark in commerce for a period of time, evidence of advertising and sales, recognition of the mark by customers, unsolicited media attention, or other evidence showing that the relevant consuming public has come to associate the mark with goods or services provided by a single vendor. Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA 1625750 (Forum July 17, 2015) (holding, “Complainant has provided evidence of secondary meaning by providing evidence of length of use in the mark; evidence of holding an identical domain name; media recognition; and promotional material/advertising (including letterhead and business cards.”), Gourmet Depot v. DI S.A., FA 1378760 (Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”). The WIPO Overview 3.0 at ¶ 1.3 lists a number of factors that support a claim of common law trademark rights, including “(i) the nature and duration of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.”
In this case, Complainant submitted a written Declaration by its Chief Financial Officer (Beukelman Declaration) stating among other things that Complainant began using the ARROWHEAD mark as early as 1985 and in 2017 began doing business under the new trade name ARROWHEAD ENGINEERED PRODUCTS. Attached to the Beukelman Declaration as Exhibit C are numerous articles and screenshots of websites describing Complainant’s growth and business affairs conducted under the ARROWHEAD ENGINEERED PRODUCTS mark. Some of this information is produced by Complainant, but many of them are produced by independent sources. Based upon this material it is evident that Complainant has been conducting its business under the ARROWHEAD ENGINEERED PRODUCTS mark for at least six years. On this evidence, the Panel finds that Complainant has common law rights in the ARROWHEAD ENGINEERED PRODUCTS mark sufficient to meet the requirements of Policy ¶ 4(a)(i).
Respondent’s <arrowheadengineeredproducts.us> Domain Name is identical or confusingly similar to Complainant’s mark. It fully incorporates the mark, merely omitting spaces and adding the “.us” ccTLD. These changes do not distinguish the Domain Name from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)), CloudFlare, Inc. v. [Registrant], FA 1624251 (Forum Aug. 1, 2015) (holding, “The inclusion of a ccTLD does not alleviate the similarity between a mark and a disputed domain name as per Policy ¶ 4(a)(i).”). The WIPO Overview 3.0, at ¶ 1.7, states that the test for confusing similarity “typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name.” Notwithstanding the changes described above, Complainant’s mark is clearly recognizable within the Domain Name.
For the reasons set forth above, the Panel finds that the Domain Name is identical or confusingly similar to the ARROWHEAD ENGINEERED PRODUCTS mark, in which Complainant has substantial and demonstrated rights.
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. 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”). If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0, at ¶ 2.1.
Policy ¶ 4(c) lists the following four nonexclusive circumstances, any one of which if proven can demonstrate a respondent’s rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) The respondent is the owner or beneficiary of a trade or service mark that is identical to the domain name;
(ii) Before any notice to the respondent of the dispute, the respondent’s 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;
(iii) The respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iv) The respondent is making a legitimate noncommercial 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 states that Respondent has no legitimate interests in the Domain Name because (i) it is not commonly known by the Domain Name, (ii) it falsely registered the Domain Name in the name of Complainant, (iii) Complainant has not authorized or licensed Respondent to use the ARROWHEAD ENGINEERED PRODUCTS mark, and (iv) Respondent is not using the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use as it does not resolve to an active website but Respondent uses it instead to impersonate Complainant and send fraudulent emails to phish for personal information. These allegations are addressed as follows:
Complainant did not address or offer any evidence bearing upon the Policy ¶ 4(c)(i) factor, concerning whether the Respondent is the owner or beneficiary of a trade or service mark that is identical to the Domain Name. Complainants in usTLD cases can search one or more governmental trademark authorities and report negative results to establish a prima facie case as to Policy ¶ 4(c)(i). Complainant here offered no such evidence. Nevertheless, while Complainant should have offered evidence bearing specifically upon this element, the evidence that is available is sufficient to establish that Respondent is not the owner or beneficiary of a trade or service mark identical to the Domain Name. In addition to developing its common law rights in the ARROWHEAD ENGINEERED PRODUCTS mark, Complainant has registered the marks ARROWHEAD ELECTRICAL PRODUCTS, INC., and ARROWHEAD POWERSPORTS with the USPTO (USPTO registration certificates included in Exhibit D to the Beukelman Declaration). In light of these registrations, it is extremely unlikely that the USPTO or any other governmental trademark authority would register a trademark identical to <arrowheadengineeredproducts.us> or any other mark identical or similar to the Domain Name in the name of any person other than Complainant or one of its affiliates, or that Respondent could be the owner or beneficiary of a valid common law trade or service mark identical to the Domain Name. On this evidence, and in the absence of any evidence to the contrary, the Panel finds that Respondent is not the owner or beneficiary of a valid trade or service mark identical to the Domain Name.
Complainant states that it has never authorized or permitted Respondent to use its mark. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel. In the absence of evidence that a respondent is authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights or legitimate interests in the domain name. IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name), Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”).
The WHOIS printout submitted as Beukelman Declaration Exhibit F and the information furnished to the Forum by the registrar list “alex williamson” as the registrant of the Domain Name. This name bears no resemblance to the Domain Name. Evidence could, of course, in a given case demonstrate that the respondent is commonly known by a domain name different from the name in which it registered the domain name, e.g., the case of a domain name incorporating the brand name of a specific product offered by and associated with the respondent. In the absence of any such evidence, however, and in cases where no response has been filed, UDRP panels have consistently held that WHOIS evidence of a registrant name which does not correspond with the domain name is sufficient to prove that the respondent is not commonly known by the domain name. 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), Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (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 Panel is satisfied that Respondent has not been commonly known by the Domain Name for the purposes of Policy ¶ 4(c)(iii).
Beukelman Declaration Exhibit E consists of copies of a string of emails initiated sent by one Jason Flagstad, ostensibly on behalf of Complainant, from the email address info@arrowheadengineeredproducts.us inviting the addressee to schedule an employment interview. This demonstrates that Respondent is impersonating Complainant, engaging with the addressee for a discussion about employment purportedly with Complainant. Respondent is thus impersonating or passing off as Complainant. Using a confusingly similar domain name to impersonate a complainant and send fraudulent emails is neither a bona fide offering of goods or services under Policy ¶ 4(c)(ii) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv). Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the at-issue domain name to pose as Complainant’s CEO by means of email addresses at the confusingly similar domain name in an attempt to determine Complainant’s ability to process a transfer. Using the domain name in this manner is neither a bona fide offering of goods and services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)”), Microsoft Corporation v. Terrence Green / Whois Agent / Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr. 4, 2016) (finding the respondent’s use of the disputed domain names to send fraudulent emails purportedly from agents of complainant to be neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).[i]
Complainant alleges that the purpose of Respondent’s fraudulent emails is to obtain personal information from would-be job applicants. This is tantamount to an allegation of phishing, which is a fraudulent attempt to obtain sensitive information such as usernames, passwords and credit card details by disguising oneself as a trustworthy entity in an electronic communication. This may well be Respondent’s intent, but there is no evidence of that before the Panel, and the Panel is reluctant to enter a finding of phishing without more evidence to support it. Complainant’s allegation of phishing is not proven.
Finally, according to the WHOIS printout submitted as Beukelman Exhibit F, the information Respondent provided to the registrar lists Complainant as the organization registrant of the Domain Name. The fact that Respondent made this patently false statement is further evidence that Respondent has no claim to any rights or legitimate interests in the Domain Name in its own name.
The evidence furnished by Complainant establishes the required prima facie case. On that evidence, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
Policy ¶ 4(b) sets forth a nonexclusive list of four circumstances, any one of which if proven would be evidence of bad faith use and registration of a domain name. They are as follows:
(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 which 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; 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, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s web site 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 web site or location or of a product of service on the respondent‘s web site or location.
The evidence of Respondent’s conduct discussed above in the rights or legitimate interests analysis also supports a finding of bad faith registration or use. Respondent is using the Domain Name for an email account which it uses to pass off as Complainant and send false recruitment-oriented emails to unsuspecting persons. This does not fit within any of the circumstances set forth in Policy ¶ 4(b) but that paragraph recognizes that mischief can manifest in many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (January 5, 2005). The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and passing off as a complainant, in and of itself, is evidence of bad faith. Hewlett-Packard Development Company, L.P. v. Hyatt, FA1811001818756 (Forum Dec. 28, 2018) (“using a domain name to pose as a complainant to promote a fraudulent scheme has often been held to constitute bad faith”) (citations omitted); 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.”).
Next, it is evident that Respondent had actual knowledge of Complainant and its mark when it registered the Domain Name in September of 2022 (WHOIS printout submitted as Beukelman Exhibit F shows creation date). The ARROHEAD ENGINEERED PRODUCTS mark, which is also Complainant’s corporate name, is a unique, coined term that has no meaning other than for its association with Complainant. Respondent not only copied that mark exactly into the Domain Name but impersonated Complainant in its emails, even to the extent of using the name of one of Complainant’s principal officers (Beukelman Declaration ¶ 18). In light of the non-exclusive nature of Policy ¶ 4(b), registering a confusingly similar domain name with actual knowledge of a complainant’s rights in a mark is evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii). Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Finally, Respondent falsely listed Complainant as the organization registrant of the Domain Name with the registrar and gave its street address as nearly identical to that of Complainant (WHOIS printout submitted as Beukelman Declaration Exhibit F). This is further evidence of bad faith registration of the Domain Name. CNU ONLINE Holdings, LLC v. Domain Admin / Whois Privacy Corp., FA1504001614972 (Forum May 29, 2015) (“As the Panel sees that Respondent has provided false or misleading WHOIS information, the Panel finds bad faith in Respondent’s registration of the disputed domain name per Policy ¶ 4(a)(iii).”).
For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Name in bad faith within the meaning of Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <arrowheadengineeredproducts.us> Domain Name be TRANSFERRED TO COMPLAINANT.
Charles A. Kuechenmeister, Panelist
May 1, 2023
[i] The cases cited in this section were decided under the Uniform Dispute Resolution Policy (UDRP), which does not include usTLD Policy ¶ 4(c)(i). The usTLD Policy ¶¶ 4(c)(ii), (iii) and (iv) are identical to UDRP Policy ¶¶ 4(c)(i)(ii) and (iii).
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