Carl Zeiss AG v. Chas / Alice Rodriguez
Claim Number: FA2305002044834
Complainant is Carl Zeiss AG (“Complainant”), represented by Claudia W. Stangle, Illinois, USA. Respondent is Chas / Alice Rodriguez (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <carlzeiss.cc>, registered with NameSilo, 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to Forum electronically on May 16, 2023; Forum received payment on May 16, 2023.
On May 17, 2023, NameSilo, LLC confirmed by e-mail to Forum that the <carlzeiss.cc> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 May 19, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 8, 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@carlzeiss.cc. Also on May 19, 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 June 14, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant, Carl Zeiss AG, offers optical, opto-electronic and related products.
Complainant asserts rights to the CARL ZEISS mark based upon registration with the United States Patent and Trademark Office (“USPTO”) and other trademark offices worldwide.
Respondent’s <carlzeiss.cc> domain name is confusingly similar to Complainant’s mark as it contains the CARL ZEISS mark in its entirety, merely adding the country code top-level domain (“ccTLD”) “.cc” to form the at-issue domain name.
Respondent does not have rights or legitimate interests in the <carlzeiss.cc> domain name. Respondent is not licensed or authorized to use Complainant’s CARL ZEISS mark and is not commonly known by the at-issue domain name. Respondent does not use the at-issue domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the at-issue domain name to host a parked webpage displaying unrelated hyperlinks. Additionally, Respondent uses the domain name to pass off as Complainant by impersonating an employee through emails.
Respondent registered and uses the <carlzeiss.cc> domain name in bad faith. Respondent registered and uses the at-issue domain name to pass off as Complainant by impersonating one of Complainant’s officers via email. Additionally, Respondent’s use of a privacy service demonstrates bad faith registration and use. Finally, Respondent registered and uses the domain name with constructive and/or actual knowledge of Complainant’s rights in the CARL ZEISS mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has trademark rights in the CARL ZEISS mark.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in the CARL ZEISS trademark.
Respondent uses the at-issue domain name to facilitate fraud via deceptive email.
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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of the CARL ZEISS mark with the USPTO, or any of its other bona fide national registrations for such mark worldwide, sufficiently demonstrates Complainant’s rights in a mark under Policy ¶ 4(a)(i). See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sep. 4, 2018) (“Complainant has rights in the GMAIL mark based upon its registration of the mark with numerous trademark agencies around the world.”); see also Bloomberg Finance L.P. v. Jimmy Yau, FA 1764034 (Forum Jan. 25, 2018) (“The Panel finds that complainant has rights in BLOOMBERG mark under Policy ¶ 4(a)(i) based upon its registration with multiple trademark agencies, including the USPTO.”).
Respondent’s <carlzeiss.cc> domain name contains Complainant’s CARL ZEISS trademark less its domain name impermissible space with all followed by the “.cc” top-level domain name. Respondent’s slight alterations to Complainant’s trademark in creating the at-issue domain name fail to distinguish the domain name from Complainant’s CARL ZEISS trademark. Therefore, the Panel concludes that Respondent’s <carlzeiss.cc> domain name is confusingly similar to Complainant’s CARL ZEISS trademark pursuant to Policy ¶ 4(a)(i). See Wicked Weasel Pty Ltd v. Kulich / GS, FA 1604785 (Forum Apr. 23, 2015) (finding, “The addition of a ccTLD to a registered trademark is not sufficient to overcome a finding of confusing similarity under a Policy ¶4(a)(i) analysis.”); see also, 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).”).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
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. See 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 WHOIS information for the at-issue domain name identifies the domain name’s registrant as “Chas/Alice Rodriguez” and the record before the Panel contains no evidence tending to prove that Respondent is commonly known by the <carlzeiss.cc> domain name. The Panel therefore concludes that Respondent is not commonly known by the <carlzeiss.cc>domain name for the purposes of Policy ¶ 4(c)(ii). See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sep. 4, 2018) (concluding that Respondent was not commonly known by the disputed domain name where “the WHOIS of record identifies the Respondent as “Bhawana Chandel,” and no information in the record shows that Respondent was authorized to use Complainant’s mark in any way.”).
Respondent’s <carlzeiss.cc> domain name hosts a parked website displaying generic hyperlinks. Respondent use of the domain name in this manner shows neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See Provide Commerce, Inc. v. e on Craze, FA1506001626318 (Forum Aug. 11, 2015) (holding that the respondent was not making a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) and 4(c)(iii) where the respondent was using the disputed domain name to host generic links to third-party websites, some of which directly competed with the complainant’s business).
Additionally, Respondent uses <carlzeiss.cc> to pass itself off as Complainant by sending email from the at-issue domain name that impersonate one of Complainant’s officers and board member and thereby deceive the recipient into falsely believing they are dealing with Complainant. Disguised as Complainant, the fraudulent email attempts to solicit third parties to purchase deeply discounted products allegedly made by Complainant while asking for a substantial upfront payment for related expenses. Such use of the domain name also indicates neither a bona fide offering of goods or services under Policy ¶ 4 (c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). 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); see also 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.”).
Given the forgoing, Complainant satisfies its initial burden and demonstrates Respondent’s lack of rights and lack of legitimate interests in respect of the at-issue domain name under Policy ¶ 4(a)(ii).
The at-issue domain name was registered and is being used in bad faith. As discussed below without being exhaustive, there is evidence from which the Panel may conclude that Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii).
As mentioned above regarding rights and legitimate interests, Respondent is using its confusingly similar <carlzeiss.cc> domain name to address a parking website offering hyperlinks to third parties. Using the domain name in such manner is disruptive to Complainant’s business, takes advantage of the confusion between the at-issue domain name and Complainant’s trademark, and indicates Respondent’s bad faith pursuant to Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv). See Lenovo (Beijing) Limited Corporation China v. jeonggon seo, FA1411001591638 (Forum Jan. 16, 2015) (finding that where the complainant operated in the computer industry and the respondent used the disputed domain name to offer competing computer related links, the respondent was disrupting the complainant’s business offerings in violation of Policy ¶ 4(b)(iii)); see also, Vivint, Inc. v. Online Management, FA1403001549084 (Forum Apr. 23, 2014) (holding that the respondent had registered and used the disputed domain name in bad faith according to Policy ¶ 4(b)(iv) where the disputed domain name resolved to a parking page that featured no content besides sponsored advertisements and links).
Further and also discussed regarding Respondent’s rights and legitimate interests, Respondent uses the at-issue domain name in connection with an email phishing scheme that is ultimately aimed at swindling funds from third parties. Respondent’s use of <carlzeiss.cc> to assist Respondent in creating sham email to support fraud shows Respondent’s bad faith registration and use of the <carlzeiss.cc> domain name under the Policy. 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, Funding Circle Limited v. tim mcelwain / timmcelweain, FA 2003934 (Forum Aug. 4, 2022) (Respondent uses the at-issue domain name to facilitate [a] phishing scheme designed to swindle funds from Complainant’s customers. Such use of the confusingly similar domain name indicates Respondent’s bad faith under the Policy.).
Moreover, Respondent had actual knowledge of Complainant’s rights in the CARL ZEISS mark when Respondent registered <carlzeiss.cc> as a domain name. Respondent’s actual knowledge is evident given the mark’s notoriety and given Respondent’s scheme to use the domain name to pass itself off as Complainant via email. See, Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <carlzeiss.cc> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: June 15, 2023
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