DECISION

 

Illinois Tool Works Inc. v. Michelle Tricia

Claim Number: FA2310002066456

PARTIES

Complainant is Illinois Tool Works Inc. ("Complainant"), represented by Bradley L. Cohn of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, Illinois, USA. Respondent is Michelle Tricia ("Respondent"), Texas, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <itwprobrand.com>, registered with Hosting Concepts B.V. d/b/a Registrar.eu.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Steven M. Levy, Esq. as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on October 16, 2023; Forum received payment on October 16, 2023.

 

On October 20, 2023, Hosting Concepts B.V. d/b/a Registrar.eu confirmed by e-mail to Forum that the <itwprobrand.com> domain name is registered with Hosting Concepts B.V. d/b/a Registrar.eu and that Respondent is the current registrant of the name. Hosting Concepts B.V. d/b/a Registrar.eu has verified that Respondent is bound by the Hosting Concepts B.V. d/b/a Registrar.eu 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 October 24, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 13, 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@itwprobrand.com. Also on October 24, 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 November 14, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Steven M. Levy, 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

For over a century, Complainant and its predecessors-in-interest have provided automotive, construction, food equipment, cleaning preparations, electronics, and welding products in the United States and worldwide. These goods and services have been offered under the trademarks ITW and ITW.COM and Complainant has obtained registration of such marks in many countries around the world (e.g., United Kingdom Reg. No. UK00900190579 Registered on June 17, 2002). Complainant has spent substantial sums advertising and promoting its goods under these marks and they have become well-known. The domain name <itwprobrands.com> is used for Complainant's own website and to promote its products and services. Respondent's <itwprobrand.com> domain name, registered on October 3, 2023, is confusingly similar to Complainant's marks as it incorporates them in their entirety and only adds the terms "pro" and "brand".

 

Respondent has no rights or legitimate interests in the disputed domain name where it is not commonly known by the name and it uses the domain name to pursue an email phishing scheme through which it seeks to defraud Complainant's customers into paying false invoices to a bank account that is controlled by Respondent.

 

The disputed domain name was registered and is used in bad faith where Respondent sends phishing emails as noted above. This disrupts Complainant's business and seeks to steal money from customers through confusion with Complainant's marks.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

-       Complainant has proven its ownership of rights in the ITW trademark and the disputed domain name is confusingly similar to such mark;

-       Respondent has no rights or legitimate interests in the disputed domain name where it is not commonly known by the name and the domain name is used in furtherance of a phishing scheme that seeks to steal funds from Complainant's customers; and

-       The disputed domain name was registered and is used in bad faith where Respondent engages in a phishing scheme as noted above.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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").

 

Identical and/or Confusingly Similar

 

Complainant claims rights in the ITW and ITW.COM marks through numerous trademark registrations, including with the United States Patent and Trademark Office, the European Union Intellectual Property Office, the United Kingdom Intellectual Property Office, and others. Registration of a mark with such government agencies is a valid showing of rights in a mark under Policy ¶ 4(a)(i). See Red Hat, Inc. v. Muhammad Shahzad, FA 1787738 (Forum June 19, 2018) ("Registration of a mark with multiple trademark agencies is sufficient to demonstrate rights to a mark per Policy ¶ 4(a)(i)."); see also Emerson Electric Co. v. Cai Jian Lin / Shen Zhen Shi colorsun Zi Dong Hua You Xian Gong Si, FA 1798802 (Forum Aug. 31, 2018) ("Registering a mark with multiple trademark agencies around the world is sufficient to establish rights in a mark for the purposes of Policy ¶ 4(a)(i).") Complainant provides screenshots from the above-mentioned trademark agencies as evidence of its registration of the ITW and ITW.COM marks. Based on those of its trademark registration submissions that mention Complainant as the owner¹, the Panel finds that Complainant has demonstrated rights in the ITW mark under Policy ¶ 4(a)(i).²

 

Next, Complainant argues that the <itwprobrand.com> domain name is confusingly similar to its ITW mark since it uses the entire mark, simply adding the generic or descriptive terms "pro" and "brand", as well as the ".com" gTLD. When a disputed domain name wholly incorporates a complainant's mark, Panels have most often found the addition of generic or descriptive terms to be insufficient to distinguish the domain name from the mark. See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) ("[T]he fact that a domain name wholly incorporates a Complainant's registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks"). Similarly, gTLDs are usually irrelevant for purposes of Policy ¶ 4(a)(i) analysis. See Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018) ("A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.") As Complainant's ITW mark is immediately recognizable in the disputed domain name and Respondent only adds the above-mentioned generic terms and the ".com" gTLD to the mark, the Panel finds that the disputed domain name is confusingly similar to the mark under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii). Should it succeed in this effort, the burden then shifts to Respondent to show that 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 names and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests").

 

Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain name as Respondent is not commonly known by the domain name nor has Complainant authorized or licensed to Respondent any rights in the ITW mark. It is widely accepted that WHOIS information can be used to help determine whether a respondent is commonly known by a disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Timothy Mays aka Linda Haley aka Edith Barberdi, FA 1617061 (Forum June 9, 2015) (concluding that the respondent was not commonly known by the <amazondevice.org>, <amazondevices.org> and <buyamazondevices.com> domain names under Policy ¶ 4(c)(ii), as the pertinent WHOIS information identified "Timothy Mays", "Linda Haley", and "Edith Barberdi" as the respective registrants). Additionally, lack of authorization to use a complainant's mark can support a conclusion that the respondent is not commonly known by the disputed domain name. See Bittrex, Inc. v. Operi Manaha, FA 1815225 (Forum Dec. 10, 2018) (concluding that the respondent was not commonly known by the disputed domain name where the WHOIS information bore no resemblance to the domain name and nothing else in the record suggested that Respondent was authorized to use the Complainant's mark). Here, the WHOIS information for the disputed domain name, as verified to the Forum by the concerned Registrar, identifies the Registrant as "Michelle Tricia". Additionally, Complainant contends that it never gave any permission or authorization to the Respondent regarding use of the ITW mark and, as Respondent has filed no Response or made any other submission in this case, there is no evidence to suggest otherwise. Thus, the Panel finds no ground upon which to conclude that Respondent is commonly known by the disputed domain name per Policy ¶ 4(c)(ii).

 

Next, while the Complaint makes no mention of Policy ¶ 4(c)(i) or (c)(iii), some of its assertions and submitted evidence do bear on these sections of the Policy. The Panel notes that the disputed domain name does not resolve to any website content and Complainant argues that Respondent has used the disputed domain name to send emails that impersonate an ITW employee in an attempt to defraud the Complainant's customers.

 

A Respondent failing to make use of a confusingly similar domain name in relation to a website typically indicates the lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Kohler Co. v xi long chen, FA 1737910 (Forum Aug. 4, 2017) ("Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain.  Respondent's <kohler-corporation.com> resolves to an inactive webpage displaying the message 'website coming soon!'"). See also Activision Blizzard, Inc. / Activision Publishing, Inc. / Blizzard Entertainment, Inc. v. Cimpress Schweiz GmbH, FA 1737429 (Forum Aug. 3, 2017) ("Complainant insists that Respondent has made no demonstrable preparations to use the disputed domain name. When Respondent is not using the disputed domain name in connection with an active website, the Panel may find that Respondent is not using the disputed domain name for a bona fide offering of goods or services… As Respondent has not provided a response to this action, Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.") Here, the disputed domain does not resolve to any web content.

 

Further, using a confusingly similar domain name to impersonate an employee of a complainant in an attempt to defraud its customers, vendors, or other business partners is not a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Goodwin Procter LLP v. GAYLE FANDETTI, FA 1738231 (Forum Aug. 8, 2017) (Where "Respondent has used the name to pass themselves off as an employee of the Complainant in an attempt to commit fraud by redirecting a legitimate wire of funds", the Panel concluded that "it cannot have been registered for a legitimate purpose.") Here, Complainant submits copies of a number of phishing emails that the Respondent sent using an address which incorporates the disputed domain name. These were sent to various customers of the Complainant and Respondent poses as an "Accounts Receivable Specialist", mentioning that certain invoices are outstanding, and seeking to have the customer make prompt payment into a bank account, the information for which is provided in the emails. The emails use a signature block that displays Complainant's ITW logo mark as well as the name and postal address of what is claimed to be one of Complainant's employees. Complainant makes the reasonable assertion that this email was used by Respondent in an attempt to defraud Complainant's customer and Respondent has not denied this. It further claims that "Respondent has already succeeded in defrauding multiple ITW customers, resulting in customers losing money and ITW not receiving payments" though no supporting evidence of this is presented.

 

As Complainant has made out a prima facie case that has not been rebutted by Respondent, upon a preponderance of the available evidence the Panel finds that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name per Policy ¶¶ 4(c)(i) or (iii).

 

Registration and Use in Bad Faith

 

Although not addressed in the Complaint, a foundational question under ¶ 4(a)(iii) is whether or not Respondent had knowledge of Complainant's rights in its ITW mark at the time it registered the <itwprobrand.com> domain name. Some attribution of knowledge of a complainant's trademark, whether actual, constructive, or based upon a conclusion that a respondent should have known of the mark, is inherently prerequisite to a finding of bad faith under the Policy. See Domain Name Arbitration, 4.02-C (Gerald M. Levine, Legal Corner Press, 2nd ed. 2019) ("Knowledge and Targeting Are Prerequisites to Finding Bad Faith Registration"); USA Video Interactive Corporation v. B.G. Enterprises, D2000-1052 (WIPO Dec. 13, 2000) (claim denied where "Respondent registered and used the domain name without knowledge of Complainant for a bona fide commercial purpose.") Complainant claims that its ITW trademarks "have become well-known" based on "ITW's long standing use and extensive promotion and use of the ITW and ITW.COM marks" because it has "promoted them at considerable expense worldwide". Complainant's evidence on this point consists only of screenshots of its www.itw.com  and www.itwprobrands.com websites and its above-mentioned trademark registrations and the Panel finds that this evidence, alone, does not support Complainant's reputational claims. ³ More convincing, however, is the use to which Respondent has placed the <itwprobrand.com> domain name to impersonate Complainant and operate a phishing scheme. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) ("the Panel here finds actual knowledge through the name used for the domain and the use made of it.") Based on the use of Complainant's mark and logo in phishing emails and its impersonation of one of Complainant's employees, the Panel finds that Respondent had prior knowledge of the ITW mark at the time that it registered the disputed domain name and that this was done in bad faith.

 

Next, Complainant asserts that Respondent registered and is using the disputed domain name in bad faith through its use of an email phishing scheme. Using a confusingly similar domain name to impersonate an employee of a complainant as part of a phishing scheme strongly signals the existence of bad faith per Policy ¶¶ 4(b)(iii) and/or (iv). See Chevron Intellectual Property, LLC v. Jack Brooks, FA 1635967 (Forum Oct. 6, 2015) (finding that Respondent's use of <chevron-corps.com> to impersonate an executive of Complainant in emails is in opposition to Complainant and is therefore in bad faith under Policy ¶ 4(b)(iii)). See also EOG Resources, Inc. v. Host Master / 1337 Services LLC, FA 2065425 (Forum Nov. 8, 2023) ("Respondent is using the Disputed Domain Name for the purposes of sending fraudulent emails purporting to impersonate Complainant and one of its named senior employees, for the purposes of phishing allows this Panel to find that the Disputed Domain Name is being used in bad faith.") Here, Complainant claims that Respondent used the disputed domain name to pose as one of the Complainant's Accounts Receivable Specialists in an attempt to trick the Complainant's customers into making deposits into an unknown bank account. The phishing emails submitted into evidence shows Respondent using an email address formed on the <itwprobrand.com> domain name and a signature block which displays the ITW logo and which provides the name and contact information for one of Complainant's employees. This supports Complainant's claim that Respondent is engaged in a phishing scheme and this conclusion is reinforced by Respondent seeking to mimic Complainant's own <itwprobrands.com> domain name. As Respondent has not participated in this case it has offered no alternative explanation for its actions. Therefore, the panel finds that Respondent registered and uses the <itwprobrand.com> domain name to disrupt and compete with Complainant's business and to seek commercial gain based upon a likelihood of confusion with the ITW mark in bad faith per Policy ¶¶ 4(b)(iii) and (iv).

 

Finally, Complainant argues that Respondent has provided false WHOIS information when it registered the disputed domain name and that this further demonstrates bad faith. Prior decisions have noted that using false contact information may demonstrate a bad faith attempt to hide one's identity and hinder a trademark owner from attempting to assert its rights. See FIL Limited v. Domain Admin, WhoIs IDCPrivacy Service / Leonard Kitimbo, D2019-1374 (WIPO Aug. 15, 2019) ("Respondent's submission of inaccurate, incomplete, or falsified contact information to the Registrar, without a street name, postcode, or valid telephone number, further supports a finding of Respondent's bad faith.") Complainant alleges that Respondent has provided a false postal address and phone number and it provides copies of a Google map and telephone country-code informational website in support. Against the backdrop of the use to which the disputed domain name has been put, the Panel finds that Respondent's use false WHOIS information further demonstrates its bad faith in this case under Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <itwprobrand.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Steven M. Levy, Esq., Panelist

Dated: November 16, 2023