DECISION

 

PRIOS, LLC v. Scott Musser

Claim Number: FA2402002084219

PARTIES

Complainant is PRIOS, LLC ("Complainant"), represented by John H. Gray of Perkins Coie LLP, Arizona, USA. Respondent is Scott Musser ("Respondent"), Florida, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <principleus.com>, registered with GoDaddy.com, LLC.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on February 16, 2024; Forum received payment on February 16, 2024.

 

On February 19, 2024, GoDaddy.com, LLC confirmed by e-mail to Forum that the <principleus.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 February 21, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 12, 2024 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@principleus.com. Also on February 21, 2024, 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 March 13, 2024, 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

i) Complainant is the creator of the PrinciplesUs platform, which enables teams to work well and develop rapidly to achieve their shared goals. Complainant has used the PRINCIPLESUS mark since January 2021, and at present Complainant generates multiple millions of dollars per year in sales generated through and associated with the PRINCIPLESUS mark. Complainant owns strong common law rights in the trademark PRINCIPLESUS. The disputed domain name is confusingly similar to Complainant's mark as it contains the PRINCIPLESUS mark in its entirety, merely subtracting the letter "s" in the middle of the word "PRINCIPLESUS." 

 

ii) Respondent lacks rights and legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its PRINCIPLESUS mark in the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use. Respondent is attempting to impersonate Complainant to scam third-party individuals.

         

iii) Respondent registered and uses the disputed domain name in bad faith. Respondent's actions show a willful intent to violate Complainant's well-known intellectual property rights. Respondent is attempting to engage in a fraudulent scam whereby it impersonates Complainant in an effort to scam customers by setting up fake job interviews. Respondent was aware of Complainant's rights and sought to prey upon consumers' trust in Complainant in order to fraudulently collect financial information. Respondent engaged in obvious typosquatting by registering the disputed domain name.

 

B. Respondent

Respondent did not submit a Response in this proceeding.

 

FINDINGS

1. The disputed domain name was registered on January 9, 2024.

 

2. Complainant has established common law rights in the PRINCIPLESUS mark dating back to 2021. 

 

3. Respondent has used the disputed domain name in connection with an email address to impersonate an employee of Complainant. 

 

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 asserts common law rights in the PRINCIPLESUS mark. Complainant contends that the PRINCIPLESUS mark was created and has been in use by Complainant since January 2021. Since that time, the PRINCIPLESUS mark has been used in connection with individual personality assessments for team members, which allow those individuals to discover their tendencies, talents, and opportunities for growth. Complainant's services also include 1:1 comparisons of team members based on the results of these personality assessments, which provide invaluable insights into their relationships and how to engage most effectively with their team members, as well as team visualizations which allow leaders to view and reflect on the composition of their entire team to understand the similarities and differences between team members. As a result, Complainant has established common law rights in the PRINCIPLESUS mark.

 

The Panel notes that to establish unregistered or common law trademark rights for purposes of the Policy, Complainant must show that its mark has become a distinctive identifier which consumers associate with Complainant's goods and/or services. The Panel finds that Complainant has established common law rights in the PRINCIPLESUS dating back to 2021 under Policy ¶ 4(a)(i) on the grounds that Complainant generates multiple millions of dollars per year in sales generated through and associated with the PRINCIPLESUS mark. Complainant also operates a website located at <principlesus.com> where Complainant describes its business, products, and services. Complainant has registered this domain since September 2020. Approximately 75,000 individual users have visited Complainant's website since April 2023. Complainant also maintains active social media pages that use the PRINCIPLESUS mark, including Facebook (17,000 followers), X (3,967 followers), and YouTube (2,400,000 subscribers). The Panel further considered in recognizing Complainant's right in the PRINCIPLESUS mark that Complainant's mark is rather unique and distinctive, and thus it does not require higher degree of consumer recognition unlike a generic or descriptive mark. See Universal Remanufacturing Co. LLC d/b/a Phoenix Chassis v. Super Privacy Service LTD c/o Dynadot and Domain Sales (expired domain caught by auction winner c/o Dynadot), D2022-3700 (WIPO December 23, 2022) (finding that although the evidence presented is thin, the Panel finds it sufficient to recognize Complainant's common law trademark rights in PHOENIX CHASSIS in these circumstances, especially given the relatively low "standing" threshold for trademark rights under the first element of the UDRP.).

 

Complainant contends the disputed domain name <principleus.com> is confusingly similar to Complainant's mark as it contains the PRINCIPLESUS mark in its entirety, merely subtracting the letter "s" in the middle of the word "PRINCIPLESUS". The omission or the addition of the letter "s" and a gTLD does not sufficiently differentiate a disputed domain name from a mark under Policy ¶ 4(a)(i). See Barnesandnoble.com LLC v. Your One Stop Web Shop, FA 670171 (Forum May 3, 2006) (finding that the additions of the letter "s" and generic top-level domains to the disputed <barnesandnobles.info> and <barnesandnobles.biz> domain names failed to avoid the confusing similarity between the domain names and the complainant's BARNESANDNOBLE.COM mark pursuant to Policy ¶ 4(a)(i)); see also PathAdvantage Associated v. VistaPrint Technologies Ltd, FA 1625731 (Forum July 23, 2015) (holding that the <pathadvantages.com> domain name was confusingly similar to the PATHADVANTAGE trademark because the domain name "merely adds the letter 's' to Complainant's mark"). Therefore, the Panel thus finds that the disputed domain name is confusingly similar to the PRINCIPLESUS 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 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 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 asserts Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its PRINCIPLESUS mark in the disputed domain name. Under Policy ¶ 4(c)(ii), where a response is lacking, relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name. See M. Shanken Commc'ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record). Additionally, lack of authorization to use a complainant's mark may indicate that the respondent is not commonly known by the disputed domain name. See PragmaticPlay Limited v. Robert Chris, FA2102001932464 (Forum Mar. 23, 2021) ("The WHOIS information of record lists the registrant as "Robert Chris," and no other information of record suggests Respondent is commonly known by the domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy  ¶ 4(c)(ii)."). The unmasked WHOIS information identifies Respondent as "Scott Musser." Thus, the Panel finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).

         

Complainant further contends Respondent is not using the disputed domain name for any bona fide offering of goods or services, nor any noncommercial or fair use. Respondent has used the disputed domain name to engage in a fraudulent scam whereby it impersonates an employee of Complainant in an effort to scam customers by setting up fake job interviews. Respondent has sent emails emanating from the disputed domain name's server, to attempt to set up fake job interviews with unsuspecting individuals. Complainant provides copies of email correspondence.

 

The Panel finds that using the disputed domain name to pass off as a complainant's employee for the purpose of furthering a phishing campaign does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See FirstEnergy Corp. v. kelly Rowland Claim Number, FA2062582 (Forum October 18, 2023) ("Complainant provides copies of emails showing that Respondent has used the disputed domain name in connection with an email address to impersonate an employee of Complainant soliciting Complainant's potential customers for money. Using a disputed domain name to pass off as a complainant's employee for the purpose of furthering a phishing campaign may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).").

 

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.

 

Registration and Use in Bad Faith

Complainant contends that Respondent is attempting to impersonate an employee of Complainant in connection with a phishing scheme in order to illegally profit on Complainant's goodwill and brand awareness. The Panel recalls that Complainant provides copies of email correspondence showing that Respondent has sent emails emanating from the disputed domain name's server, to attempt to set up fake job interviews with unsuspecting individuals. Registration of a confusingly similar domain name with the intent to disrupt business by furthering an email phishing campaign can evince bad faith registration and use per Policy ¶ 4(b)(iv). See FirstEnergy Corp. v. kelly Rowland Claim Number, FA2062582 (Forum October 18, 2023) ("Registration of a confusingly similar domain name with the intent to disrupt business by furthering an email phishing campaign can evince bad faith registration and use per Policy ¶ 4(b)(iv).  Respondent has used the disputed domain name in connection with an email address to impersonate a member of Complainant's staff for purposes of soliciting Complainant's potential customers for money. Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iv)."). Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iv).

 

Next, Complainant argues that Respondent can be inferred to have known about Complainant's rights in the PRINCIPLESUS mark at the time the disputed domain name was registered. While constructive notice is not sufficient to support a bad faith finding, actual knowledge may constitute a bad faith registration. Complainant contends Respondent had knowledge of Complainant's rights in the mark given Respondent's selection of the disputed domain name, which so closely resembles Complainant's genuine domain name, as well as Respondent's blatant impersonation of Complainant's employee. 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 PRINCIPLESUS mark at the time of registering the disputed domain name, and finds that Respondent registered the disputed domain in bad faith 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 <principleus.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Ho-Hyun Nahm, Esq., Panelist

Dated: March 17, 2024