Calpis Co., Ltd. v. Rita A. Gram
Claim Number: FA1506001621924
Complainant is Calpis Co., Ltd. (“Complainant”), represented by Courtni E. Moorman of Baker & Hostetler LLP, Ohio, USA. Respondent is Rita A. Gram (“Respondent”), Alabama, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <caltis.net>, registered with Todaynic.com, 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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 1, 2015; the Forum received payment on June 1, 2015.
On June 4, 2015, Todaynic.com, Inc. confirmed by e-mail to the Forum that the <caltis.net> domain name is registered with Todaynic.com, Inc. and that Respondent is the current registrant of the name. Todaynic.com, Inc. has verified that Respondent is bound by the Todaynic.com, Inc. 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 June 5, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 25, 2015 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@caltis.net. Also on June 5, 2015, 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, the Forum transmitted to the parties a Notification of Respondent Default.
On July 2, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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 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, the 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 owns the CALPIS mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,258,649, registered July 6, 1999). Complainant is a well-known Japanese beverage company which has been using ‘CALPIS’ as its company since 1948. The <caltis.net> domain name is confusingly similar to the CALPIS mark. The domain name misspells Complainant’s mark by changing the “p” to a “t” and inserts the generic top-level domain (“gTLD”) “.net” to the domain name.
(ii) Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, as the WHOIS information for <caltis.net> does not reflect that Respondent is commonly known by the domain name in dispute. Further, Complainant has not authorized, licensed, or endorsed Respondent’s use of the CALPIS mark. Respondent’s lack of rights or legitimate interests in the <caltis.net> domain name is made evident by Respondent’s failure to use the disputed domain name in connection with a bona fide offering of goods or services, or for a legitimate or noncommercial or fair use. Respondent’s disputed domain name resolves to a website that copies the content from Complainant’s website to create a nearly identical site. See Compl., at Attached Ex. 3. Respondent uses the disputed domain name to send fraudulent emails, which are connected to an identity theft scheme. See Compl., at Attached Ex. 5. Further, Respondent’s typosquatting tactics are additional evidence that Respondent lacks rights and legitimate interests in the disputed domain name.
(iii) Respondent has engaged in bad faith registration and use of the <caltis.net> domain name. Respondent had constructive and actual knowledge of Complainant’s mark before registering the domain name, which is evidence of bad faith pursuant to Policy ¶ 4(a)(iii). Further, Respondent uses the disputed domain name to engage in a fraudulent identity theft scheme. Finally, Respondent’s typosquatting is evidence of bad faith under Policy ¶ 4(a)(iii).
B. Respondent
Respondent did not submit a response. The Panel notes that this <caltis.net> domain name was registered on December 1, 2014.
Complainant established that it had rights in the mark contained in the disputed domain name. The disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant contends that it owns the CALPIS mark through registration with the USPTO (e.g., Reg. No. 2,258,649, registered July 6, 1999). Complainant states that Complainant is a well-known Japanese beverage company which has been using ‘CALPIS’ as its company since 1948. This Panel concludes that Complainant’s valid registration of the CALPIS mark with the USPTO sufficiently demonstrates Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Complainant argues that the <caltis.net> domain name is confusingly similar to the CALPIS mark. The domain name misspells Complainant’s mark by changing the “p” to a “t,” and inserts the gTLD “.net” to the domain name. Previous panels have found that misspelling a Complainant’s registered mark does not reduce confusing similarity. See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”). Further, previous panels have found that the addition of a gTLD is insignificant when determining confusing similarity. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel agrees that the disputed domain name is confusingly similar to the CALPIS 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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. Complainant urges that Respondent is not commonly known by the disputed domain name, as the WHOIS information for <caltis.net> does not reflect that Respondent is commonly known by the domain name in dispute. The Panel sees that the WHOIS information for the disputed domain name refers to “Rita A. Gram” as the registrant of record. Further, Complainant asserts that it has not authorized, licensed, or endorsed Respondent’s use of the CALPIS mark. See Compl., at Attached Ex. 2. As Respondent has failed to submit a response refuting these claims, the Panel agrees that these contentions are sufficient to establish Respondent’s lack of rights in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant argues that Respondent’s lack of rights or legitimate interests in the <caltis.net> domain name is made evident by Respondent’s failure to use the disputed domain name in connection with a bona fide offering of goods or services, or for a legitimate or noncommercial or fair use. Complainant asserts that Respondent’s disputed domain name resolves to a website that copies the content from Complainant’s website to create a nearly identical site. See Compl., at Attached Ex. 3. Previous panels have found that respondents who attempt to pass themselves off as a complainant lack a bona fide offering of goods or services or a legitimate or noncommercial or fair use. See Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website). The Panel finds that Respondent’s use of the disputed domain name is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
Complainant further asserts that Respondent uses the disputed domain name to send fraudulent emails, which are connected to an identity theft scheme. See Compl., at Attached Ex. 5. Prior panels have found that engaging in fraudulent activity for the purpose of executing identity theft, commonly known as phishing, is evidence that a respondent lacks rights and legitimate interests in a disputed domain name. See Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (finding that using a domain name in a fraudulent scheme to deceive Internet users into providing their credit card and personal information is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use). The Panel finds that Respondent’s use of fraudulent emails though the disputed domain name is additional evidence that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii).
Further, Respondent’s typosquatting tactics are additional evidence that Respondent lacks rights and legitimate interests in the disputed domain name. Previous panels have agreed that typosquatting can be sufficient evidence that a respondent lacks rights and legitimate interests in a disputed domain name. See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, the respondent had “engaged in typosquatting, which provides additional evidence that [the] respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”). The Panel finds that Respondent’s typosquatting activity is additional evidence that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii).
While Complainant does not make any contentions that fall within the articulated provisions of Policy ¶ 4(b), the Panel notes that these provisions are meant to be merely illustrative of bad faith, and that Respondent’s bad faith may be demonstrated by ancillary allegations considered under the totality of the circumstances. See CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (“[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith”).
Complainant alleges that Respondent had constructive and actual knowledge of Complainant’s mark before registering the domain name, which is evidence of bad faith pursuant to Policy ¶ 4(a)(iii). Complainant argues that its registered trademark places Respondent on constructive notice of its rights in the CALPIS mark. Further, Complainant asserts that Respondent had actual notice of Complainant’s mark, based upon the website content at the disputed domain name. According to Complainant, the domain name resolves to a website that includes information about Complainant indicating that Respondent was aware of Complainant and its CALPIS mark. See Compl., at Attached Ex. 3. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel infers due to the fame of Complainant’s mark that Respondent had actual knowledge of Complainant's mark and rights and therefore determine that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name")."
Further, Complainant claims that Respondent uses the disputed domain name to engage in a fraudulent identity theft scheme. Complainant argues that Respondent attempts to obtain personal information by making fake job offers. See Compl., at Attached Ex. 5. Prior panels have agreed that phishing for Internet users personal information is evidence of bad faith. See Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (determining that the respondent demonstrated bad faith registration and use because it was attempting to acquire the personal and financial information of Internet users through a confusingly similar domain name). The Panel finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(a)(iii).
Finally, Respondent’s typosquatting is evidence of bad faith under Policy ¶ 4(a)(iii). Users here would merely need to mistype the CALPIS mark by typing “t” rather than “p” and mistakenly adding the gTLD “.net” to be mistakenly directed to Respondent’s <caltis.net> website rather than Complainant’s. Past panels have found that respondents who take advantage of common typing errors engage in bad faith registration under Policy ¶ 4(a)(iii). See Vanguard Group, Inc. v. IQ Mgmt. Corp., FA 328127 (Nat. Arb. Forum Oct. 28, 2004) (“By engaging in typosquatting, [r]espondent has registered and used the <vangard.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).”). The Panel accordingly finds that Respondent’s typosquatting conduct is additional evidence of bad faith pursuant to 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 <caltis.net> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: July 13, 2015
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