Impersonating Retired Executive to Perpetrate Fraud
There is often a disconnect between how UDRP decisions are reasoned and how they are written. This is particularly evident with the finding of bad faith. In making a finding about bad faith, a panelist weighs all the evidence as a whole within the context of the circumstances of the case to assess whether it meets the balance of probabilities standard. Read commentary
We hope you will enjoy this edition of the Digest (vol. 4.10), as we review these noteworthy recent decisions, with expert commentary. (We invite guest commenters to contact us):
‣ Impersonating Retired Executive to Perpetrate Fraud (dwicompanies .com *with commentary)
‣ Registrant’s Right to Invest in a Domain Name Based Upon Common Dictionary Word (circulate .eu *with commentary)
‣ Stevie Ray Vaughan Fan Site Survives Complaint (stevierayvaughan .com)
‣ Nominal Change of Registrant Does Not Break Chain of Possession (rifai .com)
‣ Domain Name Used in a Phishing Scam Can Never Confer Legitimate Interests (authentlc .cam)
Follow this personal ICA series on domain investing by brandable domain investor and acquisition broker Sten Lillieström, and take the opportunity to gaze into the microcosm of domain investing.
Domain work part 2 – Sales
Domain work part 2 – Sales– Mr. Sten Lillieström
When the domain name has finally landed safely in your registrar account – against all odds – are you now an investor? Not in a million years. You also need to sell the damn thing. Without sales you were only ever a collector at best. continue reading
Impersonating Retired Executive to Perpetrate Fraud
BWI Companies, Inc. v. [NAME REDACTED], NAF Claim Number: FA2401002079663
<dwicompanies .com>
Panelist: Ms. Lynda M. Braun
Brief Facts: The Complainant, founded in 1958, is a United States lawn and garden, animal health, professional grower, turf, landscape, agriculture, and pest management supply distributor. The Complainant claims rights in the BWI trademark based upon its registration of the mark with the USPTO, earliest registration dates back to November 4, 2008, with a date of first use in commerce of January 1, 1978. The Complainant also owns the domain name <bwicompanies .com>, which resolves to the Complainant’s official website. The disputed Domain Name was registered on December 19, 2023.
The Complainant alleges that the Respondent is not making a bona fide offering of goods or services through the use of the disputed Domain Name, nor a legitimate non-commercial or fair use under Policy paragraphs 4(c)(ii) and (iv), respectively. Rather, the Respondent initially used the disputed Domain Name to redirect to a “Coming Soon” countdown webpage bearing the Complainant’s BWI Mark. The disputed Domain Name was also used to commit several cybercrimes against the Complainant, such as setting up bank accounts and credit cards. The Complainant filed police reports regarding these cybercrimes and portions of the reports are submitted as an annex to the Complaint.
The Complainant further alleges that the Respondent registered and is using the disputed Domain Name in bad faith as the Respondent used the disputed Domain Name for commercial gain by creating a likelihood of confusion between the Complainant and the Respondent. Further, the Respondent provided false contact information in connection with the registration of the disputed Domain Name, in this case constituting identity theft, since the Respondent used the name of a retired executive of the Complainant to register the disputed Domain Name. The Respondent failed to submit a Response in this proceeding but did write to Forum, stating that the Respondent would sell the disputed Domain Name for USD 150k.
Held: The Respondent uses the disputed Domain Name to impersonate the Complainant aimed at defrauding the Complainant and its customers. The fraudulent use of the BWI Mark on Respondent’s website is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the BWI Mark or disputed Domain Name. This Panel further finds that, based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith registration and use pursuant to paragraph 4(b)(iv) of the Policy as described below.
- The use of a disputed Domain Name to intentionally attempt to attract Internet users to a respondent’s website or online location by creating a likelihood of confusion or a false association with a complainant’s mark demonstrates registration and use in bad faith.
- The BWI Mark, which was used and registered by the Complainant in advance of the Respondent’s registration of the disputed Domain Name, renders it wholly implausible that the Respondent created the disputed Domain Name independently, without the knowledge of the Complainant’s rights in BWI mark. Moreover, where a disputed Domain Name is so obviously connected with a well-known name, product or service, its use by someone with no connection to the name, product or service indicates bad faith.
- The Respondent registered and is using the disputed Domain Name in bad faith as the Respondent engaged in typosquatting.
- A general offer for the sale of a domain name incorporating the trademark of a third party can evince bad faith under Policy paragraph 4(b)(i). The Respondent requested USD 150k for the sale of the disputed Domain Name, undoubtedly in excess of the Respondent’s out-of-pocket registration costs.
- Finally, the Complainant contends that the Respondent has provided false contact information in connection with the registration of the disputed Domain Name, which in this case amounts to identity theft. The Panel finds that the Respondent used the name of a retired executive of the Complainant as the registrant of the disputed Domain Name. Such use of this false information constitutes identity theft, emblematic of bad faith.
Transfer
Complainants’ Counsel: Michael G. Nunnally of King & Spalding LLP, Texas, USA
Respondents’ Counsel: Self-represented
Case Comment by ICA Director and Domain Name Investor, Nat Cohen:
Nat Cohen is an accomplished domain name investor, UDRP expert, proprietor of UDRP.tools and RDNH.com, and a long-time Director of the ICA.
There is often a disconnect between how UDRP decisions are reasoned and how they are written. This is particularly evident with the finding of bad faith. In making a finding about bad faith, a panelist weighs all the evidence as a whole within the context of the circumstances of the case to assess whether it meets the balance of probabilities standard. It is rare that one piece of evidence, standing alone, stripped of context, is conclusive evidence of bad faith. Yet that is how UDRP decisions are often written.
One piece of evidence will be mentioned. The panelist will then state that this is evidence of bad faith. Another piece of evidence will be mentioned. The panelist will state that this too is evidence of bad faith. The approach taken by these panelists is to list as many pieces of evidence as possible, stating that each one is evidence of bad faith. The longer the list – the panelist apparently believes – the more conclusively the panelist has supported his or her finding as to bad faith.
Yet there is a problem with this common approach to drafting decisions. It likely misrepresents the panelist’s thought process and, if so, it misleads the reader. The panelist’s task is to review and assess the facts holistically. By breaking down the evidence into individual pieces and then drawing inferences of bad faith from the fragmentary evidence devoid of the larger context, the panelist is drawing an overly broad inference as to the bad faith of the respondent from insufficient evidence – and doing so repeatedly. This produces another problem – a poor quality jurisprudence based on poorly articulated rationale. Despite the abbreviated nature of the UDRP process and the reluctance to spend a significant amount of time drafting decisions for very little compensation, if panelists generally adopt a more forthright approach articulating why they assess that the cumulative evidence as a whole meets the balance of probabilities standard, this will have a beneficial effect for UDRP jurisprudence. continue reading
Registrant’s Right to Invest in a Domain Name Based Upon Common Dictionary Word
<circulate .eu>
Panelist: Mr. Richard Hill
Brief Facts: The Complainant, through its digital sourcing platform, provides packaging buyers with the tools, insights and data to easily find, buy, and compare sustainable packaging and make better choices. Providing them with reports and dashboards to understand their packaging consumption, and environmental impact and incentivise progress. Currently supporting over 200 companies across 22+ EU countries to transition to more circular packaging. The Complainant holds domain names such as <circulate .fr>, <circulate .es>, <circulate-packaging .com>. The Complainant asserts rights in the company name ‘CIRCULATE’, since it was registered in Sweden as Circulate AB on 2 July 2021. The disputed Domain Name was registered in 2016 by the Respondent, who is in the business of selling generic domain names, The Respondent cites various CAC decisions in support, including case no. CAC-ADREU-007159 in support.
The Complainant alleges that the disputed Domain Name is redirected to the <sedo .com> platform, where it is offered for sale. In response to a query, the Complainant received an offer to buy the disputed Domain Name for 200,000 USD. The Respondent contends that the disputed Domain Name was registered in 2016, while the Complainant was incorporated in 2021. So obviously the name was not registered with the intent to mislead the Complainant’s customers to harm the Complainant’s reputation. The word ‘circulate’ is very common and generic in both English, Spanish and Italian, has a low distinctiveness, and is hence a descriptive name rather than a brand name. The Respondent further contends that the Complainant falsely alleges that a price of 200,000 USD was asked for the disputed Domain Name, however, the documentary evidence supplied by the Complainant itself shows that the asking price was 25,000 USD.
Held: It is not disputed that the Respondent is in the business of selling generic domain names, that it registered the disputed Domain Name several years before the Complainant was incorporated, and that it offered the disputed Domain Name for sale for a relatively high price (25’000 USD, and not 200’000 USD as Complainant mistakenly alleges). The instant Panel has carefully reviewed the case law relevant to the instant case, whether cited by the Respondent, or in the CAC .EU Overview 2.0. The cited CAC .EU Overview 2.0 states under V.6: “There is nothing per se wrong in selling domain names.” And: “Could the behavior of the respondent be seen as domain trading, this constitutes bad faith.”
The Panel has reviewed all the cases cited in the said Overview to support the second statement above. In particular, CAC-ADREU-007159 states: “In this case the Respondent is in the business of registering, buying and selling domain names. Such business is perfectly legal so far as it does not attempt to benefit from the goodwill or positive image of a third party’s trademark or sign. The disputed Domain Name is a generic Latvian word for ‘lawyer’. … The Panel finds that the Respondent does have a legitimate right in the disputed Domain Name since he is merely offering for sale a generic name.” The Panel agrees with the case law and finds, based on the facts of this particular case, that the Complainant has failed to satisfy its burden of proving that the Respondent, by registering a common word in the course of its business of selling domain names, does not have rights or legitimate interests in the disputed Domain Name.
Further, since the Respondent registered the disputed Domain Name well before the Complainant was incorporated, there are no circumstances indicating that the Domain Name was registered or acquired primarily for the purpose of selling, renting or otherwise transferring it to the Complainant. Thus the Panel finds that the Complainant has failed to satisfy its burden of proving that the Respondent registered or used the disputed Domain Name in bad faith.
Complaint Denied
Complainants’ Counsel: NA
Respondents’ Counsel: NA
Case Comment by ICA Director, Nat Cohen, and Newsletter Editor, Ankur Raheja:
The Panelist followed the UDRP case of CAC-ADREU-007159, wherein it was held that the business of registering, buying and selling domain names is perfectly legal so far as it does not attempt to benefit from the goodwill or positive image of a third party’s trademark or sign.
The .EU dispute policy differs from the UDRP in that it adopts an “OR” rather than an “AND” as to bad faith registration OR bad faith use. The Complainant is required under Paragraph B(11)(d)(1) of the ADR Rules to demonstrate the following, inter alia:
(iii) that the disputed domain name has been registered or is being used in bad faith.
The Panelist reviewed the previous jurisprudence in which different panelists adopted conflicting views of the legitimacy of reselling domain names that were similar to a complainant’s trademark rights. The Panelist found:
“The Panel agrees with the more recent case law and finds, on the basis of the facts of this particular case, that Complainant has failed to satisfy its burden of proving that Respondent, by registering a common word in the course of its business of selling domain names, does not have rights or legitimate interests in the disputed domain name.”
In particular the Panelist declined to following the reasoning in the Sport1.eu transfer decision (CAC-ADREU-003108 ) from 2006. (Google translation from the German, see here). The facts in that case can be distinguished from the present one as the registered trademark predated the domain name registration, the disputed domain name was not a dictionary term, and the respondent failed to mount a defense.
The <Circulate .eu> complaint demonstrates the mischief that use of “OR” instead of “AND” can cause. The Complainant was only incorporated in 2021 and yet the language of the .EU Policy gave her encouragement to launch a Complaint to seize a dictionary word domain name registered years before. The flirtation some UDRP panelists had a few years back with the theory of Retroactive Bad Faith similarly encouraged a wave of frivolous UDRP complaints.
Since there is no binding guidance under either the .EU dispute policy or the UDRP, the determination as to bad faith is left to the subjective views of each individual panelist. For example, the reasoning used to justify the transfer of the <Mohu .com> domain name under the UDRP (see UDRP Digest comment), could have been applied to the <Circulate .eu> dispute to justify a transfer here:
Registration and Use in Bad Faith
Complainant argues that Respondent registered and uses the <mohu .com> domain name in bad faith because Respondent previously offered the disputed domain name for sale. An offer to sell a disputed domain name in excess of registration costs indicates bad faith under Policy ¶ 4(b)(i), if the respondent intended to make such an offer when registering the disputed domain name. See Retail Royalty Company and AE Direct Co LLC v. Whois Foundation / DOMAIN MAY BE FOR SALE, CHECK AFTERNIC .COM Domain Admin, FA 1821246 (Forum Jan. 13, 2019) (“Respondent lists the disputed domain name for sale for $5,759, which is a price well in excess of out of pocket costs. Such an offering can evince bad faith under Policy ¶ 4(b)(i).”). Complainant provides a screenshot showing the disputed domain name was previously offered for sale and copies of emails indicating a prior owner of domain offered to sell the domain name to Complainant for $25,000. See Compl. Exs. 5 & 7.
Complainant also argues that Respondent’s bad faith is evidenced by the inactive holding of the disputed domain name. Failure to make active use of a disputed domain name is evidence of bad faith under Policy ¶ 4(a)(iii). See CommScope, Inc. of North Carolina v. Zhuang Yan / WANGYONG, FA 1764026 (Forum Feb. 14, 2018) (“Respondent’s domain names do not have resolving websites. Using a domain name to resolve to an inactive website (or no website at all) indicates bad faith registration and use.”). Complainant provides a screenshot showing the disputed domain name resolves to an error message. See Compl. Ex. 6.
The <Mohu .com> decision is one example of the willingness of some panelists to find bad faith registration and use based on what should be recognized as innocuous grounds. In <Mohu .com>, the reasoning as to bad faith, reproduced in full above, is merely that the Respondent registered the domain name with the intention to sell it at a profit and that at another point the domain name did not resolve to a website.
The highly subjective determinations that occur under both the .EU policy and the UDRP combined with the lack of consistency between various panelists highlight the harm that adopting an “OR” approach for the bad faith registration AND bad faith use element under the UDRP would inflict on the reliability and credibility of the Policy.
It is deeply unsettling to domain name investors that such panelists are empowered to delegitimize an entire industry and to use such flimsy reasoning to deprive them of their legitimately owned assets. The adoption of “OR” under the UDRP would deprive Registrants of the only reliable, objective defense as to bad faith available to them under the UDRP – that a late arriving Complainant cannot seize a domain name registered by the Respondent before the Complainant’s trademark rights arose.
The decision in <Circulate .eu> is an important contribution to harmonizing the jurisprudence under the .EU dispute policy with that of the UDRP, where it has long been recognized by most panelists that domain name investing is in itself a legitimate business and that by registering a trademark, especially one that is straight out of the dictionary, as with “Circulate”, the mark owner does not obtain a monopoly over all commercial uses of the term. A domain investor is free to offer the domain name to other companies that may also wish to adopt Circulate as their brand identity.
Through his well-reasoned decision, the Panelist in the <Circulate .eu> dispute has laid a solid foundation for future panelists to follow in implementing the .EU dispute policy and for avoiding the pitfalls and unfair results that can occur when “OR” is adopted in the language of the policy so that registration in bad faith need not be demonstrated for a transfer to occur.
Stevie Ray Vaughan Fan Site Survives Complaint
The Estate of Stevie Ray Vaughan v. Maxory LLC, NAF Claim Number: FA2402002081987
<stevierayvaughan .com>
Panelist: Mr. Gerald M. Levine
Brief Facts: The Complainant is the Estate of Stevie Ray Vaughn and the owner of the mark STEVIE RAY VAUGHN registered by the USPTO on February 1, 2005. Stevie Ray Vaughan was a musician, singer, songwriter, record producer, and guitarist, widely known as one of the most influential blues musicians and guitarists of all time. Over the years, Stevie Ray Vaughan’s albums have sold over 15 million copies in the United States alone. The Respondent acquired the disputed Domain Name on or about May 27, 2013. The Complainant alleges that “[a]fter being listed for sale by owner throughout 2013, according to the Internet Archive, since December 18, 2014, the domain name had been used for what owner labels as a ‘Stevie Ray Vaughan Fan & Tribute Site.’ This featured a single page of Stevie Ray Vaughan facts, links to some Stevie Ray Vaughan videos, and a page generally about the Los Angeles Blues Music Scene.” The Complainant further alleges that “[N]o where in its response does Respondent explain how it has attempted to reach fans of Stevie Ray Vaughan or provide valuable content on the website to establish a true fan site. [. . .]. Respondent clearly seeks only to optimize the website’s SEO to increase its value.”
The Respondent denies the Complainant’s allegations and contends that “the summer of 2013, Respondent, a long-time blues aficionado desired to build a fan site in tribute to Stevie Ray Vaughan (SRV), who was held in highest esteem.” It disputes “Complainant[‘s] attempt[ ] to illegitimatize Respondent’s independent fan site as a bona fide offering through a series of false assertions and selective evidence submissions while inconspicuously omitting key details. The Complainant tries to paint a picture of a website that ‘functions as a parking page’ and in doing so neglects the site’s 10-year continuous operating history, 2500+ words of content, videos, original photography, news, and related fan links.” The Respondent does not deny that some of the successive websites contain offers to purchase third-party merchandise, but states that the “website is purely informational, does not infringe on the TM or confuse visitors who are seeking to buy these types of artist merchandise.”
Held: This Panel visited <stevierayvaughan .com>, as it may, to assess the genuineness of the Respondent’s “independent fan site” and whether it is “genuinely noncommercial.” In addition to the landing page that offers a one-page biography of Stevie Ray Vaughan, there are interior pages and the format has remained constant since 2014. It appears to the Panel, that it provides “the opportunity for fans to learn about and discuss various topics related to their subject” and fulfils the expectations of such a website. While the website does display commercial offerings, it is modest as the Respondent submits that it has been incurring operating losses since its launch. The basis for the Complainant’s criticism of the Respondent’s fan website appears to be that it does not offer enough to justify it as a genuine fan website. It sees it as a subterfuge for commercializing the website. This is not supported by the evidence.
The Respondent points out that the website has been improved over the years. The issue is not the size of the content but that the content is presented genuinely to honor the subject. There is no reason to discredit Respondent’s assertion he was “a long-time blues aficionado who desired to build a fan site in tribute to Stevie Ray Vaughan (SRV), who was held in the highest esteem.” In criticizing Respondent’s content, there appears to be a contradiction in Complainant’s argument. The evidence, rather, supports the Respondent’s attempt to reach other “aficionados”. Accordingly, for the purposes of the UDRP, the Complainant has not satisfied its burden of proving that the Respondent lacks rights or legitimate interests in the disputed Domain Name.
Further, there is no supporting evidence that the Respondent has violated any of the circumstances set forth in paragraph 4(b)(i-iv). The Complainant’s view that the resolving website is not a true fan site, that it does not offer enough, and that it is only a placeholder, is merely contention, not proof. Whether this is so or not depends on one’s perspective, but for the purposes of the UDRP, there is not sufficient evidence to establish conjunctive bad faith. If as Complainant argues Respondent is in the process of grooming <stevierayvaughan .com> as a commercial enterprise, and that is the reason for the Respondent experimenting with new SEO models, that is a claim better pursued in a court of competent jurisdiction. It is not a clear-cut case of cybersquatting and is outside the scope of the Policy. Accordingly, the Complainant has not satisfied its burden in proving that the Respondent registered and is using the disputed Domain Name in bad faith.
Complaint Denied
Complainants’ Counsel: John C. Cain of Munck Wilson Mandala, LLP, Texas, USA
Respondents’ Counsel: Self-represented
Nominal Change of Registrant Does Not Break Chain of Possession
Al Rifai Roastery S.A.L v. Andrea Denise Dinoia, WIPO Case No. D2023-4821
<rifai .com>
Panelist: Mr. Matthew Kennedy
Brief Facts: The Complainant is a nut retailer founded by Hajj Moussa Al Rifai in 1948. The Complainant owns multiple trademark registrations in multiple jurisdictions, the earliest of which is a Lebanese trademark registration dated April 15, 2003. The Complainant registered the domain name <alrifai .com> on October 23, 1997, and the site has displayed ALRIFAI branding since 1998. The disputed Domain Name was created on May 3, 2003. The registrant was Michele Dinoia as early as April 17, 2010; and the registration was added to Andrea Denise Dinoia’s account on June 2, 2023, after Michele Dinoia passed away on September 8, 2023. In 2004, the disputed Domain Name resolved to a parking page displaying numerous pay-per-click (“PPC”) links. As of June 15, 2023, the disputed Domain Name was listed for sale with the minimum offer set at USD 100,000. On the same day, the Complainant made an offer of USD 5,000 via this broker’s website. The Respondent refused and asked for a better offer. On June 19, 2023, the Complainant offered USD 10,000, which the Respondent also refused.
The Complainant provides evidence of numerous prior panel decisions under the Policy since 2002 regarding domain names held by Michele Dinoia. The Complainant alleges that the Respondent’s claim that “rifai” means “do it again” (redo) in Italian is false, as the linguistic origin of the “Rifai” term is Arabic, which translates to “honor”. The Complainant further alleges that despite the Respondent’s claim that it intended to use the disputed Domain Name to operate a business, the PPC links do not relate to any dictionary meaning and the Respondent has listed the disputed Domain Name for sale for 20 years. The Respondent contends that he operates in Italy and registered the disputed Domain Name to associate it with a recipe project connected to the site, precisely to teach people how to redo recipes. The project has experienced delays as the project manager unfortunately passed away this year and the Respondent is still organizing to revitalize all the projects he had conceived.
Held: The circumstances indicate that the Respondent is not using the disputed Domain Name in connection with a bona fide offering of goods or services for the purposes of the Policy, nor is she making a legitimate noncommercial or fair use of the disputed Domain Name. Further, the fact that the disputed Domain Name is offered for sale and that the Respondent actively sought an offer for it from the Complainant undermines the Respondent’s claim that it is intended for a recipe website. The Respondent provides no other grounds to find that she has rights or legitimate interests in the disputed Domain Name.
In view of the particular circumstances here, notwithstanding the nominal change in the registrant, the Panel finds in the particular circumstances present here an unbroken chain of possession of the disputed Domain Name and will assess the registration for bad faith with a view to the circumstances prevailing as of May 3, 2003. The disputed Domain Name was registered shortly after the Complainant’s earliest trademark registration, for the figurative ALRIFAI mark, which may also have been after the much earlier date of accrual of the Complainant’s unregistered rights in the ALRIFAI mark. However, the Complainant’s trademark rights in 2003 existed in Lebanon, and possibly elsewhere in the Middle East, whereas the disputed Domain Name registrant was based in Italy. These circumstances do not give the Panel reason to find that the disputed Domain Name was registered with the Complainant or its marks in mind.
The Complainant draws attention to the PPC links on the parking page and also notes prior decisions under the Policy against the Respondent. These facts are relevant, but not determinative. The Complainant also notes the price that the Respondent was seeking for the disputed Domain Name in 2023, but not earlier, which does not shed light on the disputed Domain Name registrant’s state of awareness of the Complainant 21 years ago. Nothing on the record leads to a different conclusion regarding the Complainant’s other registered marks. Having considered the above evidence, the Panel does not find that the evidence supports a conclusion that the Complainant’s marks were being targeted when the disputed Domain Name was registered. Given that finding, it is unnecessary to consider whether the disputed Domain Name is being used in bad faith.
Complaint Denied
Complainants’ Counsel: Talal Abu Ghazaleh Legal, Egypt
Respondents’ Counsel: Self-represented
Domain Name Used in a Phishing Scam Can Never Confer Legitimate Interests
<authentlc .cam>
Panelist: Mr. Richard Hill
Brief Facts: The Complainant owns a global portfolio of iconic and world-renowned media, entertainment, sport, luxe, fashion, beauty and wellness, home, active and outdoor brands. The Complainant’s brands generate approximately $25 billion in global annual retail sales and have an expansive retail footprint in more than 150 countries, including 9,400-plus freestanding stores and shop-in-shops and 356,000 points of sale. The Complainant acquired its first brand in 2011 and has expanded its acquisition portfolio over the last decade to over 50 global brands, including but not limited to, Reebok, Elvis Presley, Judith Leiber, Marilyn Monroe, Lucky Brand, David Beckham, Forever 21, Shaquille O’Neal, Barneys New York, Nine West, Nautica, Eddie Bauer, Juicy Couture and Muhammad Ali.
The Complainant operates a website at <authentic .com> and has been using the domain name for its emails since 2023. The Complainant registered the domain name <authenticbrandsgroup .com> in 2009 and has been using it since then. The Complainant asserts common law rights in the marks AUTHENTIC and AUTHENTIC BRANDS GROUP. The Complainant alleges that the Respondent had actual knowledge of the Complainant’s mark and has been actively using the disputed Domain Name for illegitimate activities that include sending misleading and deceptive emails in attempts to scam the Complainant’s current business partners out of substantial sums of money. The Respondent failed to submit a Response.
Held: It appears from the Internet Archive that the Complainant acquired the domain name <authentic .com> in November 2022, whereas that domain name had previously been used by other parties. The Panel finds that the Complainant has failed to provide sufficient evidence to establish common law rights in the mark AUTHENTIC. However, the Complainant registered the Domain Name <authenticbrandsgroup .com> in 2009 and used the AUTHENTIC BRANDS GROUP mark in various promotional and advertising materials since at least that time. The Panel finds that the Complainant has provided sufficient evidence to show that it established common law rights in its AUTHENTIC BRANDS GROUP mark, with rights predating the registration of the disputed Domain Name. The disputed Domain Name consists of a misspelling of the dominant portion AUTHENTIC of the Complainant’s AUTHENTIC BRANDS GROUP mark.
The Respondent has been actively using the disputed Domain Name for illegitimate activities that include sending misleading and deceptive emails in attempts to scam the Complainant’s current business partners out of substantial sums of money. Previous panels have determined that a respondent’s attempt to pass itself off as a complainant, or a respondent’s attempt to phish, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Panel finds that the Respondent did not have a legitimate use in mind when registering the disputed Domain Name. Indeed, as already noted, the Respondent has attempted to use the email address associated with the disputed Domain Name to impersonate one of the Complainant’s employees, and to attempt to divert funds intended for the Complainant. Previous panels have determined that a respondent’s attempt to pass itself off as a complainant and to induce fund transfers constitute bad faith use in the sense of the Policy.
Transfer
Complainants’ Counsel: Bridgette Fitzpatrick of Authentic Brands Group LLC, New York, USA
Respondents’ Counsel: No Response