The Complainant is Seminole Tribe of Florida, d/b/a Seminole Gaming of Hollywood, Florida, United States of America (“United States”), represented by Akerman LLP, United States.
The Respondent is Privacy Protect, LLC of Burlington, Massachusetts, United States / Ibro King, Akara Inc of Nairobi, Kenya. 2. The Domain Name and Registrar
The disputed domain name ("Disputed Domain Name") is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 26, 2018. On July 26, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 27, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 31, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 31, 2018.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 10, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 30, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 31, 2018.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on September 14, 2018. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant is the Seminole Tribe of Florida, d/b/a Seminole Gaming, and is commonly referred to as “STOF”. The Complainant is a federally recognized Indian tribe in the United States. The Complainant operates casinos and hotels in the United States, and also offers various programs to its communities. The gaming division of the Complainant has been using the domain name since March 2005.
The Respondent registered the Disputed Domain Name on April 17, 2018, and it resolves to an inactive website. 5. Parties’ Contentions A. Complainant
The Complainant's contentions can be summarized as follows:
(a) The Complainant has unregistered rights in the STOF mark through its extensive use since at least 2005. The Disputed Domain Name is confusingly similar to the Complainant’s STOF mark, save that it uses “fo” rather than “of” in the Disputed Domain Name. This amounts to typosquatting.
(b) The Respondent has no rights or legitimate interests in the Disputed Domain Name. The Disputed Domain Name was registered on April 17, 2018, which is many years after the Complainant began using the STOF mark and its domain name .
(c) The Respondent has been using the Disputed Domain Name for fraudulent activities, in order to impersonate the Complainant and solicit money from the Complainant’s customers. On April 17, 2018 (shortly after the Disputed Domain Name was registered), the Respondent impersonated the Complainant’s credit executive and sent an email to a customer of the Complainant asking for a payment to be sent by wire transfer to the Respondent’s bank account. The email was sent by the Respondent from an email account linked to the Disputed Domain Name, i.e. “[…]@”. The genuine email address of Complainant’s credit executive is “[…]@”, where the named addressee is the same with only the domain differing, making it substantially similar to the email address used by the Respondent. The email sent by the Respondent was signed off using the name of an employee of the Complainant followed by “Credit Executive / Seminole Casino Coconut Creek”. Such use cannot amount to a bona fide use, or a legitimate noncommercial or fair use of the Disputed Domain Name. The Respondent is also not commonly known by the Disputed Domain Name.
(d) The Respondent has registered and is using the Disputed Domain Name in bad faith. It registered the Disputed Domain Name to send emails impersonating the Complainant’s employees for the purpose of defrauding the Complainant’s customers. B. Respondent
The Respondent did not reply to the Complainant’s contentions.
The fact that the Respondent has not submitted a Response does not automatically result in a decision in favor of the Complainant. However, the failure of the Respondent to file a Response may result in the Panel drawing appropriate inferences from such default. The Panel may also accept all reasonable and supported allegations and inferences flowing from the Complaint as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies,WIPO Case No. D2009-1437 and Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403). 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used by the Respondent in bad faith. A. Identical or Confusingly Similar
The Complainant contends that it has unregistered rights in the STOF mark by virtue of its use of the mark since at least 2005 in connection with its operations in the hotel and gaming industry, and its community programmes. For example, STOF Health Department, STOF Dental Plan, STOF Animal Registration Tribe, STOF Family Services, etc.
It is well established that the Policy protects rights in unregistered marks (see SeekAmerica Networks Inc. v. Tariq Masood and Solo Signs,WIPO Case No. D2000-0131; Imperial College v. Christopher Dessimoz,WIPO Case No. D2004-0322). Having considered the evidence submitted by the Complainant, the Panel accepts that the Complainant can claim rights in STOF as an unregistered trade mark for purposes of the Policy.
It is a well-established principle that a domain name which contains a common or obvious misspelling of a trade mark will normally be found to be confusingly similar to such trade mark, where the misspelled trade mark remains the dominant or prominent element of the domain name (Fuji Photo Film U.S.A., Inc. v. LaPorte Holdings,WIPO Case No. D2004-0971). In this case, the only difference between the Complainant’s unregistered STOF mark and the Disputed Domain Name is the swapping of the letters “of” to be “fo” in the Disputed Domain Name. Such variation adds no distinctive element, and the Disputed Domain Name still remains confusingly similar to the Complainant’s STOF trade mark. The confusion is compounded by the fact that the Disputed Domain Name incorporates the descriptive word “gaming”, which is the industry in which the Complainant operates.
Furthermore, in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the Top-Level Domain extensions, in this case “.com”, should generally be disregarded (see Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd., WIPO Case No. D2006-0762; A, Inc., Amazon Technologies, Inc., Amazon Europe Core S.a.r.l. v. Koroush Amini,WIPO Case No. DIR2017-0007).
The Panel finds that paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states that once a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent, the respondent then carries the burden of demonstrating that it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Panel accepts that the Complainant began using the STOF trade mark many years before the Disputed Domain Name was registered by the Respondent, and the Complainant has never authorised the Respondent to use its unregistered trade mark. Accordingly, the Panel is of the view that a prima facie case has been established and it is for the Respondent to prove that it has rights or legitimate interests in the Disputed Domain Name. As the Respondent has not submitted a Response to the Complainant’s contentions, the Panel will assess the case based on the reasonable inferences that can be drawn from the Complainant’s evidence.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Name by demonstrating any of the following:
(i) before any notice to them of the dispute, the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name was in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the Disputed Domain Name, even if it has acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Respondent has been using the Disputed Domain Name to send fraudulent emails to the Complainant’s customers. In particular, the emails sent by the Respondent were allegedly sent by a genuine employee of the Complainant. The email signature even referred to “Seminole Casino Coconut Creek”, which the Panel understands is a casino operated by the Complainant. The email asks the Complainant’s customer to transfer money to its “new bank account”. The email address used by the Respondent is linked with the Disputed Domain Name, i.e. “[…]@”, and is substantially and confusingly similar to the genuine email address of Complainant’s credit executive. The Respondent is obviously trying to use the Disputed Domain Name and the related email address to confuse the Complainant’s customers into believing that they are legitimate emails originating from the Complainant, in order to defraud the Complainant’s customers. This cannot amount to a right or legitimate interest in the Disputed Domain Name. In particular, such use does not constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the Disputed Domain Name.
The Panel finds that paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith
For the reasons stated above, the Respondent clearly registered and is using the Disputed Domain Name to carry out fraudulent activities in the hopes of confusing users into believing that emails sent by the Respondent in fact originate from the Complainant. This amounts to registration and use in bad faith.
The Panel finds that paragraph 4(a)(iii) of the Policy is satisfied. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name be transferred to the Complainant.
Gabriela Kennedy
Sole Panelist
Date: September 28, 2018
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