Complainant is Rockefeller Group International, Inc. of New York, New York, United States of America (“United States” or “U.S.”), represented by Hunton Andrews Kurth LLP, United States.
Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States / Jason Mills of Fenton, Missouri, United States, internally represented. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with Wild West Domains, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 8, 2018. On August 9, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 11, 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 Complainant on August 13, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on August 17, 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 Respondent of the Complaint, and the proceedings commenced on August 20, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 9, 2018. Respondent submitted informal email communications on August 24 and 30, 2018 but did not submit any formal response. Accordingly, the Center notified the Parties on September 10, 2018.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on September 17, 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
Complainant states that it is “a world famous, multi-billion dollar real estate investment and development firm operating under its famous THE ROCKEFELLER GROUP® trade name and trademark”; that “[a]mong its many valuable assets, Rockefeller Group is known for its and its licensees’ ownership and management of several iconic properties, including the ROCKEFELLER CENTER® and ROCKEFELLER PLAZATM properties in New York City”; and that “Rockefeller Group and its licensees’ properties are among the world’s most famous landmarks.”
Complainant states, and provides evidence to support, that it owns multiple trademark registrations for marks that consist of or contain the mark ROCKEFELLER CENTER or ROCKEFELLER GROUP, including the following:
- U.S. Reg. No. 1,236,674 for ROCKEFELLER CENTER for use in connection with “Complete Real Estate Services, Including Project Development and Planning, Management, Operation, Investment, Brokerage and Construction Services” (first used in commerce January 7, 1974; registered on May 3, 1983).
- U.S. Reg. No. 1,345,031 for THE ROCKEFELLER GROUP for use in connection with, inter alia, “real estate services, namely real estate investment and brokerage services” (first used in commerce on January 29, 1984; registered on June 25, 1985).
These trademarks are referred to herein as the “ROCKEFELLER Trademark.”
The Disputed Domain Name was created on May 2, 2018. Although the Disputed Domain Name is not being used in connection with an active website, Complainant states, and provides evidence to support, that “its MX record shows that its email functionality is currently active and operating through Microsoft Outlook”.
Complainant sent a demand letter to Respondent on May 11, 2018, but Respondent did not respond. 5. Parties’ Contentions A. Complainant
Complainant contends, in relevant part, as follows:
- The Disputed Domain Name is confusingly similar to the ROCKEFELLER Trademark because “it is nearly identical to the ROCKEFELLER GROUP® name and mark, except for the virtually unrecognizable replacement of the letter ‘g’ with the letter ‘q’”; and “[t]his is an obvious example of ‘typosquatting’, and panels routinely hold that domain names created via typosquatting are confusingly similar to complainants’ marks.”
- Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “Respondent’s use of the Disputed Domain Name and the fraud notification from Complainant’s bank make clear that the Disputed Domain Name is intentionally trading off the extensive fame and goodwill associated with Complainant’s ROCKEFELLER GROUP Marks and ROCKEFELLER GROUP Domain for commercial gain”; Respondent had at least constructive notice of the ROCKEFELLER Trademark before it registered the Disputed Domain Name and “any claim by Respondent that it was unaware of the ROCKEFELLER GROUP Marks at the time it registered the Disputed Domain Names is meritless, given the scope and breadth of the fame of” the ROCKEFELLER Trademark; “Respondent does not hold any proprietary rights in or to any registered trademark for ‘ROCKEFELLERQROUP’, or for any other similar name, term, phrase, symbol, device, or combination of the foregoing”; “Rockefeller Group has never consented to Respondent’s use of the ROCKEFELLER GROUP Marks in connection with the Disputed Domain Name, and there is no affiliation or connection between Rockefeller Group and Respondent”; and “Respondent has never been known by the Disputed Domain Name or by any other term that incorporates or is similar to the ROCKEFELLER GROUP Marks in whole or in part.”
- The Disputed Domain Name was registered and is being used in bad faith because, inter alia, “where, as here, Complainant’s reputation is significant, and its mark is similar to the Disputed Domain Name, the likelihood of confusion is such that bad faith may be inferred”; “upon information and belief, Respondent will use the Disputed Domain Name to pose as Complainant and seek personal information from Internet users as part of a phishing scam”; and “it is clear that Respondent chose the Disputed Domain Name to free ride off the name and goodwill amassed by Complainant in the ROCKEFELLER GROUP Marks; to confuse Internet users for its own commercial gain; and in furtherance of its fraudulent activity.” B. Respondent
Respondent did not reply to Complainant’s contentions. However, in an email to the Center, a representative for Respondent stated: “Based on our review of the complaint, and our position that neither our executive, Jason Mills, nor UniGroup, C.A., nor any of its affiliates registered, nor has any interest in the domain www., we intend not to file an answer and will let the domain transfer in accordance with the UDRP procedures. We have our own battles with domain squatters, fraudsters, and the like; if we can be of further assistance to you, please let me know.” 6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) 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 in bad faith. Policy, paragraph 4(a). A. Identical or Confusingly Similar
Based upon the trademark registrations cited by Complainant, it is apparent that Complainant has rights in and to the ROCKEFELLER Trademark.
As to whether the Disputed Domain Name is identical or confusingly similar to the ROCKEFELLER Trademark, the relevant comparison to be made is with the second-level portion of the Disputed Domain Name only (i.e., “rockefellerqroup”) because “[t]he applicable Top-Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test”. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.1.
The Disputed Domain Name is identical to some of the ROCKEFELLER Trademarks (including U.S. Reg. No. 1,345,031) with two minor exceptions: deletion of the word “the” and substitution of the letter “q” for the letter “g.” Such differences are irrelevant for purposes of the Policy. For example, a previous decision under the Policy found that “omission of the word ‘the’” is “an inconsequential difference.” Mavenvista Technologies Pvt. Ltd. v. IT Comms, Ariba, Inc.,WIPO Case No. D2017-1130. And, as set forth in section 1.9 of WIPO Overview 3.0, a domain name that contains “the use of different letters that appear similar in different fonts” is confusingly similar to the relevant trademark.
Accordingly, the Panel finds that Complainant has proven the first element of the Policy. B. Rights or Legitimate Interests
Complainant has argued that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “Respondent’s use of the Disputed Domain Name and the fraud notification from Complainant’s bank make clear that the Disputed Domain Name is intentionally trading off the extensive fame and goodwill associated with Complainant’s ROCKEFELLER GROUP Marks and ROCKEFELLER GROUP Domain for commercial gain”; Respondent had at least constructive notice of the ROCKEFELLER Trademark before it registered the Disputed Domain Name and “any claim by Respondent that it was unaware of the ROCKEFELLER GROUP Marks at the time it registered the Disputed Domain Names is meritless, given the scope and breadth of the fame of” the ROCKEFELLER Trademark; “Respondent does not hold any proprietary rights in or to any registered trademark for ‘ROCKEFELLERQROUP’, or for any other similar name, term, phrase, symbol, device, or combination of the foregoing”; “Rockefeller Group has never consented to Respondent’s use of the ROCKEFELLER GROUP Marks in connection with the Disputed Domain Name, and there is no affiliation or connection between Rockefeller Group and Respondent”; and “Respondent has never been known by the Disputed Domain Name or by any other term that incorporates or is similar to the ROCKEFELLER GROUP Marks in whole or in part.”
WIPO Overview 3.0, section 2.1, states: “While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
The Panel finds that Complainant has established its prima facie case and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has satisfied the second element of the Policy. C. Registered and Used in Bad Faith
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).
Complainant does not specify which, if any, of the enumerated factors is applicable here. As previously noted, the Disputed Domain Name is not being used in connection with an active website, and although Complainant has concerns that the Disputed Domain Name is or may be used in connection with phishing activities, there is no evidence that Respondent has engaged or is engaging in such activities. Nevertheless, Complainant “need not wait for direct harm” to establish bad faith. Fulham Football Club (1987) Limited v. /Belize Domain Services,WIPO Case No. D2001-0335. This is especially true where the likelihood of potential phishing is high, as appears to be the case here given the similarity of the Disputed Domain Name to the ROCKEFELLER Trademark and the inexplicable typographical variation between the Disputed Domain Name and the ROCKEFELLER Trademark. See also WIPO Overview 3.0, section 3.1.4: “[G]iven that the use of a domain name for per se illegitimate activity such as… phishing can never confer rights or legitimate interests on a respondent, such behavior is manifestly considered evidence of bad faith.”
Furthermore, even putting aside the question of phishing or potential phishing, bad faith exists here pursuant to the “passive holding doctrine.” As set forth in section 3.3 of WIPO Overview 3.0:
From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding.
While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.
This section is derived, of course, largely from the landmark decision on passive holding in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
As applied to the instant proceeding, the Panel finds that the ROCKEFELLER Trademark is highly distinctive; that Respondent has not submitted a substantive response (and, in fact, has said that it “will let the domain transfer in accordance with the UDRP procedures”); that Respondent masked its identity by using a privacy or proxy service (which was unveiled during the course of this proceeding); and that it is implausible there would be any good faith use to which the Disputed Domain Name may be put.
Accordingly, the Panel finds that Complainant has proven the third element of the Policy. 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 Complainant.
Douglas M. Isenberg
Sole Panelist
Date: September 28, 2018
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