The Complainant is PCM, Inc. of El Segundo, California, United States of America (“United States”), represented by Morrison & Foerster, LLP, United States.
The Respondent is Name Redacted.1 2. The Domain Name and Registrar
The disputed domain name is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 15, 2018. On October 15, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 19, 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 October 19, 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 October 24, 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 October 26, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 15, 2018. On October 31, 2018 and November 1, 2018, the Center received two email communications from a third party associated with the Respondent. The Response was filed with the Center on November 13, 2018.
The Center appointed William R. Towns as the sole panelist in this matter on November 30, 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 provides IT solutions and services under the PCM mark. The Complainant is the owner of a United States trademark registration for PCM, U.S. Reg. No. 4293168, applied for on November 4, 2011, registered on February 19, 2013, and used in commerce since as early as February 2012. The Complainant also is the holder of a Canadian trademark registration for PCM, Reg. No. TMA1001140, applied for on May 3, 2012, and registered on July 19, 2018; and an International Registration No. 1287325 for the PCM mark, filed and registered on January 28, 2015 (granted protection in the European Union and Japan). The Complainant also registered the domain name on March 27, 1999, and has operated a website at “www.” to promote its goods and services since 2000.
The disputed domain name was registered by the Respondent on June 27, 2018, according to the concerned Registrar’s WhoIs records. On the same day as its registration the disputed domain name was used in a phishing email sent to a customer of the Complainant, in which the Respondent impersonated an account executive for a wholly owned subsidiary of the Complainant, seeking to induce a customer to send a copy of a W-9 tax document. The Complainant expresses concern that the Respondent is continuing to use the disputed domain name in email phishing attacks. Since at least as early as July 12, 2018, the disputed domain name has been redirected to the Complainant’s website at “www.”. 5. Parties’ Contentions A. Complainant
The Complainant submits that the disputed domain name is confusingly similar to the Complainant’s PCM mark. The Complainant remarks that the disputed domain name incorporates the Complainant’s PCM mark in its entirety, and that the additional acronym “IT” in the disputed domain name is descriptive of goods and services offered by the Complainant under its PCM mark.
The Complainant maintains that the Respondent has no rights or legitimate interests in the disputed domain name. According to the Complainant, the Respondent has not been commonly known by the disputed domain name, is not authorized or licensed by the Complainant to use the PCM mark, has not used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, and is not making a legitimate noncommercial or fair use of the disputed domain name.
Rather, the Complainant contends that the Respondent is using the disputed domain name for malicious purposes. The Complainant relates that upon registering the disputed domain name on June 27, 2018, the Respondent used the disputed domain name with an email sent to one of the Complainant’s customers. The email appeared to be from an account executive for a subsidiary of the Complainant (although no such individual existed), and requested that a copy of the customer’s W-9 tax document be sent using the email address. Since July 12, 2018, the Respondent has redirected the disputed domain name to the Complainant’s “www.” website. The Complainant submits this is being done to falsely represent an affiliation with the Complainant in furtherance of a fraudulent scheme, seeking to dupe consumers into disclosing sensitive tax information to the Respondent.
In view of the foregoing, the Complainant asserts that the Respondent registered and is using the disputed domain name in bad faith. The Complainant submits that the Respondent’s unauthorized use of the Complainant’s mark in the disputed domain name in furtherance of fraudulent phishing schemes evinces the Respondent’s opportunistic bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. However, the individual identified as the registrant of the disputed domain name in WhoIs records submitted a Response, accompanied by a sworn affidavit (hereinafter the “Affiant”). The Affiant claims no affiliation, association or relationship with any contact information listed with the Affiant’s name, including telephone number and email addresses, other than the Affiant’s business address. The Affiant is employed as a director of technology in a local school district. The Affiant claims no affiliation, association or relationship or any dealings with WhoIs Guard, Inc., , or PCM. 6. Discussion and Findings A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests with respect to the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s PCM mark, in which the Complainant has established rights through registration and use in commerce. In considering identity and confusing similarity, the first element of the Policy serves essentially as a standing requirement.2 The threshold inquiry under the first element of the Policy involves a relatively straightforward comparison between the complainant’s trademark and the disputed domain name.
The Complainant’s PCM mark is clearly recognizable in the disputed domain name.3 The addition of the letters “it” following “pcm” in the disputed domain name does not serve to dispel the confusing similarity of the disputed domain name to the Complainant’s mark. Given that “IT” calls to mind the products and services offered by the Complainant under its PCM mark, the Panel considers the Respondent’s registration and use of the disputed domain name to reflect targeting of the Complainant.4 Top Level Domains (TLDs), in this case “.org”, generally are disregarded in determining identity or confusing similarity under paragraph 4(a)(i) of the Policy.5
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, the burden of production shifts to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been authorized to use the Complainant’s PCM mark. The record reflects that the Respondent nonetheless has registered and used the disputed domain, which is confusingly similar to the Complainant’s mark, in furtherance of a fraudulent phishing scheme.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has not submitted a response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. The Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy.
It is evident that the Respondent was aware of the Complainant and the Complainant’s PCM mark when registering the disputed domain name. In the absence of any explanation by the Respondent, the Panel considers in all likelihood that the Respondent registered the disputed domain name with the aim of exploiting and profiting from the Complainant’s mark, in furtherance of a fraudulent phishing scheme.
Having regard to all of the relevant circumstances in this case, and in the absence of any explanation by the Respondent, the Panel concludes that the Respondent has not used or demonstrated preparations to use the disputed domain name in connection with a bona fide offering of goods or services, and that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. Further, there is no indication that the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. In short, nothing in the record before the Panel supports a finding of the Respondent’s rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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 respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its 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 respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. The Panel concludes that the Respondent was aware of the Complainant and had the Complainant’s PCM mark in mind when registering the disputed domain name. The record evinces that the Respondent’s motive in relation to the registration and use of the disputed domain name was to capitalize on the Complainant’s trademark rights by creating a likelihood of confusion with the Complainant’s mark, with the ultimate aim to profit illicitly therefrom. In light of the attendant circumstances, the Respondent’s registration and use of the disputed domain name (including targeting) smacks of opportunistic bad faith.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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 the Complainant.
William R. Towns
Sole Panelist
Date: December 14, 2018
1 The Respondent has fraudulently impersonated the Complainant, and provided false or fictitious contact information when registering the disputed domain name. It appears from the record that the Respondent registered the disputed domain name in another person’s name in order to conceal the Respondent’s identity. In light of this, the Panel believes that no purpose can be served by including the named Respondent in this decision, and has therefore redacted the Respondent’s name from the caption and body of this decision. The Panel has, however, attached as Annex 1 to this decision an instruction to the Registrar regarding transfer of the disputed domain name that includes the named Respondent, and has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding. The Panel has further directed the Center, pursuant to paragraph 4(j) of the Policy and paragraph 16(b) of the Rules, that Annex 1 to this decision shall not be published due to exceptional circumstances. See Banco Bradesco S.A. v. FAST-12785241 Attn. B / Name Redacted,WIPO Case No. D2009-1788. The Panel also notes that the Complainant in its Amended Complaint did not retain the privacy service Whois Guard, Inc. as a Respondent. Accordingly, the Panel does not retain WhoIs Guard, Inc. as Respondent in this matter.
2 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7 .
3 Id. When the relevant trademark is recognizable in the disputed domain name, the domain name normally will be considered confusingly similar to the mark for purposes of paragraph 4(a)(i) of the Policy.
4 See WIPO Overview 3.0, section 1.15.
5 See WIPO Overview 3.0, section 1.11.2 and cases cited therein.
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