Complainant is NTM Engineering, Inc. of Dillsburg, Pennsylvania, United States of America (“United States”), represented by The Keller Law Firm, LLC / Tucker Arsenberg, P.C., United States.
Respondent is Registration Private, Domains by Proxy, LLC, DomainsByP, of Scottsdale, Arizona, United States / James Priya NA of Oakland, California, United States. 2. The Domain Name and Registrar
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 February 25, 2019. On February 25, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 26, 2019, 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 February 27, 2019 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 February 27, 2019.
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 February 28, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 20, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 21, 2019.
The Center appointed Lawrence K. Nodine as the sole panelist in this matter on March 28, 2019. 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
Since December 11, 2006, Complainant has provided civil engineering services throughout the United States. On the same date, Complainant registered the domain name . Complainant owns U.S. Registration No. 3,821,641, registered on July 20, 2010, for the design mark NTM NEWELL TERESKA & MACKAY ENGINEERING (the “Design Mark”). Complainant also uses the phrase “NTM ENGINEERING” as a trade name and on its social media pages.
Respondent registered the disputed domain name on February 13, 2019. The disputed domain name redirects to Complainant’s website.
On February 13, 2019, two third-parties received emails from the email address: [employeename]@. The emails invited the recipients to submit quotes for office supplies. The emails were purportedly signed by Complainant’s employee, with Complainant’s actual address provided in the signature.
A purchase order, with a different address as the shipping address, was attached to one of the emails received by a third party. On February 20, 2019, another third party received, by fax, a letter inviting the party to provide a quote for office supplies. The signature block of the letter included the name of Complainant’s employee, the email address described above, and Complainant’s address. Complainant’s Design Mark appeared in the header of the letter. 5. Parties’ Contentions A. Complainant
Complainant asserts that it has established rights in the Design Mark by virtue of its federal registration. Complainant also asserts that it has established common law trademark rights in the mark NTM ENGINEERING, which it claims to have used since at least as early as December 11, 2006. According to Complainant, the disputed domain name is identical to the NTM ENGINEERING mark and incorporates the mark in its entirety.
Complainant also asserts that Respondent has no trademark rights in the NTM ENGINEERING mark and that it has not authorized Respondent to use the mark.
According to Complainant, Respondent is using the disputed domain name for the sole purpose of confusing and deceiving third parties into believing that they are communicating with Complainant. Respondent is engaged in a scheme, Complainant asserts, that involves the creation of fraudulent purchase orders and invoices purportedly arising from or authorized by Complainant. Complainant asserts that this scheme amounts to bad faith registration and use. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Complainant’s Rights in the Name and Common Law Mark NTM ENGINEERING
A complainant may establish rights in an unregistered or common law trademark by showing that “its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services”. WIPO Overview of WIPO Panel Views on Selected UDPR Questions, Third Edition (“WIPO Overview 3.0”), section 1.3. To demonstrate a mark’s acquired distinctiveness, a complainant may submit relevant evidence such as “(i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys”. Id. The fact that a respondent has targeted the complainant’s mark may support the assertion that the complainant’s mark has achieved source-indicating significance. Id.
While Complainant asserts that it has used the NTM ENGINEERING mark since 2006, Complainant has not provided evidence of the duration or nature of such use. Nor has Complainant provided other relevant evidence of acquired distinctiveness as detailed above. However, given Complainant’s use of NTM ENGINEERING as a trade name, including on Complainant’s social media pages, it is likely that Complaint has acquired some common law rights in the NTM ENGINEERING mark. See Sherwood Tractor Inc. v. Nathan Pruss / Tyler Toney, Bruno’s Powersports,WIPO Case No. D2018-2337 (finding complainant had more likely than not acquired some common law rights in its mark). Most importantly, Respondent has clearly targeted Complainant. This fact supports the contention that Complainant’s mark has achieved significance as a source identifier. Consequently, the Panel finds that Complainant has established common law rights in the NTM ENGINEERING mark for the purposes of the Policy. B. Identical or Confusingly Similar
The disputed domain name is identical and confusingly similar to the NTM ENGINEERING mark. The disputed domain incorporates the NTM ENGINEERING mark in its entirety.
Complainant has satisfied paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
Complainant has presented a prima facie case for Respondent’s lack of rights or legitimate interests in the disputed domain name, which Respondent has failed to rebut. The record shows that Respondent has used the disputed domain name in an attempt to pass itself off as Complainant in scam communications to mislead the recipients for Respondent’s own benefit. Use of a domain name to perpetuate phishing scams is not a bona fide offering of goods or services. WIPO Overview 3.0, section 2.13. The Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name.
Complainant has satisfied paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Respondent registered and has used the disputed domain name in bad faith. Respondent’s communications soliciting quotes for office supplies make clear that Respondent was aware of Complainant and its NTM ENGINEERING mark at the time it registered the disputed domain name. For example, the emails, which Respondent sent the day it registered the disputed domain name, falsely purported to be signed by an employee of Complainant.
The record supports the finding that Respondent sought to use the disputed domain name to create a false association with Complainant to promote a phishing scam. The incorporation of the entirety of Complainant’s NTM ENGINEERING mark in the disputed domain name indicates an attempt to trick recipients into responding to Respondent’s communications in the mistaken belief that they are communicating with Complainant. The contents of the communications, including the Design Mark and Complainant’s physical address, further indicate Respondent’s intent to deceive recipients. This evidences bad faith. WIPO Overview 3.0, section 3.1.4.
Complainant has satisfied 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 Complainant.
Lawrence K. Nodine
Sole Panelist
Date: April 11, 2019
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