The Complainant is Aquent LLC, United States of America (“USA”), represented by SafeNames Ltd., United Kingdom.
The Respondent is Registration Private, Domains By Proxy, LLC, USA / Name Redacted 1, USA. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 27, 2019. On March 27, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 28, 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 the Complainant on April 5, 2019 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 April 8, 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 the Respondent of the Complaint, and the proceedings commenced on April 10, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 30, 2019. On April 24, 2019, the Center received an email from a third party. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 1, 2019.
The Center appointed Evan D. Brown as the sole panelist in this matter on May 10, 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
The Complainant has been in business since 1986 and has used the mark AQUENT since as early as 1999 in connection with staffing solutions for marketing and creative industries. It owns a number of registrations for the AQUENT mark, including USA Registration No. 2,289,555, registered on October 26, 1999.
The Respondent used a privacy protection service after it registered the disputed domain name on October 8, 2019. During these proceedings, the Registrar revealed that the Respondent used the name Name Redacted in connection with the registration. The Complainant asserts this shows the bogus nature of the Respondent’s activities, as Name Redacted is the name of the Complainant’s Chief Technology Officer (and that Name Redacted did not register the disputed domain name). Though the Respondent has not used the disputed domain name in connection with an active website, it has used the disputed domain name to engage in what the Complainant characterizes as phishing – using an email address linked to the disputed domain name, purporting to be Name Redacted. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s registered trademarks; that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith. B. Respondent
The Center received on email from a third party on April 24, 2019, indicating that it has no connection with “Aquent-jobs” or the Respondent. The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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 in bad faith.
The Panel finds that all three of these elements have been met in this case. A. Identical or Confusingly Similar
The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered mark. See Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505. In this case, the disputed domain name contains the Complainant’s trademark AQUENT in its entirety. The additional word “jobs” does not avoid the confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”).
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. See Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen,WIPO Case No. D2014-0657. The Complainant has demonstrated its rights because it has shown that it is the owner of valid and subsisting trademark registrations for the mark AQUENT as noted above.
Accordingly, the Panel finds that the Complainant has shown that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
The Panel evaluates this element of the Policy by first looking to see whether the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. If the Complainant makes that showing, the burden of demonstrating rights or legitimate interests shifts to the Respondent.
The Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. By failing to respond to the Complaint, the Respondent did not overcome its burden of demonstrating rights or legitimate interests, and no other facts in the record tip the balance in the Respondent’s favor.
Paragraph 4(c) of the Policy instructs respondents on a number of ways they could demonstrate rights or legitimate interests (“you” and “your” in the following refers to the particular respondent):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.
In this case, the principal indicator of the lack of rights or legitimate interests comes from the alleged nature of the Respondent’s use of the disputed domain name to generate fraudulent email. See Regeneron Pharmaceuticals, Inc. v. Nikki Dockum, Tred,WIPO Case No. D2018-0155; Syngenta Participations AG v. Guillaume Texier, Gobain Ltd,WIPO Case No. D2017-1147 (registrant cannot acquire rights or legitimate interests by the use of a domain name as an email address from which to send phishing emails).
Accordingly, the Respondent does not have any rights or legitimate interests in regard to the disputed domain name. C. Registered and Used in Bad Faith
The Policy requires the Complainant to establish that the disputed domain name was registered and is being used in bad faith. Based on the available record, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith. Using the disputed domain name to send fraudulent email is a strong example of bad faith under the Policy.
Accordingly, the Complainant has satisfied this 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 the Complainant.
Evan D. Brown
Sole Panelist
Date: May 24, 2019
1 The Respondent appears to have used the name and contact details of a third-party when registering the disputed domain name. In light of the potential identity theft, the Panel has redacted the Respondent’s name from this Decision. However, the Panel has attached as Annex 1 to this Decision an instruction to the Registrar regarding transfer of the disputed domain name, which includes the name of the Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this Decision shall not be published due to the exceptional circumstances of this case. See ASOS plc. v. Name Redacted,WIPO Case No. D2017-1520; Banco Bradesco S.A. v. FAST-12785241 Attn. B / Name Redacted,WIPO Case No. D2009-1788.
Full & Egal Universal Law Academy