The Complainant is The RMR Group LLC, United States of America (“United States”), represented by Ropes & Gray LLP, United States.
The Respondent is Name Redacted.1 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 7, 2020. On February 10, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 11, 2020, 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 February 24, 2020, 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 February 28, 2020. 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 March 4, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 24, 2020. The Center received an informal email communication from a third party on March 6, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 25, 2020. The Center appointed Lynda M. Braun as the sole panelist in this matter on April 2, 2020. 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, a majority-owned subsidiary of the holding company The RMR Group Inc., is an alternative asset management company with over 30 years of experience investing in real estate and managing real estate-related businesses. The Complainant provides management services to five publicly owned real estate investment trusts and three real estate-related operating companies, including over 2,200 properties, and employs approximately 600 real estate professionals in more than 30 offices throughout the United States. The Complainant has approximately USD 32 billion of total assets under management and almost 50,000 employees. The Complainant has used the name Reit Management & Research (abbreviated as RMR) since 1986, and the name THE RMR GROUP since 2015. The Complainant owns two United States service marks, namely THE RMR GROUP, United States Registration No. 5,067,200, registered on October 25, 2016 in international class 36; and United States Registration No. 5,067,201, registered on October 25, 2016 in international class 36 (hereinafter collectively referred to as “THE RMR GROUP Mark”). The Complainant registered the domain name The Disputed Domain Name was registered on January 6, 2020. That same month, fraudulent job listings were posted on Craigslist for employment with the Complainant using an email address that purported to come from an employee of the Complainant. The job postings sought to defraud applicants by attempting to persuade them to provide personal information to the Respondent in connection with their job applications. 5. Parties’ Contentions A. Complainant The Complainant contends that: - The Disputed Domain Name is confusingly similar to the trademark in which the Complainant has rights. - The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. - The Disputed Domain Name was registered and is being used in bad faith. The Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings In order for the Complainant to prevail and have the Disputed Domain Name transferred from the Respondent to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)): (i) The Disputed 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 in respect of the Disputed Domain Name; and (iii) The Disputed Domain Name was registered and is being used in bad faith. A. Identical or Confusingly Similar This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark. The Panel concludes that the Disputed Domain Name is confusingly similar to the Complainant’s THE RMR GROUP Mark. It is uncontroverted that the Complainant has established rights in THE RMR GROUP Mark based on its years of use as well as its federally registered trademarks for THE RMR GROUP Mark. The general rule is that “registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive”. See CWI, Inc. v. Domain Administrator c/o Dynadot,WIPO Case No. D2015-1734. The Respondent has not rebutted this presumption, and therefore the Panel finds that the Complainant has enforceable rights in THE RMR GROUP Mark. The Disputed Domain Name Moreover, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva,WIPO Case No. D2012-0182. Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant. B. Rights or Legitimate Interests Under the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in that domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1. The Complainant has not authorized, licensed, or otherwise permitted the Respondent to use its THE RMR GROUP Mark. The Complainant does not have any type of business relationship with the Respondent nor is the Respondent making a legitimate noncommercial or fair use of the Disputed Domain Name. Instead, the Panel finds that the Respondent is improperly using the Disputed Domain Name for commercial gain as part of a phishing scheme to deceive the Complainant’s potential job applicants into believing that jobs were being posted on a third party website by an employee of the Complainant. Such a phishing scheme cannot be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use of the Disputed Domain Name. See, CMA CGM v. Diana Smith,WIPO Case No. D2015-1774. In this case, the Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent has not submitted any substantive arguments or evidence to rebut the Complainant’s prima facie case. Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant. C. Registered and Used in Bad Faith The Panel finds that based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith registration and use of the Disputed Domain Name pursuant to paragraph 4(a)(iii) of the Policy. First, the Respondent’s phishing scheme to post potential jobs on a website purporting to come from the Complainant’s employee using an email incorporating the Disputed Domain Name, and to request personal information from applicants when applying for those jobs, evidences a clear intent to disrupt the Complainant’s business, deceive individuals, and trade off the Complainant’s goodwill by creating an unauthorized association between the Respondent and the Complainant’s Mark. See Banco Bradesco S.A. v. Fernando Camacho Bohm,WIPO Case No. D2010-1552. Such conduct is emblematic of the Respondent’s bad faith registration and use of the Disputed Domain Name. See Petróleo Brasileiro S.A. - Petrobras v. AK Bright,WIPO Case No. D2013-2063 (considering the reputation of the complainant and the emails sent by the respondent using the complainant’s trademark, the respondent is held to have registered and used the disputed domain name in bad faith). Several UDRP panels have found that email-based phishing schemes that use a complainant’s trademark in a disputed domain name are evidence of bad faith. See, e.g., DeLaval Holding AB v. Registration Private, Domains By Proxy LLL / Craig Kennedy,WIPO Case No. D2015-2135. Second, the registration of a domain name that is confusingly similar to a trademark by an entity that has no relationship to that mark may be sufficient evidence of opportunistic bad faith. See Ebay Inc. v. Wangming,WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163. Based on the circumstances here, the Respondent registered and is using the Disputed Domain Name in bad faith to target the Complainant’s THE RMR GROUP Mark for commercial gain. Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant. 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 Lynda M. Braun 1 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 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 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.
Sole Panelist
Date: April 6, 2020
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