Complainant is No Limit, LLC and Newman’s Own, Inc., United States of America (“United States”), represented by Kilpatrick Townsend & Stockton LLP, United States.
Respondent is Game Boy, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 4, 2020. On December 7, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 8, 2020, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the 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 December 9, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 29, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 30, 2020. The Center appointed Phillip V. Marano as the sole panelist in this matter on January 15, 2021. 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 Complainants are No Limit, LLC, owner of the NEWMAN’S OWN trademarks, and Newman’s Own, Inc., licensee of the NEWMAN’S OWN trademarks. Complainants have a common legal interest in this dispute based on the licensing relationship between them. For the purposes of this Panel’s decision, and as addressed in further detail below, No Limit, LLC and Newman’s Own, Inc. are referred to jointly as either “Complainant” or “Complainants”. Complainant is a food company founded by actor Paul Newman and author A. E. Hotchner in 1982. Complainant produces and sells a line of over 200 lines of food and beverage products, and is well known for donating 100% of its after-tax profits to various educational and charitable organizations. Complainant owns valid and subsisting registrations for the NEWMAN’S OWN trademark in numerous jurisdictions, including in Canada, China, the European Union, and the United States, with the earliest priority dating back to September 10, 1982. Respondent registered the disputed domain name on October 27, 2020. At the time of this Complaint, the disputed domain name resolved to a parked webpage containing various non-resolving hyperlinks with titles like “Art School” or “Watch Free Movies Online”. Respondent has also configured the disputed domain name with MX records used to send emails impersonating Complainant in an attempt to fraudulent divert to Respondent payments that were intended for Complainant. Specifically, such emails impersonate an accounts receivable specialist with Complainant, erroneously assert that “our method of receiving payments has changed”, and provide fraudulent “updated banking instruction”. 5. Parties’ Contentions A. Complainant Complainant asserts ownership of the NEWMAN’S OWN trademark and has adduced evidence of trademark registrations in numerous jurisdictions around the world including Canada, China, the European Union, and the United States, with earliest priority dating back to September 10, 1982. The disputed domain name is confusingly similar to Complainant’s NEWMAN’S OWN trademark, according to Complainant, because the disputed domain name incorporates the NEWMAN’S OWN trademark in its entirety, and adding the letter “s” to a well-known mark is a classic example of typosquatting. Complainant further asserts that Respondent lacks any rights or legitimate interests in the disputed domain name based on: the lack of any relationship, license, or permission between Complainant and Respondent; the lack of any evidence that Respondent, who uses the false name “Game Boy”, is known by the NEWMAN’S OWN trademark; the inability of Respondent to establish any legitimate use based on the well-known nature of Complainant’s NEWMAN’S OWN trademark; and, Respondent’s use of the disputed domain name as part of a fraudulent scheme to impersonate Complainant and trick Complainant’s customers into making payments to Respondent. Complainant argues that Respondent has registered and used the disputed domain name in bad faith for numerous reasons, including: Respondent’s typosquatting on the well-known NEWMAN’S OWN trademark; Respondent’s use of the disputed domain name to impersonate Complainant and send emails that purport to originate from Complainant; and, Respondent’s use of false contact information to conceal its identity. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings To succeed in its Complaint, Complainant must establish in accordance with paragraph 4(a) of the Policy: i. the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights; Although Respondent did not reply to Complainant’s contentions, the burden remains with Complainant to establish by a balance of probabilities, or a preponderance of the evidence, all three elements of paragraph 4(a) of the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.3 (“A respondent’s default would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true. UDRP panels have been prepared to draw certain inferences in light of the particular facts and circumstances of the case, e.g. where a particular conclusion is prima facie obvious, where an explanation by the respondent is called for but is not forthcoming, or where no other plausible conclusion is apparent.”); The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064 (“The Respondent’s default does not automatically result in a decision in favor of the complainant. The Complainant must still prove each of the three elements required by Policy paragraph 4(a)”). Affiliates and trademark licensees can be considered to have rights in a trademark under the UDRP for the purposes of standing to file a single consolidated complaint. WIPO Overview 3.0, Section 1.4. UDRP panels most often have accepted consolidated complaints in situations where multiple complainants have demonstrated common legal interests in the trademark rights on which a complaint is based, typically involving commonality based on an agency, licensing, or affiliate relationship between the co-complainants. See, e.g., ITT Manufacturing Enterprises, Inc., ITT Corporation v. Douglas Nicoll, Differential Pressure Instruments, Inc.,WIPO Case No. D2008-0936. The Panel finds that for the purpose of this dispute, the interests of the Complainants are co-extensive based on Complainants’ unopposed assertion of a licensing relationship between the Complainants, and that it is appropriate for them to proceed as joint Complainants. See e.g. Volkswagen Group of America, Inc. v. Kim Hyeonsuk a.k.a. Kim H. Suk, Domain Bar, Young N. and Kang M.N., WIPO Case No. D2014-1596; Starwood Hotels & Resorts Worldwide Inc., et. al. v. Media Insight a/k/a Media Insights,WIPO Case No. D2010-0211 (“The consolidation of multiple complainants in a single complaint generally should be permitted if the complainants have a truly common grievance against the respondent, and it is equitable and procedurally efficient to do so.”) A. Identical or Confusingly Similar Ownership of a nationally or regionally registered trademark serves as prima facie evidence that Complainant has trademark rights for the purposes of standing to file this Complaint. WIPO Overview 3.0 , section 1.2.1 . Complainant submitted evidence that the NEWMAN’S OWN trademark has been registered in numerous jurisdictions including the United States with priority dating back to September 10, 1982, nearly forty years before the disputed domain name was registered by Respondent. Thus, the Panel finds that Complainant’s rights in the NEWMAN’S OWN trademark have been established pursuant to the first element of the Policy. The only remaining question under the first element of the Policy is whether the disputed domain name is identical or confusingly similar to Complainant’s NEWMAN’S OWN trademark. In this Complaint, the Panel finds that the disputed domain name is confusingly similar to Complainant’s NEWMAN’S OWN trademark because, disregarding the “.com” generic Top-Level Domain (“gTLD”), the trademark is contained in its entirety within the disputed domain name. WIPO Overview 3.0 , section 1.7 . (“This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name … [I]n cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar...”). GTLDs, such as “.com” in the disputed domain name, are generally viewed as a standard registration requirement and are disregarded under the first element. WIPO Overview 3.0 , section 1.11 . Furthermore, it is well established that domain names which consist of common, obvious or intentional misspellings of trademarks are considered to be confusingly similar for the purposes of the first element of the Policy. WIPO Overview 3.0 , section 1.9 (“Examples of such typos include (i) adjacent keyboard letters, (ii) substitution of similar-appearing characters … (iii) the use of different letters that appear similar in different fonts, (iv) the use of non-Latin internationalized or accented characters, (v) the inversion of letters and numbers, or (vi) the addition or interspersion of other terms or numbers”). See e.g. Edmunds.com, Inc. v. Digi Real Estate Foundation, WIPO Case No. D2006-1043 (“This is clearly a ‘typosquatting’ case where the disputed domain name is a slight misspelling of a registered trademark to divert internet traffic … In fact, the domain name comprises the Complainant’s trademark … with a single misspelling of an element of the mark: a double consonant ‘s’ at the end.”) In view of Complainant’s registration for the NEWMAN’S OWN trademark, Respondent’s incorporation of that trademark in its entirety in the disputed domain name, and Respondent’s clear attempt at typosquatting on the NEWMAN’S OWN trademark, the Panel concludes that Complainant has established the first element of the Policy. B. Rights or Legitimate Interests Complainant must make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name, shifting the burden of production on this element to Respondent to come forward with evidence demonstrating such rights or legitimate interests. Where, as in this Complaint, Respondent fails to come forward with any relevant evidence, Complainant is deemed to have satisfied the second element of the Policy. WIPO Overview , section 2.1 . It is evident that Respondent, identified by registration data for the disputed domain name as “Game Boy”, is not commonly known by the disputed domain name or Complainant’s NEWMAN’S OWN trademark. UDRP panels have categorically held that use of a domain name for illegal activity - including the impersonation of the complainant and other types of fraud - can never confer rights or legitimate interests on a respondent. Circumstantial evidence can support a credible claim made by Complainant asserting Respondent is engaged in such illegal activity, including that Respondent has masked its identity to avoid being contactable, or that Respondent’s website has been suspended by its hosting provider. WIPO Overview 3.0 , section 2.13 . See e.g. Graybar Services Inc. v. Graybar Elec, Grayberinc Lawrenge,WIPO Case No. D2009-1017 (“Respondent has used the domain name to pretend that it is the Complainant and in particular to create false emails pretending that they are genuine emails coming from the Complainant and one of its senior executives”) See also The Commissioners for HM Revenue and Customs v. Name Redacted,WIPO Case No. D2017-0501 (“In addition, the disputed domain names … have had their web hosting suspended as a result of fraudulent activities. This is evidence of bad faith registration and use of the disputed domain names.”) As here, such a claim is more easily established through direct evidence proffered by Complainant, including an illustrative fraudulent email sent from the disputed domain name attempting to impersonate Complainant and divert customer payments to Respondent. To this end, the second and third elements of the Policy may be assessed together where clear indicia of bad faith suggests that there cannot be any Respondent rights or legitimate interests. WIPO Overview 3.0 , section 2.15 . In view of the absence of any evidence supporting any rights or legitimate interests in the disputed domain name and Complainant’s direct evidence that Respondent configured the disputed domain name with MX records used to send emails that impersonate Complainant and attempt to fraudulent divert funds to Respondent, the Panel concludes that Complainant has established the second element of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy proscribes the following non-exhaustive circumstances as evidence of bad faith registration and use of the disputed domain name: i. Circumstances indicating that Respondent has registered or Respondent has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to Complainant who is the owner of the trademark to a competitor of that Complainant, for valuable consideration in excess of Respondent’s documented out of pocket costs directly related to the disputed domain name; or ii. Respondent has registered the disputed domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or iii. Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or iv. By using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location. UDRP panels have categorically held that registration and use of a domain name for illegal activity - including impersonation, passing off, and other types of fraud - is manifestly considered evidence of bad faith. WIPO Overview 3.0 , section 3.4 . See also GEA Group Aktiengesellschaft v. J. D.,WIPO Case No. D2014-0357 (concluding that Respondent’s use of the disputed domain name to disrupt the Complainant’s business by using it to impersonate the Complainant for commercial gain was evidence of respondent’s bad faith registration and use of the disputed domain). Wrongful use of others' trademarks to defraud payments from unsuspecting and unwary people is considered abusive registration and use of the disputed domain name under the Policy.See CareerBuilder, LLC v. Stephen Baker, WIPO Case No. D2005-0251; The Boots Company, PLC v. The programmer adviser, WIPO Case No. D2009-1383. See e.g. WSI Holdings Ltd. v. WSI House,WIPO Case No. D2004-1089 (“Respondent appears to be engaged in ‘phishing’ for mistaken potential employees of the Complainant … Respondent (1) has adopted a confusingly similar domain name, (2) it has used the trade dress of the Complainant’s website, and (3) it has sought to attract users to its site by creating confusion between its site and the Complainant’s. It has clearly engaged in activity which fulfils the bad faith requirements of Paragraph 4(b)(iv) of the Policy.”) See also Go Daddy Operating Company, LLC v. Wu Yanmei, WIPO Case No. D2015-0177 (emails sent by the respondent from domain names using the complainant's trademark in an attempt to obtain complainant's customer information was held to be use of the disputed domain name for a phishing scheme and consequently bad faith under the Policy); AB Electrolux v. Piotr Pardo,WIPO Case No. D2017-0368 (engaging in fraudulent email phishing activities through unauthorized use of a trademark for obtaining data or deriving information is construed as bad faith under the Policy). The act of “typosquatting” or registering a domain name that is a common misspelling of a mark in which a party has rights has often been recognized as per se evidence of bad faith registration. WIPO Overview, section 3.2.1 (“Particular circumstances UDRP panels take into account in assessing whether the respondent’s registration of a domain name is in bad faith include: (i) the nature of the domain name (e.g., a typo of a widely known mark …”). See also Paragon Gifts, Inc. v. Domain.Contact,WIPO Case No. D2004-0107 (citing National Association of Professional Baseball Leagues, d/b/a Minor League Baseball v. Zuccarini,WIPO Case No. D2002-1011); ESPN, Inc. v. XC2,WIPO Case No. D2005-0444 (finding that the practice of “typosquatting”, of itself, is evidence of the bad faith registration of a domain name). The Panel concurs with this approach. It is evident that Respondent registered and used the typosquatted disputed domain name in furtherance of an illegal scheme to impersonate Complainant and fraudulently divert customers payments to Respondent. Thus, the Panel easily infers Respondent's bad faith based on the fact that the Respondent is trying to impersonate Complainant to unwary customers who do not notice the extra letter “s” added in the disputed domain name to Complainant NEWMAN’S OWN trademark or Finally, prior WIPO panels agree that the use of false registration data in connection with a disputed domain name further supports a finding of bad faith registration and use. See e.g. Action Instruments, Inc. v. Technology Associates,WIPO Case No. D2003-0024 (“Providing false contact information violates paragraph 2 of the Policy, which requires a registrant to represent that the statements it ‘made in [its] Registration Agreement are complete and accurate'. Maintaining that false contact information in the WHOIS records (which can easily be updated at any time) after registration constitutes bad faith use of the domain name because it prevents a putative complainant from identifying the registrant and investigating the legitimacy of the registration.”); Royal Bank of Scotland Group v. Stealth Commerce,WIPO Case No. D2002-0155; Home Director, Inc. v. HomeDirector,WIPO Case No. D2000-0111 (April 11, 2000). Here, no evidence exists in the record that would controvert Complainant’s logical conclusion that the name and point of contact information provided by Respondent, namely “Game Boy”, are bogus and designed to frustrate enforcement efforts and obfuscate Respondent’s true identity. In view of Respondent’s impersonation of Complainant and attempts to passing itself off as Complainant in furtherance of an illegal scheme to defraud Complainant’s customers, Respondent’s typosquatting on Complainant’s trademark, and Respondent’s use of fraudulent registration datathe Panel concludes that Complainant has established 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 Phillip V. Marano
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. Preliminary Procedural Issues
Sole Panelist
Date: January 25, 2021
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