Complainant is Hertz Furniture Systems, LLC, United States of America (“United States”), represented by Weiss Arons LLP, United States.
Respondent is Richie Miles, 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 30, 2020. On December 30, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 31, 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 Complainant on January 2, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant did not amend the Complaint at that time. 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 January 8, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 28, 2021. On January 11, 2021, the Center received an email communication from Complainant requesting the amendment of the mutual jurisdiction clause and inserting the registrant and contact information disclosed by the Registrar. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 29, 2021. The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on February 4, 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 Complainant, Hertz Furniture LLC, is a wholesaler and retailer of furniture products that has been selling its products under the HERTZ FURNITURE trademark for over 50 years (“Complainant’s Mark” or “HERTZ FURNITURE Mark”). Complainant obtained United States registration number 5912031 for its HERTZ FURNITURE Mark on November 19, 2019. Complainant also owns the domain name The disputed domain name was registered on December 10, 2020. It was used in connection with at least one attempted phishing scam where the sender impersonated one of Complainant’s employees to send allegedly “updated” payment instructions to one of Complainant’s customers for the settlement of some outstanding invoices. 5. Parties’ Contentions A. Complainant Complainant argues that the disputed domain name is identical or confusingly similar to its HERTZ FURNITURE Mark because it essentially reproduces the HERTZ FURNITURE Mark identically and entirely but for the substitution of the letter “i” for the letter “l” in “furniture”. Complainant argues that the disputed domain name consists of an obvious misspelling of Complainant’s Mark that constitutes a clear cut case of typo squatting. Complainant also contends that Respondent has no rights or legitimate interests in or to the disputed domain name. According to Complainant, Respondent has never been commonly known by the disputed domain name, Complainant has not licensed Respondent the right to use Complainant’s Mark, and Respondent is not otherwise authorized to act on Complainant’s behalf. Furthermore, Complainant argues that Respondent’s use of the disputed domain name to perpetrate phishing fraud cannot be considered a bona fide offering of goods and services. Complainant also contends that the disputed domain name was registered and used in bad faith. Complainant argues that Respondent must have had actual knowledge of Complainant’s rights in the HERTZ FURNITURE Mark given the almost complete incorporation of the HERTZ FURNITURE Mark in the disputed domain name and Respondent’s attempt to impersonate one of Complainant’s employees to conduct a fraudulent scheme to redirect payments from Complainant’s customer for Respondent’s commercial gain. Moreover, Complainant asserts that Respondent’s bad faith conduct is manifestly shown in his use of the disputed domain name to perpetrate phishing fraud. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) 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. Furthermore, section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states: “Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding? Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) 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.” Thus, even though Respondent has failed to address Complainant’s contentions, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340. A. Identical or Confusingly Similar Ownership of a nationally registered trademark registration constitutes prima facie evidence that the complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant has provided evidence that it has rights in the HERTZ FURNITURE Mark through its United States trademark registration. With Complainant’s rights in the HERTZ FURNITURE Mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the Top-Level Domain (“TLD”) in which the domain name is registered) is identical or confusingly similar to Complainant’s Mark. Furthermore, panels have also found that the overall facts and circumstances of a case (including relevant website content or other use) may support a finding of confusing similarity, particularly where it appears that the respondent registered the domain name precisely because it believed that the domain name was confusingly similar to a mark held by the complainant. WIPO Overview 3.0, section 1.7. Here, Complainant’s HERTZ FURNITURE mark is almost fully incorporated in the disputed domain name. The substitution of the letter “i” for the letter “l” in does nothing to prevent a finding of confusing similarity under the first element. Furthermore, Complainant submitted evidence that Respondent registered the disputed domain name specifically because of its similarity to Complainant’s Mark in order to perpetrate fraud. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its trademark rights and showing that the disputed domain name is confusingly similar to Complainant’s HERTZ FURNITURE Mark. B. Rights or Legitimate Interests Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP. Paragraph 4(c) of the Policy lists the ways that the respondent may demonstrate rights or legitimate interests in the disputed domain name: (i) before any notice of the dispute, respondent’s use of, or demonstrable preparations to use, the disputed 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 (as an individual, business or other organization) has been commonly known by the disputed domain name, even if it has acquired no trade mark or service mark rights; or (iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue. Here, Complainant has alleged that Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not submitted any arguments or evidence to rebut Complainant’s contention that it has never authorized, licensed, or permitted Respondent to use the HERTZ FURNITURE Mark in any way. Complainant has also asserted that Respondent is not commonly known by the disputed domain name. As shown in evidence submitted by Complainant, the disputed domain name was used to impersonate an employee allegedly working for Complainant to perpetrate a fraudulent scheme to obtain payments from one of Complainant’s customers. These activities cannot be considered bona fide offerings of goods or services nor legitimate noncommercial or fair uses under the Policy. Indeed, the use of a domain name for illegal activity, including phishing and fraud, can never confer rights or legitimate interests on a respondent. See, e.g., Wikimedia Foundation, Inc. v. Nanci Nette, Name Management Group,WIPO Case No. D2018-0717; WIPO Overview 3.0, section 2.13.1. Respondent has failed to rebut Complainant’s allegations and evidence, and therefore, the Panel concludes that Respondent does not have rights or legitimate interests in the disputed domain name within the meaning of Policy paragraph 4(a)(ii). C. Registered and Used in Bad Faith In this case, bad faith can be found in the registration and use of the disputed domain name. Complainant provided evidence regarding its United States registration for the HERTZ FURNITURE mark and its widespread use of the mark which long predate Respondent’s registration of the disputed domain name. Complainant also provided evidence showing that Respondent was impersonating an employee allegedly working for Complainant to conduct a fraudulent scheme to extract payments from individuals. Therefore, Respondent was undoubtedly aware of Complainant and its rights in the HERTZ FURNITURE mark when he registered the disputed domain name. See WIPO Overview 3.0, section 3.2.1; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited,WIPO Case No. D2016-1973. Respondent’s registration and use of the disputed domain name not only clearly indicate full knowledge of Complainant’s HERTZ FURNITURE Mark, but also an attempt to misleadingly divert consumers for Respondent’s own commercial gain through its fraudulent activities. See Policy, paragraph 4(b)(iv). The use of the disputed domain name to conduct a fraudulent scheme to collect payments from Internet users via an email address impersonating an employee working for Complainant is the type of illegal activity that is manifestly considered evidence of bad faith under the Policy. See WIPO Overview 3.0, section 3.4; Wikimedia Foundation, Inc. v. Nanci Nette, Name Management Group, supra. For these reasons, this Panel finds that Respondent’s registration and use of the disputed domain name was in bad faith. 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 Brian J. Winterfeldt
Sole Panelist
Date: February 18, 2021
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