The Complainant is Lumos Networks, Inc., United States of America (“United States”), represented by Woods Rogers PLC, United States.
The Respondent is Nakeshia Antwinette Barnes, 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 January 6, 2021. On January 7, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 8, 2021, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on January 12, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 1, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 2, 2021. The Center appointed Lynda M. Braun as the sole panelist in this matter on February 8, 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 The Complainant is a provider of telecommunication services, namely, providing fiber optic network services for television, telephone and Internet, for home and business. The Complainant is the owner of the LUMOS NETWORKS trademark (hereinafter the “LUMOS NETWORKS Mark”), United States Trademark Registration No. 4,087,322, registered on January 17, 2012, in International class 38. The LUMOS NETWORKS Mark was initially owned by nTelos Network Inc. and was assigned to the Complainant on November 11, 2017. The Complainant hosts an official company website at “www.lumosnetworks.com”, where customers can locate information about the Complainant’s services. The Complainant’s domain name is identical to the Disputed Domain Name, save for the hyphen in the Disputed Domain Name. The Disputed Domain Name was registered on November 12, 2020. According to the Complainant, the Respondent purportedly used the Disputed Domain Name in an email phishing scheme to impersonate members of the Complainant’s Human Resources Department. In the alleged fraudulent scheme, the Respondent, acting as the Complainant, requested unsuspecting job seekers to provide confidential financial information to the Respondent. 5. Parties’ Contentions A. Complainant The following are the Complainant’s contentions: - the Disputed Domain Name is confusingly similar to the Complainant’s trademark; - the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and - 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 to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)(i-iii)): (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 has been 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 identical or confusingly similar to the LUMOS NETWORKS Mark as set forth below. The Complainant has established rights in the LUMOS NETWORKS Mark based on its years of use as well as its registered trademark for the LUMOS NETWORKS Mark in the United States. The general consensus is that “registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive”. 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 LUMOS NETWORKS Mark. The Disputed Domain Name consists of the LUMOS NETWORKS Mark in its entirety along with a hyphen between the terms “lumos” and “networks”, followed by the generic Top-Level Domain (“gTLD”) “.com”. When a disputed domain name incorporates the entirety of a trademark, the disputed domain name will generally be considered confusingly similar to that mark for purposes of UDRP standing. See the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. It is well established that a disputed domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy despite the addition of a hyphen. The presence or absence of punctuation marks such as hyphens cannot on their own avoid a finding of confusing similarity. See Six Continents Hotels, Inc. v. Helen Siew,WIPO Case No. D2004-0656 (citing Six Continents Hotels, Inc. v. Georgetown Inc.,WIPO Case No. D2003-0214); Fort Knox National Company v. Ekaterina Phillipova,WIPO Case No. D2004-0281. Further, 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, and WIPO Overview 3.0, section 1.11. Accordingly, the Panel finds that 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 is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name at issue. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1. In this case, the Panel finds that the Complainant has made out a prima facie case. In particular, the Respondent has not submitted any arguments or evidence to rebut the Complainant’s prima facie case and there is no evidence in the record that the Respondent is in any way associated with the Complainant. Moreover, the Complainant has not authorized, licensed or otherwise permitted the Respondent to use its LUMOS NETWORKS Mark and the name of the Respondent has no apparent connection to the Disputed Domain Name that would suggest that it is related to a trademark or trade name in which the Respondent has rights. Furthermore, the Respondent allegedly used the Disputed Domain Name to perpetrate a fraudulent phishing scheme on unwitting individuals seeking a position with the Complainant, and the Respondent requested confidential financial information from those individuals. The Respondent has not disputed the Complainant’s contentions, or responded to this matter in any way. “Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent.” WIPO Overview 3.0 , section 2.13.1 . The Panel finds that nothing on the record before it would support a finding that the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name. In addition, the composition of the Disputed Domain Name, comprising the entirety of the LUMOS NETWORKS Mark, carries a high risk of implied affiliation and cannot constitute fair use here, as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. See WIPO Overview 3.0 , section 2.5. Accordingly, the Panel finds that 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 pursuant to paragraph 4(b) of the Policy. The circumstances of this case including claims that the Disputed Domain Name has been used to impersonate the Complainant and perpetrate a phishing scheme directed at individuals seeking a position with the Complainant, the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good faith use, and the implausibility of any good faith use to which the domain name may be put, support an inference of bad faith. Moreover, the registration of a domain name that reproduces a trademark in its entirety (being identical or confusingly similar to such trademark) by an individual or entity that has no relationship to that mark, without any reasonable explanation on the motives for the registration, may be sufficient in certain circumstances to infer an 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 LUMOS NETWORKS Mark. Accordingly, the Panel finds that 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
Sole Panelist
Date: February 22, 2021
Full & Egal Universal Law Academy