The Complainant is Charter Fund, Inc., d/b/a Charter School Growth Fund, United States of America (“United States”), represented by Quarles & Brady LLP, United States.
The Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland / Jackson Mike, Right Consultation, United States.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 30, 2021. On September 1, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 1, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 2, 2021, 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 amendment to the Complaint on September 2, 2021.
The Center verified that the Complaint together with the amendment to 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 September 3, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 23, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 27, 2021.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on September 29, 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 BackgroundThe Complainant is a nonprofit corporation organized under the laws of the State of Delaware, United States, and headquartered in Broomfield, Colorado, United States. Since 2005, the Complainant has collected donations and provided multi-year, philanthropic investments in public charter schools throughout the United States, funding nearly 1,200 schools that serve over 530,000 students in 31 states. The Complainant operates a website at “www.chartergrowthfund.org”.
The Complainant holds United States Registration Number 5206650 (registered May 16, 2017) for CHARTER SCHOOL GROWTH FUND as a standard character trademark.
The WhoIs indicates that the Domain Name was registered on June 24, 2021 in the name of a domain privacy service. The Registrar identified the underlying registrant as the “Jackson Mike”, listing the organization as “Right Consultation”, (hereafter referred to as the “Respondent”).
The Domain Name differs by one letter from the domain name used for the Complainant’s website and email domain name. It does not appear that the Domain Name has ever been used for an active website. Rather, on the same day that the Domain Name was registered, June 24, 2021, it was used as an email domain to send a fraudulent email to one of the Complainant’s clients, using the name of one of the Complainant’s employees who had sent a similar email during the previous month. The fraudulent email displayed the Complainant’s logo and correct address and domain name in the signature block, mimicking the appearance of the earlier legitimate email. The message requested that the client change the payment details so that payments to the Complainant would be routed instead to the Respondent’s bank account.
The attempted fraud was detected and reported. The Domain Name resolves to an error message.
5. Parties’ Contentions A. ComplainantThe Complainant asserts that the Domain Name is confusingly similar to its registered trademark, which the Respondent has no permission to use and in which it has no rights or legitimate interests. The Complainant argues that the Domain Name was registered and used in bad faith:
“The fraudulent scheme carried out by Respondent is quintessential evidence of bad faith. Section 2.13 of the WIPO Overview 3.0 [WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)] provides that evidence of illegitimate uses such as passing off and phishing are ‘manifestly considered evidence of bad faith.’
Respondent used the Domain Name to pass itself off as Complainant in an attempt to trick Complainant’s client into sending Respondent a payment intended for Complainant.
Respondent obtained the Domain Name primarily for the purpose of disrupting the Complainant’s operations.
Respondent has intentionally attempted to attract, for commercial gain, Complainant’s client to divert payments to Respondent, by creating a likelihood of confusion with the Complainant’s Mark.
Respondent’s use of confusingly similar Domain Name that constitute typosquatting of Complainant’s Mark is in bad faith.
Respondent hid behind a privacy service while carrying out its illegitimate activities, which compounds the bad faith in this case.”
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsParagraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(i) the 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 domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules, “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
A. Identical or Confusingly SimilarThe first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the domain name”. See WIPO Overview 3.0, section 1.7. The Complainant holds a trademark registration for CHARTER SCHOOL GROWTH FUND as a standard character mark, and the Domain Name incorporates the Complainant’s trademark with the exception of the term “school” and adding a letter “s” to the word “growth”. Despite such differences, the Complainant’s trademark remains recognizable in the Domain Name and may be considered confusingly similar for the purposes of the Policy. Furthermore, while not a replacement as such for the typical side-by-side comparison, the broader case context here, including the use of the Domain Name to impersonate the Complainant and send fraudulent emails, affirms a finding of confusing similarity. Id. As usual, the generic Top-Level Domain (“gTLD”) “.com” is disregarded as a standard registration requirement. See id. section 1.11.2.
Accordingly, the Panel finds that the Domain Name is confusingly similar to the Complainant’s registered mark for purposes of the Policy, paragraph 4(a)(i) and concludes that the Complainant has established the first element of the Complaint.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy gives non-exclusive examples of instances in which a respondent may establish rights or legitimate interests in a domain name, by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s 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) that the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is 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.
Because a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1.
The Complainant has established trademark rights, a lack of permissive use, and fraudulent use by the Respondent. The Respondent has not come forward to assert rights or legitimate interests in the Domain Name. The Panel finds that there are no evident rights or legitimate interests on the part of the Respondent and that the Complainant prevails on the second element of the Complaint.
C. Registered and Used in Bad FaithThe Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following (in which “you” refers to the registrant of the domain name):
“(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
These examples are not entirely apposite, because the Respondent is not known to be a competitor and has not established a rival online site. However, the examples in paragraph 4(b) are not exhaustive, and the record demonstrates that the Respondent made a deliberate attempt, on the day the Domain Name was registered, to use it for a carefully crafted fraudulent email in an effort to divert payments from a client of the Complainant. This conduct is clearly illegitimate and represents bad faith within the meaning of the Policy. See WIPO Overview 3.0, section 3.4 (“Panels have held that the use of a domain name for purposes other than to host a website may constitute bad faith. Such purposes include sending email, phishing, identity theft, or malware distribution.”). In cases such as this one, the misappropriated trademark is used in email rather than a website to falsely suggest source or affiliation.
The Panel finds that the Respondent clearly registered and used the Domain Name in bad faith and that the third element of the Complaint has been established.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name,
W. Scott Blackmer
Sole Panelist
Date: October 13, 2021