The Complainant is Day & Zimmermann, Inc., United States of America (“United States”), represented by Caesar Rivise, PC, United States.
The Respondent is Contact Privacy Inc. Customer 12410536882, Canada / Name Redacted.1
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 14, 2021. On October 18, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 18, 2021, 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 October 25, 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 October 28, 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 November 1, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 21, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 23, 2021.
The Center appointed Lynda M. Braun as the sole panelist in this matter on December 10, 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 the parent of its well-known subsidiary company “Yoh”. The Complainant submits that for more than 60 years, the Complainant has been using the names “Yoh” and “Yoh Staffing” in connection with professional employment recruiting, hiring, and placement and has acquired both distinctiveness and goodwill associated with those names in connection with the services offered by the Complainant’s extensive advertising and marketing of those services.
The Complainant is the owner of the pending service mark YOH, United States Trademark Serial No. 97,001,044 in International Class 35, filed with the United States Patent and Trademark Office (“USPTO”) on August 30, 2021. The pending application claims that the date of first use was as early as January 1946. The Complainant also has demonstrated evidence of common law trademark rights given that the Complainant has been using the trademark in connection with its professional employment recruiting, hiring, and placement services for over 60 years (hereinafter collectively referred to as the “YOH Mark”).
Finally, the Complainant registered the domain name
The Disputed Domain Name was registered on June 30, 2021. The Disputed Domain Name resolves to an inactive landing page with no content. The Respondent used the Disputed Domain Name to create false email addresses to contact individuals through applications submitted by job applicants on a well-known employment website, where the positions were posted.
On or about June 30, 2021, the Respondent, using an email associated with the Disputed Domain Name (for example, “[...]@yohstaffing.org”), sought to impersonate the Complainant to fraudulently gather the personal and confidential information of unsuspecting third-party job applicants. The job applicants were contacted by an individual purporting to be a senior staff member of the Complainant. Specifically, the Respondent attempted to obtain the contacted individuals’ government-issued identification cards with the intention of using that information for phishing purposes.
5. Parties’ Contentions A. ComplainantThe following are the Complainant’s contentions:
- the Complainant has common law trademark rights in the YOH Mark;
- the Complainant has a pending trademark with the USPTO for the YOH Mark;
- the Disputed Domain Name is confusingly similar to the Complainant’s YOH Mark;
- 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 as part of a phishing scheme in which the Respondent impersonated an employee of the Complainant so that the Respondent could obtain sensitive information from unsuspecting job applicants of the Complainant; and
- 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. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsIn order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraphs 4(a)):
(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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 SimilarThe first issue here is whether the Complainant has protectable rights in the YOH Mark since the Complainant does not own a registered trademark, but rather a common law trademark, for the YOH Mark.
In the Panel’s view, paragraph 4(a)(i) of the Policy refers merely to a “trademark or service mark” in which the complainant has rights and does not expressly limit the application of the Policy to a registered trademark or service mark. Therefore, the fact that in this case the Complainant does not have a registered trademark or service mark for the YOH Mark does not preclude a finding that it has established trademark or service mark rights in that name. See Imperial College v. Christophe Dessimoz,WIPO Case No. D2004-0322. The Panel concludes that common law trademark and service mark rights exist when a party demonstrates that there is sufficient goodwill and reputation in a name – and therefore acquired distinctiveness – to establish sufficient association of the name with the party itself. See id.
The Complainant claims to have common law rights in the YOH Mark since as early as 1946, and has provided evidence to support such claims including screen captures of the Complainant’s company website making prominent use of the YOH Mark. Furthermore, the Panel takes note that the term “yoh” has no ordinary or dictionary meaning, and the fraudulent use of the Disputed Domain Name shows the Respondent’s deliberate intent to target the source identifying nature of the YOH Mark in order to perpetrate fraud due to its confusing similarity with the YOH Mark. See Greenspring Associates, Inc. v. Lisa Knowles, Victoria capital pty,WIPO Case No. D2019-0265.
The Panel finds that the Complainant has established common law rights in the YOH Mark based on its over 60 years of use, considerable goodwill in the trademark, use of the trademark in connection with the services offered by extensively advertising and marketing those services, and the prominent use of the YOH Mark on its official website. In light of the above, the Panel accepts that the Complainant has provided adequate grounds for a finding that it holds acquired distinctiveness and significant goodwill to have established common law trademark rights in the YOH Mark. Further, it is well established that “[u]se of a mark in commerce and marketing, including displaying the mark prominently on a company website, is evidence of common law trademark ownership [and] the UDRP recognizes and protects common law trademarks.” See BlackBerry Limited v. Bryan Fan,WIPO Case No. D2015-0464.
The second issue is whether the Disputed Domain Name is identical or confusingly similar to the YOH Mark. The Disputed Domain Name consists of the YOH Mark followed by the dictionary or descriptive term “staffing”, and then followed by the generic Top-Level Domain (“gTLD”) “.org”. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy despite the addition of a dictionary or descriptive term. See Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo,WIPO Case No. D2011-0795; see also Hoffmann-La Roche, Inc. v. Wei-Chun Hsia,WIPO Case No. D2008-0923. As stated in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”.
Finally, the addition of a gTLD such as “.org” 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. Thus, the Panel concludes that the Disputed Domain Name is confusingly similar to the Complainant’s YOH Mark.
Accordingly, the Panel finds that the first element of paragraph 4(a) of the Policy has been met by the Complainants.
B. Rights or Legitimate InterestsUnder 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 YOH Mark. 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. There is also no evidence that the Respondent is commonly known by the Disputed Domain Name or by any name similar to it nor has the Respondent made any demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services.
Furthermore, the Respondent is using the Disputed Domain Name for the purpose of perpetrating a fraudulent phishing scheme on an unwitting job applicant of the Complainant. 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. Given the phishing scheme that the Respondent operated by reconfiguring the Disputed Domain Name to impersonate one of the Complainant’s senior employees, the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name.
Finally, the composition of the Disputed Domain Name, comprising the entirety of the YOH Mark and a term related to the Complainant’s area of business, carries a 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 FaithThis 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.
As described above, the Respondent used the Disputed Domain Name to impersonate an employee of the Complainant and perpetrate a phishing scheme directed against several of the Complainant’s job applicants, a strong indication of bad faith. The Respondent’s phishing scheme to send fraudulent emails purporting to come from the Complainant or the Complainant’s employee seeking sensitive personal and financial information from unsuspecting job applicants 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 YOH 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.
Moreover, “[p]anels 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 [….] Many such cases involve the respondent’s use of the domain name to send deceptive emails, e.g., to obtain sensitive or confidential personal information from prospective job applicants, or to solicit payment of fraudulent invoices by the complainant’s actual or prospective customers.” WIPO Overview 3.0, section 3.4. The sending of fraudulent emails and perpetrating a phishing scheme to obtain confidential information from prospective job applicants is precisely what occurred here.
Further, UDRP panels have found that email-based phishing schemes that use a complainant’s trademark in a 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.
Finally, 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 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 YOH Mark.
Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant.
7. DecisionFor 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: December 20, 2021
1 The 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 the 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 the 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 that 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. All references in this Decision to “Respondent” are references to the unknown underlying registrant of the Disputed Domain Name.