Complainant is Impact Networking LLC, United States of America (“United States”), represented by Matt Cohen, United States.
Respondent is The Rock, United States.
2. The Domain and RegistrarThe disputed domain
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 5, 2021. On November 8, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 9, 2021, 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 1, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 21, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 11, 2022.
The Center appointed Robert A. Badgley as the sole panelist in this matter on January 19, 2022. 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.
On January 25, 2022, the Panel issued Procedural Order No. 1, which stated as follows:
“Complainant shall submit to the Center, on or before February 4, 2022, the following information and documentation:
Complainant alleges that it holds a registered trademark with the United States Patent and Trademark Office (‘USPTO’), and makes reference to USPTO Serial No. 75889921. The trademark corresponding to that Serial Number, USPTO Reg. No. 2,425,077, appears to have been canceled on November 12, 2021, one week after the Complaint in this proceeding was filed. Why was this trademark canceled?
1. When did Complainant become aware that USPTO Reg. No. 2,425,077 was canceled?
2. Why was the Complaint in this proceeding not amended to withdraw reference to the (now canceled) trademark Reg. No. 2,425,077 (Serial No. 75889921), or at least to mention its cancellation? In this regard, the Panel notes that Complainant sent a number of email communications to the Center, after the trademark cancellation had occurred, asking about the status of the Complaint, without ever disclosing that the Complaint now apparently contained an untrue assertion.
3. The Complaint contains no reference to any common law (i.e., unregistered) trademark rights associated with IMPACT NETWORKING. If Complainant maintains that it enjoys common law trademark rights, provide evidence of same.
4. The Complaint contains allegations of fraud by Respondent, but provides no documentary proof thereof. Provide such proof.
If Complainant submits any of the foregoing information, Respondent shall have until February 11, 2022 to reply to such submission.
The Panel reserves the right to raise further questions and make additional requests.”
Complainant missed the deadline for responding to Procedural Order No. 1, and instead asked for an extension. In its discretion, the Panel granted an extension. On February 16, 2022, Complainant provided a response to Procedural Order No. 1. The Respondent has not submitted any reply.
4. Factual BackgroundComplainant states that the Domain Name “is similar to our full Company name: Impact Networking, LLC, which operates at ImpactNetworking.com. ImpactNetworking.com has been in use for 20+ years (since 1999) and is an established entity”. Complainant is the owner of the domain name
Complainant held a trademark with the United States Patent and Trademark Office (“USPTO”) for the mark IMPACT NETWORKING (USPTO Reg. No. 2,425,077, registered on January 30, 2001). On November 12, 2021, one week after the Complaint in this proceeding was filed, this trademark registration was canceled. According to Complainant, the registration was canceled because Complainant failed to take steps to renew the registration, and Complainant is now taking steps to rectify the situation.
It appears that, notwithstanding the current lack of registered trademark rights, Complainant has continuously used IMPACT MARKETING as a source identifier for its services, as a current view of Complainant’s website makes clear.
The Domain Name was registered on July 12, 2021. The Domain Name does not resolve to an active website. Rather, it appears that the only use to which the Domain Name has been put is to send a fraudulent email to one of Complainant’s business partners. On July 15, 2021, three days after the Domain Name was registered, one of Complainant’s business partners notified Complainant that it had received a number of emails from a suspicious source, in which the sender was trying to solicit purchase orders using Complainant’s account number.
5. Parties’ Contentions A. ComplainantComplainant contends that it has established all three elements required under the Policy for a transfer of the Domain Name.
B. RespondentRespondent did not reply to Complainant’s contentions.
6. Discussion and FindingsParagraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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.
The Panel concludes that Complainant has rights in the famous trademark IMPACT NETWORKING, through registration and use demonstrated in the record. The Panel finds the Domain Name to be confusingly similar to that mark. The mark is entirely reproduced in the Domain Name, and the additional letters “LLC” (short for “Limited Liability Company”) do not prevent a finding of confusing similarity between the mark and the Domain Name.
Complainant has established Policy paragraph 4(a)(i).
B. Rights or Legitimate InterestsPursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are 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.
The Panel concludes that Respondent lacks rights or legitimate interests in the Domain Name. Respondent has not come forward to articulate or prove some bona fide reason for registering the Domain Name. It is undisputed that Respondent has no authority from Complainant to register the Domain Name. It is also clear from the record presented here that Respondent was trying to impersonate Complainant for commercial gain by sending a fraudulent email to one of Complainant’s business partners. Such conduct is clearly illegitimate.
Complainant has established Policy paragraph 4(a)(ii).
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the 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.
The Panel concludes that Respondent has registered and used the Domain Name in bad faith. It is apparent, based on this undisputed record, that Respondent had Complainant’s trademark in mind when registering the Domain Name. Within three days of registering the Domain Name, Respondent was sending fraudulent emails to a business partner of Complainant, trying to solicit purchase orders by impersonating Complainant. This conduct constitutes bad faith within the meaning of the above-quoted Policy paragraph 4(b)(iv).
Complainant has established Policy paragraph 4(a)(iii).
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
Robert A. Badgley
Sole Panelist
Date: February 24, 2022