The Complainant is Niantic, Inc., United States of America (“United States”), represented by Fish & Richardson P.C., United States.
The Respondent is Privacy service provided by Withheld for Privacy ehf, Iceland / Redde reddy, 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 November 12, 2021. On November 15, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 15, 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 November 16, 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 November 16, 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 17, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 7, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 9, 2021.
The Center appointed Lynda M. Braun as the sole panelist in this matter on December 21, 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 company that is known for its immersive technologies, most notably augmented reality (“AR”). As a leader in the geospatial and AR community, the Complainant’s goods and services have been experienced by hundreds of millions of individuals. With the click of a download button, consumers in multiple countries can immediately experience the AR technology through the Complainant’s applications. Since the company’s founding, the Complainant has invested a considerable amount of time and resources into building cutting-edge AR products. As a result of the Complainant’s success in the AR industry, the NIANTIC trademark represents a significant business investment and substantial goodwill.
The Complainant owns the following United States trademarks: NIANTIC, United States Reg. No. 6,262,160, registered on February 2, 2021, with its first use in commerce at least as early as September 2015, in international classes 9 and 41; and NIANTIC LABS, United States Reg. No. 5,003,615, registered on July 19, 2016, with its first use in commerce at least as early as March 2016, in international classes 9 and 41.
The Complainant also owns additional trademark registrations for NIANTIC and NIANTIC-formative marks for the same or similar goods and services worldwide, including, but not limited to: NIANTIC, Canadian Reg. No. TMA988805, registered on January 18, 2018; and NIANTIC, European Union Reg. No. 015133581, registered on January 10, 2017.
All of the aforementioned trademarks will hereinafter be collectively referred to as the “NIANTIC Mark”.
The Complainant owns the domain name
The Disputed Domain Name was registered on September 19, 2021, and initially redirected to the Complainant’s official website. The Respondent used the Disputed Domain Name in furtherance of a phishing scheme whereby the Respondent reconfigured the Disputed Domain Name to impersonate the Complainant’s recruiters to deceive the recipients into believing that the phishing emails were legitimate. Specifically, the Respondent used the Disputed Domain Name to send fraudulent emails (for example, “[...]@niantic.careers”) through which the Respondent disguised itself as a recruiter of the Complainant to discuss candidacy and interviews with recent graduates for non-existent job opportunities.
When the Complainant discovered the phishing emails and learned that the Disputed Domain Name redirected to the Complainant’s official website, the Complainant contacted the Registrar. Soon thereafter, the Respondent’s content was removed from the website and as of the writing of this Decision, the Disputed Domain Name resolves to an inactive website with no substantive content that states, “This site can’t be reached. niantic.careers’s server IP address could not be found.”
5. Parties’ Contentions A. ComplainantThe following are the Complainant’s contentions:
- the Disputed Domain Name is confusingly similar to the Complainant’s NIANTIC 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.
- the Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(a) of the Policy.
The 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, paragraph 4(a)):
(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 SimilarThis 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 to the NIANTIC Mark.
It is uncontroverted that the Complainant has established rights in the NIANTIC Mark based on its years of use as well as its registered trademarks for the NIANTIC Mark in the United States and jurisdictions worldwide. 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”. See 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 rights in the NIANTIC Mark.
The Disputed Domain Name consists of the NIANTIC Mark in its entirety followed by the generic Top-Level Domain (“gTLD”) “.careers”. The addition of a gTLD such as “.careers” 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 of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11. Thus, the Disputed Domain Name is identical to the Complainant’s NIANTIC Mark.
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 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 NIANTIC Mark in the Disputed Domain Name. 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 service mark 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 was using the Disputed Domain Name for the purpose of perpetrating a fraudulent phishing scheme on unwitting job applicants of the Complainant. The Respondent has not disputed the Complainant’s contentions or responded to this matter in any way. “UDRP 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 the Complainant’s recruiters and obtain applicant’s confidential information, the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name.
Finally, the composition of the Disputed Domain Name, which is identical to the NIANTIC 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 2.5.1.
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.
First, as described above, the Respondent used the Disputed Domain Name to impersonate the Complainant’s recruiters and perpetrate a phishing scheme directed against 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’s recruiters 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 NIANTIC 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 deceive prospective job applicants and to obtain confidential and sensitive information 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.
Second, based on the circumstances here, the Panel concludes that the Respondent registered and is using the Disputed Domain Name in bad faith in an attempt to attract Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s NIANTIC Mark as to the source, sponsorship, affiliation or endorsement of the Disputed Domain Name’s resolving webpage. The Respondent’s registration and use of the Disputed Domain Name indicate that such registration and use have been done for the specific purpose of trading on the name and reputation of the Complainant and its NIANTIC Mark. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”,
WIPO Case No. D2000-0847 (“[t]he only plausible explanation for Respondent’s actions appears to be an intentional effort to trade upon the fame of Complainant’s name and mark for commercial gain”).
Third, 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 suggestive of opportunistic bad faith. See Ebay Inc. v. Wangming,
WIPO Case No. D2006-1107; and Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,
WIPO Case No. D2000-0163.
Finally, Panel finds that the Respondent knew that the Complainant had rights in the NIANTIC Mark when registering the Disputed Domain Name. The Respondent used the Disputed Domain Name to redirect to the Complainant’s official website, making clear that the Respondent was well aware of the Complainant and its NIANTIC Mark, thus demonstrating bad faith. Thus, it strains credulity to believe that the Respondent had not known of the Complainant or its NIANTIC Mark when registering the Disputed Domain Name. See Myer Stores Limited v. Mr. David John Singh,
WIPO Case No. D2001-0763 (respondent’s knowledge of the registration and use of a trademark prior to registering the domain name constitutes bad faith). The use of the Disputed Domain Name that incorporated the NIANTIC Mark in its entirety to reconfigure email addresses through which the Respondent disguised itself as a recruiter of the Complainant to perpetrate a phishing scheme, was symbolic of bad faith registration and use. In sum, the Panel finds that the Respondent had actual knowledge of the Complainant’s NIANTIC Mark when registering the Disputed Domain Name.
Accordingly, the Panel finds that 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 29, 2021