ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION California Science Center Foundation v. Doug chimpky Case No. D2024-3592 1. The Parties Complainant is California Science Center Foundation, United States of America (“United States” or “U.S.”), represented by Gibson, Dunn & Crutcher, LLP, United States. Respondent is Doug chimpky, United States. 2. The Domain Name and Registrar The disputed domain name is registered with GoDaddy.com, LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 5, 2024. On September 6, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 9, 2024, 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 (Registration Private, Domains By Proxy, LLC) and contact information in the Complaint. The Center sent an email communication to Complainant on September 10, 2024, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on September 16, 2024. The Center verified that the Complaint together with the amended 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 September 19, 2024. In accordance with the Rules, paragraph 5(a), the due date for Response was October 9, 2024. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 15, 2024.
page 2 The Center appointed Scott R. Austin, Phillip V. Marano, and Timothy D. Casey as panelists in this matter on October 29, 2024. The Panel finds that it was properly constituted. Each member of 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 following facts appear from the Complaint (as amended) and its attached Annexes, which have not been contested by Respondent, and provides evidence sufficient to support: Located in Los Angeles, California, United States, Complainant is a nonprofit organization associated with the California state institution formerly known as the California Museum of Science and Industry, renamed the “California Science Center” in 1998. Since that time Complainant in association with the California Science Center has provided a range of museum, educational and interactive exhibit support services under the service mark CALIFORNIASCIENCENTER (the “CALIFORNIASCIENCENTER Mark”). Complainant asserts its Mark merges the words “science” and “center” in the facility’s name “to create a portmanteau that reflects the California Science Center’s mission”. Complainant owns the following incontestable registration for the CALIFORNIASCIENCENTER Mark for its museum, educational and science exhibit support services: - United States Registration No. 4,108,390, CALIFORNIASCIENCENTER (words plus design), registered on March 6, 2012, for a range of museum, science education and science exhibit support services in International Class 41, claiming a first use date at least as early as February 7, 1998. Complainant shows the above registration was renewed on July 2, 2021. Complainant also shows it incorporates the California Science Center name and its CALIFORNIASCIENCENTER Mark into its official domain name , registered on November 7, 2001, that Complainant asserts it has continuously operated since that date to access its official website at “www.californiasciencecenter.org” (the “Official CALIFORNIASCIENCENTER Mark Website”) used to promote the California Science Center’s exhibits and educational programs, and to interface with potential partners and benefactors. Complainant claims it also uses its official domain name for its employees’ email accounts which use the format […]@californiasciencecenter.org. Respondent registered the disputed domain name on July 8, 2024. As of the date of the filing of the Complaint, the disputed domain name resolved to an inactive website displaying the words “Powered by GoDaddy Websites+ Marketing. Create your free website now.” and “Launching Soon” and inviting users to subscribe to get updates. Complainant also shows that Respondent has used the disputed domain name to pass itself off as Complainant in furtherance of an illegitimate email phishing scheme, where Respondent has sent emails fraudulently purporting to be from prominent representatives within Complainant’s organization to obtain confidential information and, ultimately, a transfer of funds from a current partner of Complainant. 5. Parties’ Contentions A. Complainant Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. Notably, Complainant contends, inter alia, that the disputed domain name incorporates the entirety of the CALIFORNIASCIENCENTER Mark and the California Science Center name, and is identical to
page 3 Complainant’s official domain name, californiasciencecenter.org, except for the addition of the letter “s”. Even though Respondent’s configuration of the disputed domain name adds the trailing letter “s” to the Mark (a common, obvious, and intentional misspelling of the trademark which amounts to “typosquatting”), the disputed domain name is confusingly similar to Complainant’s CALIFORNIASCIENCENTER Mark in which Complainant has established trademark rights. Complainant further contends that Respondent has no rights or legitimate interests in the disputed domain name because Respondent has no relationship with Complainant, the California Science Center or the State of California to support authorized use of Complainant’s Mark, name or official domain name through license or affiliation. Complainant also shows that Respondent’s purported publishing business is located in and focused on Oregon, not California. Complainant next contends that non-use by Respondent of the disputed domain name through an inactive “Launching Soon” website supports a finding of no rights or legitimate interests in the disputed domain name. Complainant also contends Respondent’s use of the disputed domain name to engage in illegal activity by passing itself off as Complainant using fraudulent emails to further an illegitimate phishing scheme can never confer rights or legitimate interests on a respondent. Complainant contends that the disputed domain name was registered and is used in bad faith because Respondent, an unaffiliated individual registered a domain name confusingly similar to Complainant’s well -known CALIFORNIASCIENCENTER Mark, its California Science Center name and identical to Complainant’s official domain name but for an added trailing “s”, which can by itself create a presumption of bad faith. Complainant shows that its official domain name , which is used to access its Official CALIFORNIASCIENCENTER Mark Website, and its CALIFORNIASCIENCENTER Mark were both registered years (twenty-three and twelve, respectively) before Respondent registered the disputed domain name. Complainant also shows its Mark is well known through evidence of extensive media coverage and that the California Science Center had over 1.79 million visitors in 2023. Complainant further contends bad faith registration based on Respondent’s configuration of the disputed domain name to impersonate Complainant and through its intentional typosquatting of the CALIFORNIASCIENCENTER Mark which shows targeting and knowledge of Complainant and its museum and educational services. In support of bad faith use Complainant notably contends that Respondent’s intentional misspelling of Complainant’s Mark, name and official domain name incorporated in its entirety in the disputed domain name to provide Respondent a commercial benefit is bad faith use, and Complainant’s evidence on the record shows that Respondent has used the disputed domain name to engage in and further an illegitimate phishing scheme with evidence of Respondent’s impersonation of key officials within Complainant’s organization to send fraudulent invoices and follow up demands for payment to an unsuspecting partner. Complainant contends that Respondent’s masking of its identity through the use of a privacy service also serves as an indication of bad faith. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable. The onus is on Complainant to make out its case and it is apparent from the terms of the Policy that Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer or cancel a domain name. As the proceedings are administrative, the standard of proof under the Policy is often expressed as the “balance of probabilities” or “preponderance of the evidence” standard. Under this standard, an asserting party needs to establish that it is more likely
page 4 than not that the claimed fact is true. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.2. Thus, for Complainant to succeed it must prove within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that: 1. The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; 2. Respondent has no rights or legitimate interests in respect of the disputed domain name; and 3. The disputed domain name has been registered and is being used in bad faith. The Panel finds that Complainant has met its burden in all three elements of the Policy and will deal with each of these elements in more detail below. A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between Complainant’s trademark and the disputed domain name. WIPO Overview 3.0, section 1.7. To prove this element, Complainant must first establish that there is a trademark or service mark in which it has rights. Ownership of a nationally registered trademark constitutes prima facie evidence that the complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant claims trademark rights in the CALIFORNIASCIENCENTER Mark for museum, educational and exhibit support services in the United States through its trademark registration for the CALIFORNIASCIENCENTER Mark referenced above in section 4, for which sufficient evidence has been submitted in the form of an electronic copy of its valid and subsisting certificate of registration with the United States Patent and Trademark Office in the name of Complainant. Complainant has demonstrated, therefore, that it has rights in the CALIFORNIASCIENCENTER Mark, See Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen, WIPO Case No. D2014-0657; see also Janus International Holding Co. v. Rademacher, WIPO Case No. D2002-0201. With Complainant’s rights in the CALIFORNIASCIENCENTER Mark established, the remaining question under the first element of the Policy is whether the disputed domain name is identical or confusingly similar to Complainant’s CALIFORNIASCIENCENTER Mark. A side-by-side comparison between the disputed domain name and Complainant’s mark shows the disputed domain name is confusingly similar to Complainant’s CALIFORNIASCIENCENTER Mark. Complainant’s CALIFORNIASCIENCENTER Mark is incorporated in its entirety in the disputed domain name except for Respondent using the full unmerged versions of each of the terms comprising the “CALIFORNIA SCIENCE CENTER” name, but also adding a final “s”, followed by the generic Top-Level Domain (“gTLD”) “.com”. Complainant’s CALIFORNIASCIENCENTER Mark remains recognizable within the disputed domain name and adding a final “s” Complainant contends this not only does not prevent a finding of confusing similarity, but also represents Respondent’s intentional misspelling of Complainant’s Mark and official domain name, configuring the disputed domain name in a manner easily overlooked or treated as a “typo” by unsuspecting consumers. See, e.g., Debevoise & Plimpton LLP v. Keyword Marketing, Inc. / Web Advertising, Corp., WIPO Case No. D2007-1679. Prior UDRP panels have held “in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.” See, L’Oréal, Lancôme Parfums et Beauté & Cie v. Jack Yang, WIPO Case No. D2011-1627; see also, Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a/ For Sale, WIPO Case No. D2000-0662. Prior UDRP panels have also found the gTLD, being viewed as a standard registration requirement, may typically be disregarded
page 5 under the paragraph 4(a)(i) analysis. See WIPO Overview 3.0, section 1.11.1; see also L’Oréal v. Tina Smith, WIPO Case No. D2013-0820. Prior UDRP panels have also held that “a domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered to be confusingly similar to the relevant mark for purposes of the first element.” WIPO Overview 3.0, section 1.9; see, e.g., Ropes & Gray LLP v. Gary Aaronson, WIPO Case No. D2023-0287; Fenwick & West LLP v. Contact Privacy Inc. Customer 7151571251 / EL B, BigSaver LLC, WIPO Case No. D2022-1544. The Panel finds that the disputed domain name as configured, including the addition of the letter “s” does not prevent a finding of confusing similarity with Complainant’s CALIFORNIASCIENCENTER Mark which is recognizable within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. Based on the available record, the Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Under the second element of the Policy, a complainant is first required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. If a complainant makes that showing, the burden of production on this element shifts to the respondent to come forward with relevant evidence of such rights or legitimate interests in the domain name. If the respondent fails to come forward with such evidence, a complainant is generally deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. See also, The American Automobile Association, Inc. v. aaaaautoinsurance.com Privacy--Protect.org, aaa-netaccess.com Privacy--Protect.org, aaanetacceess.com Privacy--Protect.org, Isaac Goldstein, WIPO Case No. D2011-2069. Respondent is in default and thus has not attempted to come forward to show any rights or legitimate interests in the disputed domain name under the Policy at paragraph 4(c). Complainant has established, prima facie, that Respondent lacks rights or legitimate interests in the disputed domain name. First, it is clear from the record submitted that Respondent is not a licensee of or affiliated with Complainant, nor has Complainant consented to or granted any authorization for Respondent to make use of Complainant’s CALIFORNIASCIENCENTER Mark in a domain name or otherwise. Complainant contends Respondent has no relationship with Complainant, the California Science Center or even the State of California to support authorized use of Complainant’s Mark. Complainant has also shown that Respondent is not commonly known by the disputed domain name because Respondent was listed in the WhoIs record submitted with the initial Complaint as “Registration Private, Domains By Proxy, LLC”, and thereafter revealed by the concerned Registrar to be Doug chimpky, substituted as Respondent in the amended Complaint. Neither the initial nor substituted Respondent bears any resemblance to the disputed domain name whatsoever. It is generally regarded as prima facie evidence of no rights or legitimate interests if a complainant shows that the disputed domain name is identical or confusingly similar to a complainant’s trademark, that the respondent is not commonly known by the disputed domain name, and that a complainant has not authorized the respondent to use its mark (or an expression which is confusingly similar to its mark), whether in the disputed domain name or otherwise. See, Roust Trading Limited v. AMG LLC, WIPO Case No. D2007-1857; see also Marriott International, Inc. v. Thomas, Burstein and Miller, WIPO Case No. D2000-0610 (no rights or legitimate interests when there is no evidence that respondent is commonly known by the domain name). Complainant also contends that since the disputed domain name resolves to an inactive website, Respondent has not used the disputed domain name in connection with the bona fide offering of goods or services.
page 6 Use of the disputed domain name to resolve to a webpage with no content other than the header “California Science Centers”, words “Powered by GoDaddy Websites + Marketing. Create your free website now.” and “Launching Soon” and an invitation for Internet users to subscribe for updates in the circumstances of this case does not represent a bona fide use of the disputed domain name. Complainant has also provided detailed explicit evidence in the Annexes to its Complaint showing Respondent’s use of the disputed domain name in connection with email correspondence from servers configured based on the disputed domain name to perpetrate a fraudulent scheme sending emails impersonating several of Complainant’s top executives to one of Complainant’s support organizations, which attached a fake invoice, and subsequent emails attached fake wire transfer instructions for payment including the CALIFORNIASCIENCENTER Mark and logo, as well as Complainant’s 501(c)3 tax identification number, so that payments intended for Complainant would instead be made to Respondent. Prior UDRP panels have held that the use of a domain name for such illegal activity (e.g., phishing, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent. See, WIPO Overview 3.0, section 2.13; see also, Archer-Daniels-Midland Company v. Hei Ze Shang Zi, WIPO Case No. D2021-1865; Apax Partners LLP v. WhoisGuard Protected, WhoisGuard, Inc. / GregTapper, WIPO Case No. D2020-0414; Springer Nature Limited v. Registration Private, Domains By Proxy, LLC / Collections Springer Nature, WIPO Case No. D2020-0955. Furthermore, prior UDRP panels have held that domain names that are identical to a complainant’s well known trademark carry a high risk of implied affiliation, and that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner. See WIPO Overview 3.0, section 2.5.1. In this case, the Panel has found in section 6.A above that the disputed domain name is confusingly similar to Complainant’s CALIFORNIASCIENCENTER Mark and further notes it is essentially identical to Complainant’s official domain name, which shows the Respondent’s intention of taking an unfair advantage due to the risk of Internet user confusion. In view of the above, the Panel finds that Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not submitted any argument or evidence to rebut Complainant’s prima facie case. The Panel determines, therefore, that Respondent does not have rights or legitimate interests in the disputed domain name and that Complainant has successfully met its burden under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Complainant contends that because Respondent has registered a domain name that is confusingly similar to Complainant’s CALIFORNIASCIENCENTER Mark, as well as essentially identical to its official domain name, as found in sections 6.A and 6.B above, it is implausible to believe that Respondent did not have actual knowledge of Complainant’s mark when it registered its confusingly similar disputed domain name. UDRP panels have consistently found that the mere registration of a disputed domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a widely known trademark by an unaffiliated entity can by itself create a presumption of bad faith. See, WIPO Overview 3.0, section 3.1.4. The Panel also notes here additional factors under section 3.1.4 and its cases from which the Panel may infer bad faith registration: (i) Respondent’s clearly intentional addition of the letter “s” in the disputed domain name to create a subterfuge version of both Complainant’s CALIFORNIASCIENCENTER Mark and its official domain name to confuse consumers searching for Complainant, as well as email recipients in Respondent’s fraudulent phishing scheme discussed in section 6.B; (ii) Complainant’s Official CALIFORNIASCIENCENTER Mark Website for Complainant’s museum, science educational and science exhibit support services is accessed at “www.californiasciencecenter.org”, a domain name string strikingly similar to the disputed domain name, which suggests Respondent targeted
page 7 Complainant when it picked the disputed domain name, adding only a letter “s” to create an almost identical domain name, with the sole intention of deliberately causing confusion through Respondent’s use of the disputed domain name ; (iii) the lack of Respondent’s rights to or legitimate interests in the disputed domain name registered to engage in per se illegal activity for commercial gain; and (iv) Respondent’s masking of its identity through the use of a privacy registration service, Domains By Proxy, LLC, to perpetuate fraud and prevent itself from being identified, further supports a finding of Respondent’s bad faith registration and use of the disputed domain name. Prior UDRP panels have held that the provision of false contact information underlying the privacy service to mask a respondent’s identity can also serve “as an indication of bad faith.” WIPO Overview 3.0, section 3.6; Morrison & Foerster LLP v. Vero Nica, Latvec P.C., WIPO Case No. D2022-3381. Given the circumstances of this case, such a showing is sufficient to establish bad faith registration. See, WIPO Overview 3.0, section 3.2.1. Bad faith use is also clear from Respondent’s illegitimate conduct engaging in impersonation and passing off as Complainant to further a fraudulent email scheme as discussed in detail above, sending fraudulent emails under the name of Complainant and its trusted executives suggesting an affiliation with Complainant to redirect payments by Complainant’s unsuspecting support organization from Complainant’s account to Respondent’s account for Respondent’s commercial gain. See, WIPO Overview 3.0, section 3.1.4.; see also, Apax Partners LLP v. WhoisGuard Protected, WhoisGuard, Inc. / Greg Tapper, supra; and Virgin Enterprises Limited v. Vincent Battista, WIPO Case No. D2018-1416. For these reasons, the Panel finds bad faith registration and use, and Complainant has met its burden under paragraph 4(a)(iii) of the Policy. 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, be transferred to Complainant. /Scott R. Austin/ Scott R. Austin Presiding Panelist /Phillip V. Marano/ Phillip V. Marano Panelist /Timothy D. Casey/ Timothy D. Casey Panelist Date: November 11, 2024
Full & Egal Universal Law Academy