WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Klaviyo, Inc. v. WhoisGuard, Inc. / Ariana Brook, AB; Barndi Sam; David Plant, Davidp; Harvey Martin; Katelina Kate, Kitkate; Vova Morgan, Vweb
Case No. D2019-0968
1. The Parties
The Complainant is Klaviyo, Inc., United States of America (“United States”), represented by The Law Office of Matthew M. Yospin, United States.
The Respondents are WhoisGuard, Inc., Panama, Ariana Brook, AB, United States (the “First Respondent”); Barndi Sam, United States (the “Second Respondent”); David Plant, Davidp, United States (the “Third Respondent”); Harvey Martin, United Kingdom (the “Fourth Respondent”); Katelina Kate, Kitkate, Saint Pierre and Miquelon (the “Fifth Respondent”); Vova Morgan, Vweb, Russian Federation (the “Sixth Respondent”) (collectively the “Respondents”).
2. The Domain Names and Registrar
The disputed domain names <kiaviyo.com>, <kiaviyo.email>, <kiaviyo.support>, <klaviyo.marketing>, <klaviyo.support>, <klaviyo.tools> (“Domain Names”) are registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 26, 2019 concerning the Domain Names and <klaviyo.email> domain name. On April 29, 2019, the Center transmitted by email to the Registrars NameCheap, Inc. and Crazy Domains FZ-LLC a request for registrar verification in connection with the Domain Names and <klaviyo.email> domain name. On April 29, 2019, the Registrar NameCheap, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. On April 30, 2019, the Registrar Crazy Domains FZ-LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the <klaviyo.email> domain name which differed from the named respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 30, 2019 providing the registrant and contact information disclosed by the Registrars, and inviting the Complainant to submit an amendment to the Complaint. The registrant of <klaviyo.email> domain name sent an informal email communication to the Center on May 1, 2019. The Complainant filed an amended Complaint on May 6, 2019.
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 the Respondents of the Complaint, and the proceedings commenced on May 9, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 29, 2019. The Respondents did not submit any response. Accordingly, the Center notified the Parties that would proceed to panel appointment. On June 3, 2019, the Complainant informed that it has reached a settlement with the registrant of <klaviyo.email> domain name. The proceedings were suspended on June 5, 2019 for purposes of settlement implementation. On June 19, 2019, the Center notified the dismissal of the proceeding in respect of the <klaviyo.email> domain name and reinstituted the proceedings for the Domain Names.
The Center appointed Nicholas Smith as the sole panelist in this matter on June 27, 2019. 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 Background
The Complainant is a United States entity that operates in the field of marketing and in particular email and social media marketing.
The Complainant is the owner of numerous trademark registrations for KLAVIYO (the “KLAVIYO Mark”), the earliest of which is a United States trademark registered on November 21, 2017 (registration number 5338472) for marketing services in classes 35 and 42, with a first use in commerce date of March 29, 2012.
The Domain Name <kiaviyo.com> was registered on April 10, 2019 by the Fourth Respondent, using a privacy service. The Domain Name <kiaviyo.email> was registered on April 17, 2019 by the Sixth Respondent using a privacy service. The Domain Name <kiaviyo.support> was registered on April 14, 2019 by the Second Respondent using a privacy service. The Domain Name <klaviyo.marketing> was registered on April 18, 2019 by the First Respondent using a privacy service. The Domain Name <klaviyo.support> was registered on April 6, 2019 by the Third Respondent using a privacy service. The Domain Name <klaviyo.tools> was registered on April 22, 2019 by the Fifth Respondent using a privacy service.
The Domain Name <kiaviyo.com> is inactive. The Domain Name <kiaviyo.email> is inactive. The Domain Name <kiaviyo.support> resolves to a site (“the Respondent’s Website”) that is has been flagged as a “phishing site” and reproduces the KLAVIYO Mark and a logo used by the Complainant on its website. This Respondent’s Website invites visitors to enter email and password details. The Domain Name <klaviyo.marketing> resolves to a site that is has been flagged as a “phishing site” however no active site appears to exist. The Domain Name <klaviyo.support> is inactive. The Domain Name <klaviyo.tools> resolves to a site that is has been flagged as a “phishing site” however no active site appears to exist.
The Complaint annexes emails sent from email addresses from the Domain Names <klaviyo.support>, <klaviyo.marketing>, and <kiaviyo.email> in which the Respondents purports to be the Complainant and encourages recipients to visit websites or click on links in order to provide their details.
5. Parties’ Contentions
The Complainant makes the following contentions:
(i) that the Domain Names are identical or confusingly similar to the Complainant’s KLAYIYO Mark;
(ii) that the Respondents have no rights nor any legitimate interests in respect of the Domain Names; and
(iii) that the Domain Names have been registered and are being used in bad faith.
The Complainant is the owner of the KLAVIYO Mark, having registered the KLAVIYO Mark in numerous jurisdictions, including the United States. The Domain Names each either reproduce the KLAVIYO Mark in its entirety (along with a Top-Level Domain) or merely replace the letter “l” in the KLAVIYO Mark with the letter “i”, neither of which distinguish any of the Domain Names from the KLAVIYO Mark.
There are no rights or legitimate interests held by the Respondents in respect of the Domain Names. The Respondents are not commonly known as the Domain Names nor do the Respondents have any authorization from the Complainant to register the Domain Names. The Respondents are not making a legitimate noncommercial fair use of the Domain Names. Rather the Respondents are using the Domain Names for the purposes of creating phishing emails targeting the Complainant’s customers and employees, such use not being bona fide.
The Domain Names were registered and are being used in bad faith. The Domain Names are being used for websites and emails that impersonate the Complainant for the purpose of misleading actual or potential customers, and/or by attempting to phish or spearphish user names, passwords, and/or other personal information from the Complainant’s customers and/or employees. Such conduct amounts to registration and use of the Domain Names in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Preliminary Matter: Consolidation of Respondents
The named registrant of each of the Domain Names is a different individual or entity, as identified in section 4 above. UDRP proceedings are normally brought against a single respondent. However, paragraph 10(e) of the Rules states that in certain circumstances a panel may consolidate multiple domain name disputes. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2, states:
“Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario.
UDRP Panels have considered a range of factors, typically present in some combination, as useful to determining whether such consolidation is appropriate, such as similarities in or relevant aspects of (i) the registrants’ identity(ies) including pseudonyms, (ii) the registrants’ contact information including email address(es), postal address(es), or phone number(s), including any pattern of irregularities, (iii) relevant IP addresses, name servers, or webhost(s), (iv) the content or layout of websites corresponding to the disputed domain names, (v) the nature of the marks at issue (e.g., where a registrant targets a specific sector), (vi) any naming patterns in the disputed domain names (e.g., <mark-country> or <mark-goods>), (vii) the relevant language/scripts of the disputed domain names particularly where they are the same as the mark(s) at issue, (viii) any changes by the respondent relating to any of the above items following communications regarding the disputed domain name(s), (ix) any evidence of respondent affiliation with respect to the ability to control the disputed domain name(s), (x) any (prior) pattern of similar respondent behaviour, or (xi) other arguments made by the complainant and/or disclosures by the respondent(s).”
Based on the information before it, the Panel is prepared to allow the consolidation of the proceedings against the named registrants on the basis that the Domain Names are under common control. The Domain Names were registered with the same Registrar using the same privacy service within the same two week period. The contact details of the Respondents reveal certain similarities including in respect of email and regular mail addresses, with each of the contact email addresses using the same (unusual) email service provider and each of the identities and address details of the named registrants being obviously fake. There is an obvious similarity between the naming patterns of each of the Domain Names, being the replication of the KLAVIYO Mark (or the KLAVIYO Mark with the “l” replaced with an “i”) along with a descriptive generic Top-Level Domain (“gTLD”). Finally at there is some evidence (be it emails, the content of the Respondent’s Website or a warning when attempting to access the website), that at least five out of the six Domain Names are involved in phishing of some sort.
Finally, the Panel notes that none of the Respondents has denied any association with the other or objected to the consolidation of the proceedings requested by the Complainant. The Panel finds that, on the balance of probabilities, the Domain Names are subject to common control and that the consolidation would be fair and equitable to all the Parties. As such, for the purposes of the decision going forward, the Panel will refer to the named registrants of the Domain Names as a single Respondent.
6.2. Substantive Matters
A. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and each Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the KLAVIYO Mark, having registrations for KLAVIYO as a trademark in the United States as well as in various other jurisdictions.
Disregarding the gTLD as a necessary element of a domain name, the Domain Names <klaviyo.support>, <klaviyo.marketing>, and <klaviyo.tools> are identical to the KLAVIYO Mark. The Domain Names <kiaviyo.com>, <kiaviyo.email>, and <kiaviyo.support> are confusingly similar to the KLAVIYO Mark since they reproduce the KLAVIYO mark in its entity, replacing only the “l” with the “i” which is a minor change that many individuals, when viewing those Domain Names, would miss. The Panel finds that each of the Domain Names is either identical or confusingly similar to the Complainant’s KLAVIYO Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain names. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain names.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you 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 (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 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 Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Names or to seek the registration of any domain name incorporating the KLAVIYO Mark or a mark similar to the KLAVIYO Mark. There is no evidence that the Respondent is commonly known by any of the Domain Names or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Names in connection with a legitimate noncommercial use.
Rather it appears from the evidence submitted by the Complainant that the Respondent is using the Domain Names as part of a broader scheme to send emails and operate websites passing itself off as the Complainant for the purposes of obtaining account information to “phish” the Complainant’s consumers or employees. Such conduct is fraudulent and is not a bona fide offering of goods or services.
The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Names. The Respondent has had the opportunity to put on evidence of its rights or legitimate interests, including submissions as to why its conduct amounts to a right or legitimate interest in the Domain Names under the Policy. In the absence of such a response the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) The respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) The respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location (Policy, paragraph 4(b)).
The Panel finds that the Respondent was aware of the Complainant and its reputation in the KLAVIYO Mark at the time the Domain Names were registered. The Respondent’s Website reproduces the Complainant’s KLAVIYO Mark and logo. The Respondent has also used a number of the Domain Names for emails purporting to be the Complainant directly targeting the Complainant, its employees and/or customers. The Respondent does not provide, nor is it apparent to the Panel, any reason why the Domain Names were registered other than by reference to the Complainant. The registration of the Domain Names in awareness of the KLAVIYO Mark and in the absence of rights or legitimate interests amounts under these circumstances to registration in bad faith.
The Respondent is using five of the Domain Names to send spoof emails and operate websites seeking to mislead recipients as to the identity of the sender or owner of the website for its own commercial gain. Such conduct is deceptive, illegal, and in previous UDRP decisions has been found to be evidence of registration and use in bad faith, see The Coca-Cola Company v. Marcus Steiner, WIPO Case No. D2012-1804. The Panel finds that the Respondent is using the Domain Names in bad faith. The fact that the Domain Names <kiaviyo.com>, <kiaviyo.email> and <kiaviyo.support> do not resolve to active websites does not prevent a finding of bad faith.
Accordingly, the Panel finds that the Respondent has registered and used the Domain Names in bad faith under paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, <kiaviyo.com>, <kiaviyo.email>, <kiaviyo.support>, <klaviyo.marketing>, <klaviyo.support>, and <klaviyo.tools> be transferred to the Complainant.
In its Complaint the Complainant also requests that the Registrar NameCheap, Inc. cease registering any domain names identical or confusingly similar to the KLAVIYO Mark. The Panel has no power to make any such order.
Date: July 4, 2019