WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Skygen USA, LLC v. Whois Privacy Protection Foundation / Meagan Sadlovsky
Case No. D2019-2932
1. The Parties
Complainant is Skygen USA, LLC, United States of America (“United States”), represented by Ronald (RJ) Book, United States.
Respondent is Whois Privacy Protection Foundation, Netherlands / Meagan Sadlovsky, United States.
2. The Domain Name and Registrar
The disputed domain name <skygenusa-llc.com> (the “Domain Name”) is registered with Hosting Concepts B.V. d/b/a Openprovider (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 27, 2019. On November 29, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 2, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on December 4, 2019 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 December 4, 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 Respondent of the Complaint, and the proceedings commenced on December 5, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 25, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 27, 2019.
The Center appointed Ingrīda Kariņa-Bērziņa as the sole panelist in this matter on January 6, 2020. 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
Complainant is a United States company offering an online platform related to employee insurance benefits. It is the proprietor of several trademark registrations containing the verbal elements SKYGEN USA (the Mark), including United States trademark registration No. 4769767 for SKYGEN USA (word mark) registered on July 7, 3015 for services in classes 36 and 45.
Complainant operates its primary website at “skygenusa.com.”
The Domain Name was registered using a privacy service on November 7, 2019. It resolves to an inactive website and it was used for fraudulent purposes.
5. Parties’ Contentions
Complainant’s submissions may be summarized as follows:
Under the first element, Complainant states that it is the proprietor of a registered United States trademark for SKYGEN USA, and that the Domain Name is confusingly similar thereto.
Under the second element, Complainant states that it is the sole holder of rights to SKYGEN USA, LLC, which is the legal entity doing business in the United States. Respondent has no legitimate interests in respect of the Domain Name. Complainant has attempted to resolve the matter by contacting the Registrar several times by e-mail and telephone but has not received any response.
Under the third element, Complainant states that Respondent used the Domain Name to solicit banking information from one of Complainant’s clients via e-mail, misrepresenting themselves as executives of Complainant’s company to obtain this information under false pretenses.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Given the facts in the case file and Respondent’s failure to file a response, the Panel accepts as true the contentions in the Complaint. Nevertheless, paragraph 4(a) of the UDRP requires Complainant to make out all three of the following:
(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) Respondent has registered and is using the Domain Name in bad faith.
A. Identical or Confusingly Similar
Complainant has provided evidence establishing that it has trademark rights in the Mark through registrations in jurisdictions including the United States, thereby satisfying the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1.
In comparing Complainant’s Mark with the Domain Name, the Panel finds that the Domain Name is confusingly similar with the Mark, since the Domain Name contains the Mark in its entirety. The addition of the hyphen and the descriptive term “LLC” do not prevent a finding of confusing similarity as Complainant’s Mark is clearly recognizable within the Domain Name.
It is the well-established view of UDRP panels that the addition of the generic Top-Level Domain (“gTLD”) to the Domain Name does not prevent the Domain Name from being confusingly similar to Complainant’s trademark (see WIPO Overview 3.0, section 1.11.1, and cases cited thereunder).
Accordingly, the Panel finds that Complainant has established the first element under paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The Panel finds that the evidence submitted by Complainant establishes a prima facie case that Respondent has no rights or legitimate interests in the Domain Name. The Panel finds that there is no evidence that Respondent is commonly known by the Domain Name or is using the Mark with permission of Complainant. Rather, the case materials contain Complainant’s assertion that such permission does not exist. Complainant’s rights in Mark predate the registration of the Domain Name by several years.
The circumstances and evidence indicate that Respondent has no rights or legitimate interests in the Domain Name. The nature of the Domain Name, adding a hyphen and the term “LLC” to Complainant’s Mark, cannot constitute fair use because it effectively impersonates or suggests sponsorship or endorsement by Complainant, the trademark owner (see WIPO Overview 3.0, section 2.5.1). Further, the record contains evidence that Respondent used the Domain Name to impersonate Complainant and solicit bank information from third parties. Such actions can never confer rights or legitimate interests on the Respondent (see WIPO Overview 3.0, section 2.13.1).
Respondent, in failing to file a response, has not submitted any evidence or arguments demonstrating such rights or legitimate interests, nor has it rebutted any of Complainant’s contentions. There is no information available that would support a finding of a fair use of the Domain Name.
Accordingly, the Panel finds that Complainant has established the second element under paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The Panel finds that the evidence in the record demonstrates that Respondent chose the Domain Name deliberately for the purpose of impersonating or attempting to create an association with Complainant. Complainant’s rights in the Marks predate the registration of the Domain Name. The Mark is distinctive in respect of the services for which they are registered and used. The Domain Name is nearly identical to Complainant’s Mark. The Panel finds that such a registration creates a presumption of bad faith. See WIPO Overview 3.0, section 3.1.4.
Having established that the Domain Name was registered in bad faith, the Panel next turns to the issue of whether Respondent had engaged in bad faith use of the Domain Name. While Respondent did not host trademark-abusive content on a website, the evidence on record demonstrates that Respondent used the Domain Name to send deceptive emails impersonating Complainant to obtain banking information from a client of Complainant. Such conduct constitutes bad faith use of the Domain Name. See WIPO Overview 3.0, section 3.4. Further, Respondent has failed to file any response or provide any evidence of actual or contemplated good-faith use and Respondent concealed its identity through use of a privacy service.
In the view of the Panel, such circumstances, taken together, clearly indicate that Respondent registered and used the Domain Name in bad faith. The Panel finds that Complainant has established the third element under paragraph 4(a) 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 Name, <skygenusa-llc.com>, be transferred to Complainant.
Date: January 16, 2020