WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
TexTrail, Inc. v. Antonio Samuels
Case No. D2020-3443
1. The Parties
The Complainant is TexTrail, Inc., United States of America (“United States”), represented by Hovey Williams LLP, United States.
The Respondent is Antonio Samuels, United States.
2. The Domain Name and Registrar
The disputed domain name <textrail.org> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 16, 2020. On December 17, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 18, 2020, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the disputed domain name. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on December 18, 2020.
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 Respondent of the Complaint, and the proceedings commenced on December 22, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 11, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 12, 2020.
The Center appointed William F. Hamilton as the sole panelist in this matter on January 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 Background
The Complainant is a leading United States seller of trailer parts and accessories, with approximately 30 stores and approximately 8,000 distributors in the United States. The Complainant has been in business since January 1994.
The Complainant owns the following trademark registrations for the Mark TEXTRAIL (the “Mark”) and TEXTRAIL TRAILER PARTS.
- United States Patent and Trademark Office, Registration No. 3,989,369 for TEXTRAIL, effective July 5, 2011,
- United States Patent and Trademark Office, Registration Nos. 5,679,759 and 5,735,462 for TEXTRAIL TRAILER PARTS, effective February 19, 2019, and April 23, 2019, respectively.
The Complainant owns and operates the website at the domain name <textrail.com> to promote its products and services.
The Respondent registered the disputed domain name on February 3, 2020. The disputed domain name does not resolve to an active website.
5. Parties’ Contentions
The Complainant asserts the disputed domain name is confusingly similar to the Complainant’s Mark because the disputed domain name is composed entirely of the Complainant’s Mark plus the generic Top-Level Domain (“gTLD”) “.org”. The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name as the Respondent has never conducted any bona fide commercial business or activity utilizing the disputed domain name. The Complainant further asserts that the disputed domain name was registered and used in bad faith to enable a phishing scheme attempting to illegally divert payments from the Complainant’s customers to the Respondent.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds the disputed domain name is confusingly similar to the Complainant’s Mark. See section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The disputed domain name entirely adopts the Mark. The gTLD of the disputed domain name is not relevant to the analysis of confusing similarity. V&S Vin & Sprit AB v. Canal Prod Ltd., WIPO Case No. D2002-0437. Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; see section 1.11 of the WIPO Overview 3.0.
The Complainant has met its burden under paragraph 4(a)(i) of the Policy
B. Rights or Legitimate Interests
The Panel finds the Respondent has no rights or legitimate interests in the disputed domain name.
The Panel finds that the Complainant has specifically disavowed providing the Respondent with a license or permission to use the Mark. The Respondent has also provided evidence that the Respondent is using the disputed domain name in a fraudulent phishing scheme, thus making out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Chase Manhattan Corporation et al. v. John Whitely, WIPO Case No. D2000-0346. Such prima facie case having been put forward, the burden of production then shifted to the Respondent to rebut the Complainant’s assertion or to demonstrate bona fide use of the disputed domain name. Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; see section 2.1 of the WIPO Overview 3.0. The Respondent has failed to come forward with any evidence demonstrating any bona fide use of the disputed domain name.
The Complainant has met its burden under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel finds the disputed domain was registered and used in bad faith.
The Complaint’s Annexes demonstrate that the Respondent has utilized an email address associated with the disputed domain name to trick Complainant’s unsuspecting customers into directing to the Respondent payments intended for the Complainant. The Respondent’s fraudulent conduct demonstrates that the disputed domain name was registered and used in bad faith. L’ Oréal v. Cimpress Schweiz GmbH, WIPO Case No. DCO2017-0021; Syngenta Participations AG v. Simon Laidler / Who Is Agent, WhoIs Privacy Protection Service, Inc., WIPO Case No. D2014-1702; Starwood Hotels & Resorts Worldwide, Inc., Sheraton LLC, Sheraton International Inc. v. Isaac Isaac, WIPO Case No. D2011-1275; Accor v. SANGHO HEO / Contact Privacy Inc., WIPO Case No. D2014-1471; Accenture Global Services Limited v. Patel Holdings, WIPO Case No. D2016-0367; BHP Billiton Innovation Pty Ltd. v. Domains By Proxy LLC / Douglass Johnson, WIPO Case No. D2016-0364.
The Complainant has met its burden 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 disputed domain name <textrail.org> be transferred to the Complainant.
William F. Hamilton
Date: January 27, 2021