WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
1661, Inc. v. George Brian
Case No. D2021-1382
1. The Parties
Complainant is 1661, Inc., United States of America (“United States” or “U.S.”), represented by Charles A. LeGrand, Esq., United States of America.
Respondent is George Brian, United States.
2. The Domain Name and Registrar
The disputed domain name <goatgroups.com> (the “Domain Name”) is registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 5, 2021. On May 5, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 5, 2021, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 Respondent of the Complaint, and the proceedings commenced on May 7, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 27, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 28, 2021.
The Center appointed John C. McElwaine as the sole panelist in this matter on June 9, 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
Complainant has its global corporate headquarters in Los Angeles, California. Complainant operates a group of companies and brands known collectively as “Goat Group.” Complainant’s corporate website is located at <goatgroup.com>. Goat Group maintains platforms for the sale and resale of authentic sneakers, apparel and accessories.
Relevant to this proceeding, Complainant is the owner of U.S. Trademark Reg. No. 4908318 for the mark GOAT, registered on March 1, 2016, and International Trademark Registration Number 1564806 for the mark GOAT, registered on September 18, 2020 (the “GOAT Mark”). Complainant also owns numerous domain names that include the GOAT trademark. <goat.com>, <goatgroup.com>, and <goat.cn> are some of the domains Complainant owns that are associated with the GOAT Mark.
On January 29, 2021, Respondent registered the Domain Name. The Domain Name does not resolve to an active website but it was used for a fraudulent email scheme.
5. Parties’ Contentions
Complainant owns registrations and pending applications in jurisdictions around the world for its GOAT trademark, which include, but are not limited to, the following: GOAT (U.S. Reg. No. 4908318) in Class 9, used on commerce since April 1, 2015 and registered on March 1, 2016; GOAT (U.S. Reg. No. 5020477) in Class 38, used on commerce since April 1, 2015 and registered on August 16, 2016; GOAT (U.S. Reg. No. 5020478) in Class 42, used on commerce since April 1, 2015 and registered on August 16, 2016; GOAT (U.S. Reg. No. 5357448) in Class 35, used on commerce since April 1, 2015 and registered on December 19, 2017; GOAT (International Reg. No. 1564806) in Classes 9, 35, 38 & 42, registered on September 18, 2020. And GOAT (European Union Trade Mark App. No. 18391961) in Classes 9, 25, 35, 38, 42; applied for on February 8, 2021 (claiming September 9, 2020 priority date). See Annex 7 of the Complaint. Collectively, these marks are referred to herein as the GOAT Mark.
Complainant asserts that it has promoted the GOAT Mark globally and has widespread recognition in the United States and worldwide since 2015. In addition, Complainant asserts that the GOAT app and social media further amplify GOAT’s reach to consumers. Complainant alleges that it has over 3.5 million followers on Instagram and over 100,000 likes on Facebook. Complainant claims that it maintains the leading platforms for the sale and resale of authentic sneakers, apparel, and accessories.
With respect to the first element of the Policy, Complainant asserts that the Domain Name is confusingly similar to Complainant’s GOAT Mark. Complainant alleges that it owns registrations and pending applications in jurisdictions around the world for its GOAT Mark. In addition, Complainant owns multiple domain names that include the GOAT Mark, which were listed in Annex 8 of the Complaint. Complainant points out that the only difference between Complainant’s GOAT Mark and the <goatgroups.com> Domain Name is the addition of the descriptive term “groups” and the addition of the “.com” generic Top-Level Domain (“gTLD”) extension. According to Complainant, the addition of the descriptive term “groups” after the GOAT Mark in the Domain Name does not dispel confusion because Complainant not only owns the GOAT Mark, but also does business as Goat Group.
With respect to the second element of the Policy, Complainant contends that Respondent is not associated or affiliated with Goat Group and Respondent has never been authorized by Complainant to use the GOAT Mark in any manner. Complainant notes that Respondent registered the Domain Name well after Complainant had registered and/or used the GOAT Mark and had established extensive goodwill. Complainant alleges that Respondent willfully adopted Complainant’s GOAT Mark within the Domain Name in an attempt to confuse and defraud prospective job seekers. The Domain Name also does not resolve to a website, rather Complainant contends it is being used by Respondent to impersonate Complainant and its personnel in attempts to gain personal and financial information of unwitting job seekers in connection with fraudulent offers of employment. Specifically, Complaint alleges that Respondent has used the Domain Name in combination with fake email addresses, LinkedIn posts, and communications via the job website Indeed.com. Complainant further alleges that email addresses associated with the Domain Name have been fraudulently used in connection with names of actual employees from the Human Resources Department of Goat Group to deceive job seekers that they are being recruited for design, photography and other jobs. Representative examples of such communications reported to Complainant, redacted where appropriate to protect personal information, were attached to the Complaint at Annex 13. Accordingly, the Domain Name is not used in connection with any bona fide sale of goods or services.
With respect to the third element of the Policy, Complainant contends that Respondent’s use of the Domain Name in connection with a scheme to defraud prospective job seekers for Respondent’s commercial gain is acting in opposition to Complainant and disrupting Complainant’s business. In addition, Complainant contends that given Complainant’s well-publicized use of its GOAT Mark and the name “Goat Group”, and Respondent’s impersonation of Goat Group personnel and use of fake Goat Group letterhead, that Respondent registered the Domain Name with prior knowledge of Complainant and Complainant’s GOAT Mark.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Even though Respondent has defaulted, paragraph 4 of the Policy requires that, to succeed in this UDRP proceeding, Complainant must still prove its assertions with evidence demonstrating that:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which complainant has rights;
(ii) Respondent has no rights of legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
Because of Respondent’s default, the Panel may accept as true the factual allegations stated within the Complaint and may draw appropriate inferences therefrom. See St. Tropez Acquisition Co. Limited. v. AnonymousSpeech LLC and Global House Inc., WIPO Case No. D2009-1889; Bjorn Kassoe Andersen v. Direction International, WIPO Case No. D2007-0605; see also paragraph 5(f) of the Rules (“If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint”). Having considered the Complaint, the Policy, the Rules, the Supplemental Rules and applicable principles of law, the Panel’s findings on each of the above-cited elements are as follows.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires Complainant to show that the Domain Name is identical or confusingly similar to a trademark or service mark in which complainant has rights. Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2. On this point, Complainant has provided evidence that it is the owner of a United States trademark registration for the mark GOAT registered on March 1, 2016.
As discussed in section 1.7 of the WIPO Overview 3.0, in cases where a domain name incorporates the entirety of a trademark, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing. Similarly, UDRP panels have held that the mere inclusion of an additional term to Complainant’s GOAT Mark does not remove the likelihood of confusion between the GOAT Mark and the Domain Name. See BNP Paribas v. Ronan Laster, WIPO Case No. D2017-2167 (“Regarding the Domain Name <group-bnbparibas.com>, the Panel finds that the addition of the generic term “group” to the BNP Paribas trademarks is not sufficient to exclude confusing similarity.”). Here, the addition of the word “groups” does not prevent a finding of confusing similarity between the GOAT Mark and the Domain Name. This is even more compelling given the fact that Complainant make unregistered use of the Goat Group trade name and owns the domain name <goatgroup.com>.
The Panel finds that Complainant has met its burden of showing that the Domain Name is confusingly similar to Complainant’s GOAT Mark in which Complainant has trademark rights.
B. Rights or Legitimate Interests
Under the Policy paragraph 4(a)(ii), Complainant has the burden of establishing that Respondent has no rights or legitimate interests in the Domain Name. Section 2.1 of the WIPO Overview 3.0 states that a complainant need only make a prima facie showing on this element, then the burden of production shifts to Respondent to present evidence that it does have some rights or legitimate interests in the Domain Name. If Respondent cannot do so, Complainant has satisfied its burden under Policy paragraph 4(a)(ii). See Banca Monte dei Paschi di Siena S.p.A. v. WhoisGuard ProtectedGuard, Inc./Paolo Dionisi, WIPO Case No. D2021-0752.
Complainant contends that Respondent is not commonly known by the Domain Name, that Complainant has not licensed, authorized or permitted Respondent to register the Domain Name, and that Respondent has not demonstrated any attempt to make legitimate use of the Domain Name. Respondent has not denied any of the Complainant’s assertions and has not put forth any evidence showing that it has a right or legitimate interest in the Domain Name.
Further, the Panel observes that the Domain Name has been used to send emails in an attempt to impersonate employees of Complainant for fraudulent purposes. Specifically, Complainant provided evidence of several emails regarding job offers that Respondent made using the Domain Name and which contain identities of real GOAT employees. Using the Domain Name, Respondent contacted people via email to work for GOAT and provided a fraudulent employment contract that displays a logo similar to GOAT’s logo. In addition, the email addresses Respondent uses to make contact with these people contain the names of people who actually work for GOAT.
The Panel finds that the purpose of registering the Domain Name was to engage in fraud and possibly an email scam or a phishing scheme, none of which is a bona fide offering of goods or services. WIPO Overview 3.0, section 2.13.1 (“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.”); see also, CMA CGM v. Diana Smith, WIPO Case No. D2015-1774 (finding that the respondent had no rights or legitimate interests in the disputed domain name holding, “such phishing scam cannot be considered a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Domain Name”.) The undisputed evidence of impersonation, deception, and fraud nullifies any possible basis for the acquisition of rights or legitimate interests by Respondent. See Afton Chemical Corporation v. Meche Kings, WIPO Case No. D2019-1082.
Accordingly, Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests and Respondent has failed to come forward to rebut that showing. As provided by paragraph 14 of the Rules, the Panel may draw such inferences from Respondent’s default as it considers appropriate. Therefore, the Panel is entitled to accept that Complainant has established the second element of the Policy; Respondent has no rights or legitimate interests in respect of the Domain Name, pursuant to the Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, Complainant must show that Respondent registered and is using the Domain Name in bad faith. Paragraph 4(b) of the Policy sets out a non-exhaustive list of factors constituting bad faith registration. Complainant contends that Respondent’s use of the Domain Name in connection with a scheme to defraud prospective job seekers for Respondent’s commercial gain is acting in opposition to Complainant and disrupting Complainant’s business under paragraph 4(b)(iii) of the Policy.
Bad faith registration can also be found where respondents “knew or should have known” of complainant’s trademark rights and nevertheless registered a domain name in which he had no rights or legitimate interests. See Accor v. Kristen Hoerl, WIPO Case No. D2007-1722. Here, Complainant’s GOAT mobile application has received over 700,000 reviews on the Apple store. The reach of the GOAT Mark is further amplified by associated social media such as Instagram and Facebook, where the GOAT marketplace has over 3.5 million followers and well over 100,000 likes respectively. Complainant has promoted the GOAT Mark globally, and its GOAT goods and services are well-publicized in news outlets like Business Insider and The Wall Street Journal. The Panel is satisfied that the GOAT Mark has widespread recognition in the United States and worldwide. Based on Complainant’s submission, which was not rebutted, is difficult to conceive that Respondent did not know of Complainant’s GOAT Mark and products when Respondent registered the Domain Name particularly as Respondent sought to impersonate GOAT employees by sending emails that purported to come from GOAT’s human resources department. See WhatsApp Inc. v. Francisco Costa, WIPO Case No. D2015-0909 (finding that “it is likely improbable that Respondent did not know about Complainant’s WHATSAPP trademark at the time it registered the Disputed Domain Name considering the worldwide renown it has acquired amongst mobile applications, and the impressive number of users it has gathered since the launch of the WhatsApp services in 2009”.)
Additionally, Respondent is using the Domain Name in bad faith by intentionally attempting to attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant’s GOAT Mark as to affiliation with Respondent’s website in violation of Paragraph 4(b)(iv) of the Policy. The Domain Name incorporates in its entirety Complainant’s GOAT Mark, which would mislead Internet users into thinking that Respondent’s or its emails were from or affiliated with Complainant. See eBay Inc. v. Douglas Bennett, WIPO Case No. D2015-1178. This impression is enhanced by using the GOAT Mark in conjunction with the term “group” as Complainant does business under the name Goat Group.
It also appears that Respondent is using the GOAT Mark to facilitate a recruitment scam. Respondent has used the Domain Name in combination with fake email addresses, LinkedIn posts, and communications via job site Indeed.com, to convince job seekers that they are being recruited for design, photography and other jobs with Goat Group. The use of a confusingly similar, deceptive domain name for an email scam has previously been found by panels to be sufficient to establish that a domain name has been registered and is being used in bad faith. See Samsung Electronics Co., Ltd. v. Albert Daniel Carter, WIPO Case No. D2010-1367; Securitas AB, supra, WIPO Case No. D2013-0117. Moreover, in finding a domain name used only for an email scam was bad faith, the panel in Kramer Law Firm, P.A. Attorneys and Counselors at Law v. BOA Online, Mark Heuvel, WIPO Case No. D2016-0387, pointed out that numerous UDRP panels have found such impersonation to constitute bad faith, even if the relevant domain names are used only for email. See, e.g., Terex Corporation v. Williams Sid, Partners Associate, WIPO Case No. D2014-1742 (“Respondent was using the disputed domain name in conjunction with…an email address for sending scam invitations of employment with Complainant”); and Olayan Investments Company v. Anthono Maka, Alahaji, Koko, Direct investment future company, ofer bahar, WIPO Case No. D2011-0128 (“although the disputed domain names have not been used in connection with active web sites, they have been used in email addresses to send scam emails and to solicit a reply to an ‘online location’”); see also, WIPO Overview 3.0, section 3.1.4. Panels have also held that use of a Domain Name to engage in recruitment fraud is evidence of bad faith registration and use of the domain name. See BHP Billiton Innovation Pty Ltd v. George William, WIPO Case No. D2016-2562.
For this reason, the Panel holds that Complainant has met its burden of showing that Respondent registered and is using the Domain Name in bad faith.
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, <goatgroups.com>, be transferred to Complainant.
John C McElwaine
Date: June 23, 2021