WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Corporation Service Company Corporation v. Lance Casey, Penryn Rabbit Farm / Registration Private, Domains By Proxy, LLC / Domain Admin, Privacy Protect, LLC (PrivacyProtect.org)
Case No. D2018-0663
1. The Parties
The Complainant is Corporation Service Company Corporation of Wilmington, Delaware, United States of America (“USA” or “US”), represented by CSC Digital Brand Services Group AB, Sweden.
The Respondents are Lance Casey, Penryn Rabbit Farm of Penryn, California, USA / Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, USA / Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) of Burlington, Massachusetts, USA.
2. The Domain Names and Registrars
The disputed domain name <csclawyersincorporatingservice.com> is registered with Launchpad.com Inc.
The disputed domain names <csc-lawyers.com>, <csc-office-locations.com>, <csc-office-locations.info>, <csc-office-locations.net>, <csc-office-locations.org>, <csc-sacramento-process-server.com>, <csc-service-of-process.com> are registered with GoDaddy.com, LLC.
Collectively, the disputed domain names are referred to herein as the “Domain Names”.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 26, 2018. On March 26, 2018, the Center transmitted by email to the respective registrars a request for registrar verification in connection with the Domain Names. On March 26, 2018, Launchpad.com Inc. transmitted by email to the Center its verification response confirming that the Respondent, Lance Casey, Penryn Rabbit Farm, is listed as the registrant for the Domain Name <csclawyersincorporatingservice.com> and providing the contact details. On March 27, 2018, GoDaddy.com, LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the rest of the Domain Names, which differed from the named Respondents and contact information in the Complaint, and confirming that the Respondent, Lance Casey, Penryn Rabbit Farm, is listed as the registrant.
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 the Respondent of the Complaint, and the proceedings commenced on April 4, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 24, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 27, 2018.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on May 3, 2018. 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 business corporation organized under the law of the US state of Delaware and headquartered in Wilmington, Delaware. Since 1899, the Complainant has offered business formation or incorporation services and other business, legal, financial, and brand services to US and global companies. The Complainant acts as agent for service of process in all 50 US states, including California, where the Respondent is located. The Complainant claims to be the world’s leading provider of such services, with a clientele that includes 90% of the Fortune 500 companies, nearly 10,000 law firms, and more than 3000 financial organizations. The Complainant operates a website at “www.cscglobal.com”, which had over 200,000 unique visitors in the 30-day period ending March 4, 2018.
The Complainant claims that is has marketed business services under the mark CSC since 1996. It holds three US trademark registrations for CSC as a standard character mark: Number 2630508 (registered October 8, 2002), Number 2827193 (registered March 30, 2004), and Number 4418594 (registered October 15, 2013).
According to the respective registrars, the Domain Name <csclawyersincorporatingservice.com> was created on October 9, 2016. Shortly thereafter, on October 19, 2016, the Domain Names <csc-sacramento-process-server.com> and <csc-service-of-process.com> were created. About a year later, at about the time when those registrations were presumably renewed, the Domain Names <csc-office-locations.com>, <csc-office-locations.org>, <csc-office-locations.info>, and <csc-office-locations.net> were created on October 11, 2017, and <csc-lawyers.com> was created on October 20, 2017.
All of the Domain Names were registered in the name of a domain privacy service. Neither of the domain privacy services expressed an interest in the Domain Names in this proceeding. Following notice of the Complaint, both Registrars identified Lance Casey, Penryn Rabbit Farm of Penryn or Sacramento, California, USA as the registrant. Penryn Rabbit Farm, LLC of Penryn, California appears in the online database operated by the California Secretary of State as a suspended California limited liability company. Accordingly, the term “Respondent” hereafter refers to both Lance Casey and Penryn Rabbit Farm, LLC.
The Domain Name <csclawyersincorporatingservice.com> resolves to a website advertising the process server functions of “Lance Casey & Associates” in Sacramento, California including serving legal documents on the Complainant as registered agent for corporations at its office in Sacramento. The home page is headed, “How To Serve Legal documents to CSC Lawyers Incorporting [sic] Service?” Beneath this, in a smaller font, is the disclaimer, “We are not affiliated with Corporation Service Company, CSC, CSC Lawyers Incorporating Service.” Lance Casey & Associates advertises itself on the website as a “Sacramento process server” and a “Sacramento private investigator”, highlighting the capability of serving legal filings on the Complainant and other registered agents including Prentice Hall Corporation Systems, Sundoc Filings, Incorporating Services Ltd., Cogency Global Inc., Registered Agent Solutions, and Legalinc Corporate Services. The website includes text explaining the functions of the Complainant and its competitors as registered agents authorized to receive official documents on behalf of companies named in California legal proceedings.
The Domain Name <csc-service-of-process.com> similarly resolves to a website advertising the services of “Lance Casey & Associates” as a “Sacramento Process Server”. This website again lists the Complainant and competitors that offer registered agent services but even more confusingly, with a page prominently headed “CSC Process Service” displaying a photo of the Complainant’s Sacramento office and its address, as well as a photo that appears to show Mr. Casey at the door of that office wearing what looks like a security badge. This is placed immediately above a description of what the Complainant does as a registered California agent for clients, referring to the Complainant as “we”. The text intermingles references to the roles of the Complainant and Lance Casey & Associates, creating confusion as to source and affiliation.
Other Domain Names do not resolve to active websites at the time of this Decision but did so formerly, as shown in screenshots from April 2018 attached to the Complaint. The Domain Name <csc-sacramento-process-server.com> resolved to a website advertising Lance Casey & Associates as a process server and showing the address of the Complainant’s Sacramento office and the offices of its competitors in Sacramento. The Domain Name <csc-office-locations.com> resolved to a website displaying text and images apparently borrowed from the Complainant’s website, along with the address and information about the Respondent’s Sacramento location and service, in a manner that made it appear that the Respondent’s office was one of the Complainant’s locations. The Domain Name <csc-lawyers.com> redirects to a website at “www.businesscorporationlawyers.com”, a domain name registered to the same Respondent, which at the time of this Decision displays only a “Website coming soon!” message. This Domain Name formerly redirected to landing page with pay-per-click (“PPC”) advertising links.
The remaining Domain Names, <csc-office-locations.info>, <csc-office-locations.net>, and <csc-office-locations.org>, do not appear to have been put to use. They produce only error messages (“Forbidden” “You don’t have permission to access / on this server”.)
In December 2017, the Complainant’s representative twice emailed cease-and-desist demands to the Respondent. The Respondent asked for instructions on how to transfer the Domain Names to the Complainant but then failed to communicate further.
5. Parties’ Contentions
The Complainant asserts that the Domain Names are all confusingly similar to its CSC trademark, which the Respondent used without permission and with no apparent rights or legitimate interests.
The Complainant observes that the Respondent’s websites displayed an awareness of the Complainant’s well-established mark, making references to the Complainant and even disclaiming affiliation in some places but also engendering confusion and advertising competing services. The Complainant cites the “passive holding” doctrine with respect to the Domain Names that do not yet resolve to active websites. The Complainant also infers bad faith from the Respondent’s conduct in obscuring its identity, registering numerous Domain Names targeting the same mark, and failing to follow through with communications regarding transfer of the Domain Names.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules, “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
A. Identical or Confusingly Similar
As in most cases, the generic Top-Level Domain names “.com”, “.info”, “.net”, and “.org” are not distinguishing features in this instance. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11. The second-level Domain Names all incorporate the Complainant’s registered CSC trademark and generic words that appear to be relevant to the Complainant’s business: “lawyers incorporating service” (the Complainant performs business incorporation services for lawyers), “lawyers” (the Complainant markets its services to lawyers), “office locations” (the Complainant offers services across the US), “Sacramento process server” (the Complainant provides service of process functions in Sacramento, the state capital of California), “service of process” (this is one of the Complainant’s core service offerings). Thus, none of the Domain Names avoids confusing similarity with the Complainant’s trademark.
The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. See WIPO Overview 3.0, section 1.3. The Panel concludes under this test that the Domain Names are all confusingly similar to the Complainant’s registered CSC mark for purposes of the first element of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s 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) that the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is 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.
Since a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a disputed domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1.
Here, the Complainant has established a prima facie case with a demonstration of confusing similarity, a denial of permission, and a lack of evident rights or interests, thus shifting the burden to the Respondent. The Respondent has not come forward to claim any rights or legitimate interests, and none are apparent from a perusal of the websites associated currently or formerly with the Domain Names. The Respondent does not use the name “CSC”. The Respondent’s process server and private investigator business goes by the name “Lance Casey & Associates”, which has a website at “www.lancecasey.com”. The Panel cannot conclude that the Domain Names represent a bona fide use of the Complainant’s name under the Policy, as neither the Domain Names nor the associated websites avoid confusion as to source or affiliation (indeed, the websites compound confusion in several respects), and the websites are not limited to advertising services relating to the Complainant but mention the Complainant’s competitors and unrelated services as well. See WIPO Overview 3.0, sections 2.5 and 2.8.
The Panel concludes that the Complainant has established the second element of the Complaint.
C. Registered and Used in Bad Faith
The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following (in which “you” refers to the registrant of the domain name):
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.
This is an apt description of the circumstances here. The Domain Names all incorporate the Complainant’s registered CSC mark and add words that appear to be relevant to the Complainant’s business. The Respondent’s awareness of the Complainant and its marks is reinforced by the Respondent’s current and former websites, which refer to the Complainant and include information about the Complainant including its services, corporate headquarters, and Sacramento location. The websites are (or were) used to sell the Respondent’s services. Those Domain Names not yet activated for such use readily fall within the “passive holding” doctrine, as no legitimate purpose can be conceived (see WIPO Overview 3.0, section 3.3). The Respondent registered multiple Domain Names with evident awareness of the Complainant’s mark and was using several of those Domain Names to abuse the mark for commercial gain. The Respondent had already created a misleading website with the Domain Name <csc-office-locations.com>, and it is not necessary to await the fruition of the Respondent’s plans for the “.info”, “.net”, and “.org” versions of the same string to conclude that the same bad faith motivation applies.
The Panel concludes that all of the Domain Names were registered and used in bad faith, within the meaning 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, <csclawyersincorporatingservice.com>, <csc-lawyers.com>, <csc-office-locations.com>, <csc-office-locations.info>, <csc-office-locations.net>, <csc-office-locations.org>, <csc-sacramento-process-server.com>, <csc-service-of-process.com>, be transferred to the Complainant.
W. Scott Blackmer
Date: May 17, 2018