The operators of the domain imanage.com also own imanage.work, alongside the mark IMANAGE. They filed a UDRP against the domain imanagework.com, presumably of Russian interests; the Complainant claimed that they have an intention to confuse the consumer and/or spoof emails for malicious purposes.
The Forum panelist disagreed, both on the phishing or spoofing claims and about the prowess of the Complainant’s mark, ordering the domain imanagework.com to remain with the Respondent:
The Panel observes that whilst Complainant emphasizes possible confusion between its domain imanage.work and the disputed domain name, the evidence is that Complainant’s primary website is www.imanage.com and that the domain imanage.work redirects traffic to imanage.com. There is no evidence of use of the domain name imanage.work. Further, there is no evidence of any email messages.
The Panel finds Complainant’s reliance on the case of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (Feb. 18, 2000) ill-chosen for that reason and, additionally, since there is no evidence accompanying the Complaint that IMANAGE has become a “highly distinctive mark” (as claimed) through use and public recognition.
The domain transfer was denied.
iManage LLC v. Joel Smith / Post Market Publishing LLC
Claim Number: FA2409002116495
PARTIES
Complainant is iManage LLC (“Complainant”), represented by Matthew J. Cavanagh of McDonald Hopkins LLC, Ohio, USA. Respondent is Joel Smith / Post Market Publishing LLC (“Respondent”), Delaware, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is imanagework.com, registered with NameCheap, Inc.
PANEL
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Debrett G. Lyons as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on September 20, 2024; Forum received payment on September 20, 2024.
On September 20, 2024, NameCheap, Inc. confirmed by e-mail to Forum that the imanagework.com domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 23, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 15, 2024 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@imanagework.com. Also on September 23, 2024, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.
On October 17, 2024, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, Forum appointed Debrett G. Lyons as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant asserts trademark rights in IMANAGE. Complainant holds a national registration for that trademark. Complainant submits that the disputed domain name is confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. Further, Complainant alleges that Respondent registered and used the disputed domain name in bad faith.
Complainant asserts that:
“Respondent must have used, or intends to use, the imanagework.com domain to send fraudulent spoof or phishing emails from @imanagework.com email accounts that are intended to trick users who do not notice that the difference between the Complainant’s imanage.work domain and the Respondent’s imanagework.com domain and might believe that the messages originate from the Complainant.”
B. Respondent
Respondent failed to submit a Response in this proceeding.
FINDINGS
The factual findings pertinent to the decision in this case are that:
1. Complainant creates and sells document management
software under the trademark, IMANAGE;
2. the trademark is registered with the United States Patent & Trademark Office (“USPTO”) as Reg. No. 2,566,557, registered May 7, 2002;
3. the disputed domain name was registered on August 9, 2024, by Respondent using a privacy service to shield its identity; and
4. there has been no meaningful use of the domain name.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent’s failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
Identical and/or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights (see, for example, Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003)). The Panel finds that Complainant has rights in IMANAGE since it is registered with the USPTO, a national trademark authority.
For the purposes of comparison of the disputed domain name with the trademark, the gTLD, “.com” can be disregarded (see, for example, Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Forum Dec. 31, 2007)). The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview”) asks at #1.7 : What is the test for identity or confusing similarity under the first element? In answer, it states:
… The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name.
This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. …
While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.
…
Issues such as the strength of the complainant’s mark or the respondent’s intent to provide its own legitimate offering of goods or services without trading off the complainant’s reputation, are decided under the second and third elements. … (emphasis added)
Applying this test, the Panel finds that the trademark remains a recognizable part of the name and so the Panel finds that the domain name is confusingly similar to the trademark (see also, Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”)
The Panel therefore finds that the requirements of paragraph 4(a)(i) of the Policy are satisfied.
Rights or Legitimate Interests
For reasons which are set out under the Registration and Use in Bad Faith analysis below, no findings are required in respect of this aspect of the Policy (see, for example, Netsertive, Inc. v. Ryan Howard / Howard Technologies, Ltd., FA 1721637 (Forum Apr. 17, 2017) finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary).
Although it may be said that this is true, also, of paragraph 4(a)(i) of the Policy, the Panel provided reasoning there to offer context to what follows.
Registration and Use in Bad Faith
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
(i) circumstances indicating that the respondent has registered or 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s 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 trademark or service mark from reflecting the mark in a corresponding domain name, provided that 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, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line 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 site or location.
The Panel finds on the evidence before it that none of those four scenarios has direct application and so what must be shown, as separate requirements, is registration in bad faith and use in bad faith.
Summarising the Complaint, the submissions are essentially that:
o Respondent’s use of the domain name and IMANAGE trademark to hosting a pro-forma WordPress sample page is in bad faith because this sample page has no conceivable use other than to infringe the IMANAGE mark and/or to create the appearance of legitimate use.
o The IP address that hosts this sample page is owned by a Russian-owned company acting out of the US.
o Internet users who do not notice that the difference between Complainant’s imanage.work domain and the Respondent’s imanagework.com domain might believe that messages originate from Complainant.
o Typosquatting is evidence of relevant bad faith registration and use
o Respondent behavior is highly suspicious and typical of owners of domains used in phishing attacks
o Therefore such use by the Respondent is bad faith.
The Panel observes that whilst Complainant emphasizes possible confusion between its domain imanage.work and the disputed domain name, the evidence is that Complainant’s primary website is www.imanage.com and that the domain imanage.work redirects traffic to imanage.com. There is no evidence of use of the domain name imanage.work. Further, there is no evidence of any email messages.
Furthermore, the Panel observes that the pro-forma WordPress sample page to which the disputed domain name resolves does not use the IMANAGE trademark other than as part of the expression “IMANAGEWORK”.
The Panel has already observed the WIPO Overview commentary that the strength (distinctiveness) of Complainant’s mark is something to be considered under the third element of the Policy. Albeit that IMANAGE has been registered by the USPTO, the Panel considers that it sits at the lower end of the spectrum of distinctiveness. Coupled with that is the observation that “I manage work” is an ordinary turn of words, leading the Panel to discount Complainant’s assertion that there is “no conceivable use other than to infringe [Complainant’s] mark.” For the same reasons, the Panel would not readily consider this to be a case of typo-squatting.
The Panel finds Complainant’s reliance on the case of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (Feb. 18, 2000) ill-chosen for that reason and, additionally, since there is no evidence accompanying the Complaint that IMANAGE has become a “highly distinctive mark” (as claimed) through use and public recognition.
The disputed domain name has been registered for two months. Despite Complainant’s concerns it has not been used on the evidence for any nefarious purpose. The resolving WordPress page might be entirely consistent with the actions of some nascent (and legitimate) business. This is not to say that the evidence does not disclose some elements of doubt but given the applicable standard of proof in UDRP cases – namely the “balance of probabilities” or “preponderance of the evidence” – Complainant must demonstrate to the Panel’s satisfaction that it is more likely than not that a claimed fact is true, or some outcome is more than likely, and at this point in time the Complaint merely shows a level of apprehensiveness which does not meet that standard.
The Panel does not find either registration in bad faith or use in bad faith and so Complainant has not satisfied the third element of the Policy.
WITHOUT PREJUDICE DECISION
Having failed to establish at least one of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the imanagework.com domain name REMAIN WITH Respondent.
Debrett G. Lyons, Panelist
Dated: October 20, 2024
