If you lose a UDRP filed against your dot .mobi domain name, consider that a favor.
Fifteen years after its introduction in 2005, the generic TLD arrived a mere two years before the mobile web became obsolete, thanks to the launch of the Apple iPhone.
These days, the number of .mobi domains is unknown but there are more .xyz and .life domains than .mobi.
The registrant of ISS.mobi should consider the domain’s loss via the UDRP process a favor of financial nature. Let’s just say that the $1,500 dollars spent by the Complainant, Institutional Shareholder Services Inc., to file this case, defined the spending limit for this type of domain. The Respondent wanted $688 dollars for the domain.
Interestingly, the Romanian Respondent registered the domain 3 weeks before a 2020 trademark registration by the Complainant, who cited 2001 as the date of the mark’s first use. That 20 year old claim seemed to shift the balance in the Complainant’s favor.
With no response by the Respondent, the sole panelist at the NAF ordered ISS.mobi to be transferred to the Complainant.
Institutional Shareholder Services Inc. v. Milen Radumilo
Claim Number: FA2011001921738
PARTIES
Complainant is Institutional Shareholder Services Inc. (“Complainant”), represented by Maryann E. Licciardi of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Milen Radumilo (“Respondent”), Romania.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <iss.mobi>, registered with Dynadot, LLC.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the Forum electronically on November 23, 2020; the Forum received payment on November 23, 2020.
On December 2, 2020, Dynadot, LLC confirmed by e-mail to the Forum that the <iss.mobi> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, LLC 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 December 9, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 29, 2020 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@iss.mobi. Also on December 9, 2020, 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, the Forum transmitted to the parties a Notification of Respondent Default.
On January 4, 2021, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the 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, the 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, Institutional Shareholder Services Inc., operates a corporate governance and investment company. Complainant has rights in the ISS mark through its filing for registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Serial No. 88,947,625, filed June 4, 2020, first used Sep. 15, 2001). Additionally, Complainant asserts common law rights in the ISS mark from its long use and wide recognition for the mark. Respondent’s <iss.mobi> domain name is identical and confusingly similar to Complainant’s ISS mark, only adding the “.mobi” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <iss.mobi> domain name as it is not commonly known by the disputed domain name and is not an authorized user or licensee of the ISS mark. Respondent also does not use the disputed domain name for any bona fide offering of goods or services, or for any legitimate noncommercial or fair use. Instead, Respondent attempts to engage in a phishing scheme and tries to place malware on Internet users devices. When the website is accessed, warning messages appear claiming user’s devices are “compromised.” Additionally, Respondent offers the disputed domain name for sale. Respondent also engages in inactive holding as the disputed domain name does not resolve to an active website.
Respondent registered and uses the <iss.mobi> domain name in bad faith. Respondent offers the disputed domain name for sale, and currently uses the disputed domain name to engage in a phishing scheme and to attempt to place malware on Internet users devices. Respondent also causes initial interest confusion, disrupting the business interests of Complainant. Respondent further engages in inactive holding as the disputed domain name does not lead to any active website. Complainant also notes that Respondent’s use of a privacy service when registering the disputed domain creates a rebuttable presumption of bad faith registration. Finally, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the ISS mark prior to registration of the <iss.mobi> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant, Institutional Shareholder Services Inc., operates a corporate governance and investment company. Complainant has rights in the ISS mark through its filing for registration with the USPTO (e.g., Serial No. 88,947,625, filed June 4, 2020, first used Sep. 15, 2001).
Respondent registered the <iss.mobi> domain name on May 16, 2020. Although, Respondent registered the domain name almost three weeks before Complainant registered its ISS mark with the USPTO, Complainant has common law rights in the ISS mark from its long use and wide recognition for the mark.
Respondent’s <iss.mobi> domain name is identical and confusingly similar to Complainant’s ISS mark.
Respondent lacks rights and legitimate interests in the <iss.mobi> domain name. Respondent attempts to engage in a phishing scheme and tries to place malware on Internet users devices. When the website is accessed, warning messages appear claiming user’s devices are “compromised.” Additionally, Respondent offers the disputed domain name for sale. Respondent also engages in inactive holding as the disputed domain name does not resolve to an active website.
Respondent registered and uses the <iss.mobi> domain name in bad faith.
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. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Identical and/or Confusingly Similar
Complainant has rights in the ISS mark through filing for registration with the USPTO. Registration of a mark with a trademark agency such as the USPTO is generally sufficient to establish rights in a mark under Policy ¶ 4(a)(i). See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) (“Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).”).
Respondent registered the <iss.mobi> main name almost three weeks before Complainant registered its ISS mark with the USPTO, Complainant does not need to have registered a mark prior to Respondent’s registration of a disputed domain name if Complainant can establish common law rights in a mark. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding that “The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”).
Here, Complainant was founded in 1985, and has done business under the ISS mark since as early as September 15, 2001. Additionally, Complainant has used the <issgovernance.com> domain name since as early as 2010. Previous Panels have acknowledged rights in an acronym after long use and wide recognition. See Soc’y of St. Vincent de Paul v. Yip, D2004-0121 (WIPO May 25, 2004) (finding that the complainant acquired distinctive common law rights in the SVDP acronym because it had been used for many years to identify the complainant and the charitable services it provided). Therefore, the Panel finds Complainant has established common law rights in the ISS mark under Policy ¶ 4(a)(i).
Respondent’s <iss.mobi> domain name is identical to Complainant’s ISS mark, only differing by the addition of the “.mobi” gTLD.
Rights or Legitimate Interests
Respondent lacks rights and legitimate interests in the <iss.mobi> domain name as it is not commonly known by the disputed domain name and is not an authorized user or licensee of the ISS mark. When no response is submitted, relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name under Policy ¶ 4(c)(ii). See Tenza Trading Ltd. v. WhoisProtectService.net / PROTECTSERVICE, LTD., FA1506001624077 (Forum July 31, 2015) (“The WHOIS information lists ‘WhoisProtectService.net’ as the registrant of record for the disputed domain names. Accordingly, in the absence of a Response, there is no evidence to indicate that Respondent might be known by any of the domain names.”). Here, the WHOIS information of record indicates that the registrant utilized a privacy service, as the registrant’s information is blank. However, the registrar verified via email that the registrant of the disputed domain name was “Milen Radumilo,” Respondent in this case. Therefore, the Panel finds Respondent is not commonly known by the disputed domain under Policy ¶ 4(c)(ii).
Respondent does not use the <iss.mobi> domain name in connection with any bona fide offering of goods or services, or for any legitimate noncommercial or fair use. Instead, Respondent attempts to engage in a phishing scheme and tries to place malware on Internet users devices. Use of a disputed domain name to carry out a phishing scheme does not constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Enterprise Holdings, Inc. v. I S / Internet Consulting Services Inc., FA 1785242 (Forum June 5, 2018) (“On its face, the use of a domain name that is confusingly similar to the mark of another in order to facilitate a phishing scheme cannot be described as either a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(iii).”); see also Coachella Music Festival, LLC v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1785199 (Forum June 5, 2018) (“Respondent uses the <coechella.com> domain name to direct internet users to a website which is used to attempt to install malware on visiting devices. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use under Policy ¶ 4(c)(iii).”). Complainant provides screenshots of the landing page for the disputed domain name which shows the generic warning screen informing Internet visitors that their device has been “compromised” and provides a link to purportedly remove the supposed virus. Therefore, the Panel finds Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶¶ 4(c)(i) and (iii).
Respondent’s attempt to sell the <iss.mobi> domain name is further evidence of Respondent’s lack of rights or legitimate interests in the ISS mark. See Enterprise Holdings, Inc. v. Huang Jia Lin, FA1504001614086 (Forum May 25, 2015) (“Accordingly, the Panel finds that Respondent’s general attempt to sell the disputed domain name is further evidence of Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii).”).
Also, Respondent’s failure to make active use of the <iss.mobi> domain name does not equate to a bona fide offer of goods or services, nor does it constitute a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Dell Inc. v. link growth / Digital Marketing, FA 1785283 (Forum June 7, 2018) (“Respondent’s domain names currently display template websites lacking any substantive content. The Panel finds that Respondent has does not have rights or legitimate interests with respect of the domain name per Policy ¶¶ 4(c)(i) or (iii).”). The Panel therefore finds Respondent lacks rights or legitimate interest in the disputed domain name under Policy ¶¶ 4(c)(i) or (iii).
Registration and Use in Bad Faith
Respondent registered and uses the <iss.mobi> domain name in bad faith as Respondent offers the disputed domain name for sale. Registering a disputed domain name with intent to sell evinces bad faith registration and use under Policy ¶ 4(b)(i). See Airbnb, Inc. v. Super Privacy Service LTD c/o Dynadot, FA 1821386 (Forum Jan. 10, 2019).
Respondent registered and uses the <iss.mobi> domain name in bad faith under Policy ¶ 4(b)(iii) as Respondent creates initial interest confusion, disrupting Complainant’s business interests, as well as engaging in inactive holding, which violates Policy ¶ 4(b)(iii). See London Metal Exch. Ltd. v. Hussain, D2000-1388 (WIPO Dec. 15, 2000) (finding that the “letters ‘lme’ are so obviously connected with a well-known entity that their very use by someone with no connection to Complainant suggests opportunistic bad faith”); see also Love City Brewing Company v. Anker Fog / Love City Brewing Company, FA 1753144 (Forum Nov. 27, 2017) (Finding that Respondent disrupts Complainant’s business by pointing Internet users to an expired webpage. This may create the perception that Complainant is closed, never existed, or is not a legitimate business. Therefore, the Panel finds that Respondent registered and uses the disputed domain names in bad faith per Policy ¶ 4(b)(iii).).
Respondent’s use of the <iss.mobi> domain name to conduct a phishing scheme and to insert malware onto Internet users’ devices is bad faith under Policy ¶ 4(a)(iii). See Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA1506001625750 (Forum July 17, 2015) (“Respondent uses the <klabzuba-oilgas.com> domain to engage in phishing, which means Respondent registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii).”); see also Twitter, Inc. v. Kiribati Media / Kiribati 200 Media Limited, FA1502001603444 (Forum Mar. 19, 2015) (“Using the disputed domain name to download malicious software into unsuspecting viewers’ computers evidences Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”).
Respondent’s use of a privacy service while registering the <iss.mobi> domain name is further evidence of bad faith under Policy ¶ 4(a)(iii). See Robert Half International Inc. v. robert arran, FA 1764367 (Forum Feb. 5. 2018) (“Respondent’s use of a privacy registration service in an attempt to conceal his identity, though not itself dispositive, is a further indication of bad faith.”).
Respondent had actual knowledge of Complainant’s rights in the ISS mark prior to registration of the <iss.mobi> domain name. Therefore, Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <iss.mobi> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: January 18, 2021
