WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Newegg Inc. v. Nicole Alex and Alexander Ethan

Case No. D2019-2740

1. The Parties

The Complainant is Newegg Inc., United States of America (“United States”), represented internally.

The Respondents are Nicole Alex, Nigeria, and Alexander Ethan, Nigeria.

2. The Domain Name and Registrar

The disputed domain name <job-neweggca.com> is registered with Registrar of Domain Names REG.RU LLC. The disputed domain name <neweggca.com> is registered with FastDomain, Inc (collectively referred to as the “Registrars”)

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 8, 2019. On November 8, 2019, the Center transmitted by email to the Registrars of the disputed domain names requests for registrar verification in connection with the disputed domain names. On November 8 and 11, 2019, respectively, the Registrars transmitted by email to the Center their verification responses confirming that the Respondents were listed as the registrants and providing the contact details.

The Complaint was filed in English. The Registrar confirmed that the language of the Registration Agreement for the <job-neweggca.com> disputed domain name is Russian. On November 19, 2019, the Center sent an email communication to the Parties in both English and Russian regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on November 19, 2019. The Respondents did not comment on the language of the proceeding.

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 Respondents of the Complaint, and the proceedings commenced on December 3, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 23, 2019. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on December 24, 2019.

The Center appointed Assen Alexiev as the sole panelist in this matter on January 8, 2020. 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 an online retailer offering products and services for sale in 80 countries. The Complainant owns and operates the websites “www.newegg.com” and “www.newegg.ca”.

The Complainant owns the following trademark registrations for the sign NEWEGG (the “NEWEGG trademark”):

- the United States trademark NEWEGG with registration number 3383264, registered on February 12, 2008 for services in International Class 35; and

- the trademark NEWEGG with registration number TMA745335, registered in Canada on August 13, 2009 for services in International Class 35.

The disputed domain name <neweggca.com> was registered on July 4, 2019. It resolves to a parking webpage displaying links related to computers.

The disputed domain name <job-neweggca.com> was registered on September 19, 2019. It currently resolves to a blank webpage displaying the text “The account has been suspended”. Accordingly to evidence submitted by the Complainant, it used to resolve to a website displaying the Complainant’s trademark, an equal opportunity employer disclaimer, and an application forum.

5. Parties’ Contentions

A. Complainant

According to the Complainant, the disputed domain names are identical or confusingly similar to the NEWEGG trademark, because they incorporate the entirety of this trademark.

The Complainant submits that the Respondents have no rights or legitimate interests in respect of the disputed domain names as the Respondents do not have any license or authorization from the Complainant to use the NEWEGG trademark or to register or use domain names that incorporate it. The Complainant points out that the Respondents are using the disputed domain names for illegal activity. They attempt to impersonate the Complainant and are fraudulently representing themselves to be employees of the Complainant in order to acquire confidential information from third parties.

The Complainant contends that the disputed domain names were registered and are being used in bad faith. According to the Complainant, the Respondents use the disputed domain names for a job phishing scam which has caused actual confusion as the individual who applied to the job posting made by the Respondents believed that it was applying for a legitimate job with the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1. Procedural issues

A. Consolidation of Respondents

The Complaint is filed against two Respondents each of which has registered one of the disputed domain names, and the Complainant requests the consolidation of the proceeding. According to the Complainant, the disputed domain names are under common management and control of a single entity and the consolidation would be fair and equitable to all Parties, as there is a commonality of facts and issues for the disputed domain names and it would be more procedurally efficient to proceed with a single decision. The Complainant points out that the two disputed domain names are being used for the common purpose of perpetrating a job phishing scam, where the disputed domain name <neweggca.com> is being used as an email to send fraudulent phishing emails from senders that fraudulently identify themselves as being part of the human resources department of the Complainant. These phishing emails instruct persons interested in applying for a job with the Complainant to complete an application form on the website at the disputed domain name <job-neweggca.com> where they have to provide their confidential information.

Neither of the Respondents has provided comments on the Complainant’s request for consolidation or denied any of the factual allegations of the Complainant in support of its request.

Paragraph 10(e) of the Rules grants the Panel the power to decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and the Rules. As discussed in section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), where a complaint is filed against multiple respondents, UDRP panels look at whether the domain names or corresponding websites are subject to common control, and whether the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario.

In the present case, the Complainant has submitted evidence in the form of email messages from persons who identify themselves as representatives of the Complainant. These email messages originate from an email address that uses one of the disputed domain names and directs the addressees of the emails to complete application forms on the website at the other disputed domain name. In the absence of any evidence or arguments to the contrary, it is more likely than not that the two disputed domain names are being used for a joint purpose and are under common control. The joint use of the two disputed domain names for an alleged phishing scheme is a central argument of the Complainant, on which it bases its contentions on the issues of rights and legitimate interests and bad faith.

In view of the above, the Panel is satisfied that the two disputed domain names are subject to common control, and that the consolidation would be fair and equitable to all Parties and would lead to procedural efficiency. Therefore, on the basis of paragraph 10(e) of the Rules, the Panel decides that the proceedings in respect of the two disputed domain names shall be consolidated.

B. Language of the proceeding

In respect of the language of the proceedings, the Panel notes the following. According to the information provided by the Registrar, the language of the registration agreement for the disputed domain name <job-neweggca.com> is Russian, while the language of the registration agreement for the disputed domain name <neweggca.com> is English. Under paragraph 11 of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.

The Complainant submitted its Complaint in the English language, and requests the proceeding to be held in English. The Complainant argues that the translation of the Complaint into Russian would unreasonably burden the Complainant and delay the proceedings. The Complainant also points out that the Respondents understand and communicate in English, because the disputed domain name <job-neweggca.com> contains English-language words and the content of the associated website is in English, and the two disputed domain names are being used for the same job phishing scam, which uses phishing emails and fake job offers written in English.

The Center has sent all its messages to the Respondents in both English and Russian, and has invited the Respondents to express their views on the language of the proceeding. The Respondents have not responded and have not denied the arguments of the Complainant in respect of the language of the proceeding, which are also supported by the evidence in the case. These considerations satisfy the Panel that the Respondents can communicate in English.

Taking all the above circumstances into account, the Panel accepts that the Respondents would not be disadvantaged if the language of the proceeding is English, and is satisfied that using the English language in this proceeding would be fair and efficient.

Therefore, in exercise of its powers under paragraph 11 of the Rules, the Panel decides that the language of this administrative proceeding will be English.

6.2. Substantive Issues

A. Identical or Confusingly Similar

The Complainant has provided information and has established its rights in the NEWEGG trademark.

The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the generic Top-Level Domain (“gTLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” gTLD section of the disputed domain names.

As discussed in section 1.7 of the WIPO Overview 3.0, the threshold test for confusing similarity involves a reasoned but relatively straightforward comparison between the textual components of the complainant’s trademark and the disputed domain name to assess whether the trademark is recognizable within the disputed domain name. In cases where a domain name incorporates the entirety of a trademark, the domain name will normally be considered confusingly similar to that trademark for purposes of UDRP standing. As further discussed in section 1.8 of the WIPO Overview 3.0, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms would not prevent a finding of confusing similarity under the first element.

The relevant part of the disputed domain name <neweggca.com> is the sequence “neweggca”. It consists of the elements “new”, “egg” and “ca”, where the combination of the first two of these elements is identical to the NEWEGG trademark, and is clearly recognizable in the disputed domain name, while the inclusion of the letters “ca” in the disputed domain name does not prevent a finding of confusing similarity to the NEWEGG trademark. The same considerations are also valid for the disputed domain name <job-neweggca.com>, which consists of the same elements with the addition of the element “job”, separated from the other elements by a hyphen. This difference again does not prevent a finding of confusing similarity of this disputed domain name to the NEWEGG trademark.

Therefore, the Panel finds that the disputed domain names are confusingly similar to the NEWEGG trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See section 2.1 of the WIPO Overview 3.0.

The Complainant contends that the Respondents have no rights or legitimate interests in the disputed domain names, stating that the Respondents have not been authorized by the Complainant to use the NEWEGG trademark or to register or use domain names that incorporate it. The Complainant points out that the Respondents are using the two disputed domain names for the same illegal activity and attempt to impersonate the Complainant in order to fraudulently acquire confidential information from third parties. Thus, the Complainant has established a prima facie case that the Respondents lack rights or legitimate interests in the disputed domain names.

The Respondents have not submitted any arguments in support of the existence of any rights and legitimate interests in the disputed domain names. They have not denied the allegations of the Complainant or disputed the evidence that it has brought forward.

The two disputed domain names are confusingly similar to the NEWEGG trademark. The undisputed evidence in the case file shows that they have been used for a job phishing scam, where one of the disputed domain names is being used as an email to send fraudulent phishing emails from senders that fraudulently identify themselves as belonging to the human resources department of the Complainant. These phishing emails direct persons interested in applying for a fake offer for a job with the Complainant to complete an application form on the website at the other disputed domain name and to provide their confidential information.

In view of the above, the Panel concludes that by registering and using the disputed domain names, the Respondents attempt to improperly capitalize on the reputation and goodwill associated with the NEWEGG trademark and to fraudulently collect confidential information from unsuspecting candidates for non-existent job positions with the Complainant. Such conduct is per se illegitimate and can never confer rights or legitimate interests in the disputed domain names on the Respondents. See section 2.13 of the WIPO Overview 3.0.

Therefore, the Panel finds that the Respondents do not have rights and legitimate interests in the disputed domain names.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:

“(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(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.”

The disputed domain names are confusingly similar to the NEWEGG trademark. As discussed in section 6.2.B above, the undisputed evidence shows that they have been used for a job phishing scam and the impersonation of the Complainant. Being per se illegitimate, such conduct is manifest evidence of bad faith registration and use of the disputed domain names. See section 3.1.4 of the WIPO Overview 3.0. This use of the disputed domain names also shows that the Respondents must have been well aware of the goodwill of the Complainant’s NEWEGG trademark when they registered the disputed domain names and that their registration is likely to have been made in view of this goodwill and in an attempt to receive commercial gain from its exploitation.

Taking the above into account, the Panel finds that the Respondents have registered and used the disputed domain names in bad faith.

7. Decision

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 names <job-neweggca.com> and <neweggca.com> be transferred to the Complainant.

Assen Alexiev
Sole Panelist
Date: January 29, 2020