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and Mediation Center
ADMINISTRATIVE PANEL DECISION
HPR Commodities LLC v. John Galledo
Case No. D2007-0154
1. The Parties
The Complainant is HPR Commodities LLC, United States of America, represented by Wilmer Cutler Pickering Hale and Dorr LLP, United States of America.
The Respondent is John Galledo, United States of America.
2. The Domain Name and Registrar
The disputed domain name <hprglobal.com> is registered with EstDomains, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 3, 2007. On February 6, 2007, the Center transmitted by email to EstDomains, Inc. a request for registrar verification in connection with the domain name at issue. On February 19, 2007, EstDomains, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on February 21, 2007. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint and the proceedings commenced on February 21, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was March 13, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 19, 2007.
The Center appointed Grant L. Kim as the sole panelist in this matter on April 3, 2007. 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.
This case is related to a recent proceeding involving the <hprcommodities.com> domain name. As described in more detail below, this case involves the same Complainant and many of the same facts as the other proceeding. On April 9, 2007, the undersigned Panel issued a decision in the other proceeding transferring the <hprcommodities.com> domain name to the Complainant. See HPR Commodities LLC v. Rob Harper,
WIPO Case No. D2007-0153 (April 9, 2007).
On April 18, 2007, the Panel issued Procedural Order No. 1, which noted that the record contained substantial evidence related to HPR Commodities and the use of the domain name, <hprcommodities.com>, but contained much less evidence related to the Domain Name at issue in this proceeding, <hprglobal.com>. Procedural Order No. 1 requested the Complainant to submit a Supplemental Statement on or before April 26, 2007, attaching any relevant supporting evidence, describing (1) any available information about the content that was previously available at “www.hprglobal.com”; (2) any evidence suggesting that <hprglobal.com> was registered and used in connection with a fraudulent scheme that also involves <hprcommodities.com> or that relates to the trading of commodities; and (3) the Complainant’s view on why it has sufficient rights in the HPR mark (in contrast to HPR COMMODITIES) to meet Paragraph 4(a)(i) of the Policy.
Pursuant to the Complainant’s request, the Panel granted an extension until May 9, 2007, for the Complainant to submit a Supplemental Statement, and provided the Respondent until May 18, 2007, to submit a Response to the Complainant’s Supplemental Statement. The Complainant filed a Supplemental Statement addressing the issues outlined above on May 9, 2007. The Respondent did not file a Response to the Complainant’s Supplemental Statement.
4. Factual Background
The following facts are established by sworn affidavits of Robert Halper, President of the Complainant HPR Commodities LLC; William Nugent, an energy futures trader and member of the New York Mercantile Exchange, Inc. (“NYMEX”); and Ed Mandelbaum, a licensed private investigator and President of Gables Group Investigations, Inc., as well as by documents annexed to the Complaint.
The Complainant HPR Commodities LLC, is a company based in New York City in the business of professional energy trading. HPR Commodities was founded on October 21, 2003, and is a Non-Clearing Member Firm of NYMEX, the world’s largest physical commodity futures exchange. Robert Halper has been the sole owner and President of HPR Commodities since the founding of the company. Mr. Halper has been using HPR, a shortened version of his surname, in connection with professional energy trading since 1983. The Complainant has been using HPR and HPR COMMODITIES as trade names and service marks since the company was founded in October 2003. The Complainant registered <hprcommodities.net> and <hprcommodities.org>, one week before the disputed Domain name, <hprglobal.com>, was registered on November 9, 2006. One day after the disputed Domain Name was registered, the Complainant also registered <hprcommodities.info> and <hprcommodities.biz>. In addition, as noted above, <hprcommodities.com> was recently transferred to the Complainant. See HPR Commodities LLC v. Rob Harper,
WIPO Case No. D2007-0153 (April 9, 2007).
Around October 2006, the Complainant hired Mr. Mandelbaum to investigate the potentially fraudulent use of its HPR COMMODITIES name in connection with a scam involving a website posted at “www.hprcommodities.com”. Through the investigator, the Complainant learned that the Australian Securities and Investments Commission (“ASIC”) had commenced proceedings in Australian federal court alleging that unknown individuals have defrauded investors of over $3.9 million Australian dollars by a scam involving the use of “sophisticated internet technology” and the names of legitimate companies such as “HPR Commodities”. The account for the <hprcommodities.com> domain name was suspended based on the Complainant’s notification to the web host of the potential fraud.
Thereafter, Complainant became aware that a series of similar domain names — including <hprglobal.com> and <hpr-commodities.com> — had also been registered. The <hpr-commodities.com> domain name was registered to “HPR” and “ Charlton Street, New York, NY, 10014”, the same address used for the <hprcommodities.com> domain name. Pursuant to the Complainant’s request, the web host suspended the accounts for both <hprcommodities.com> and <hpr-commodities.com>.
On November 9, 2006, after both websites were suspended, the Respondent, John Galledo, registered the <hprcommodities.us> domain name using the same “ Charlton Street” address as previously used for <hprcommodities.com> and <hpr-commodities.com>. The Respondent registered the <hprglobal.com> Domain Name at issue in this proceeding on the same day, listing his address as “1 North End Avenue, Suite 665 Ѕ, New York, NY, rty456”. Pursuant to the Complainant’s request to the web host, the website for the <hprglobal.com> Domain Name was suspended the next day, November 10, 2007. The Domain Name does not currently resolve to an active website, and the Complainant does not know whether it ever resolved to an operational website.
5. Parties’ Contentions
The Complainant asserts that it has rights in the HPR and HPR COMMODITIES marks, which are inherently distinctive or alternatively have acquired distinctive character through continual, extensive, and exclusive use by the Complainant, or its founder Robert Halper, since 1983. Complainant contends that <hprglobal.com> is confusingly similar because it incorporates the HPR mark in its entirety, adding only a descriptive word.
The Complainant asserts that there is no evidence that the Respondent used a mark consisting of HPR or HPR GLOBAL at any time in a bona fide offering of goods and services, or that it operated a business known by this name. On the contrary, the Complainant asserts that the Respondent registered and used the Domain Name as part of a fraudulent scam and for the bad faith purpose of intentionally confusing consumers as to the source of its services. The Complainant has submitted news articles and court pleadings relating to an investigation conducted by the Australian Securities and Investments Commission regarding a scam by which unknown individuals have defrauded investors of over $3.9 million Australian dollars. This scam involves the use of “sophisticated internet technology” and adoption of “the company names of legitimate companies who are licensed to provide financial services in the USA, but not in Australia”, including HPR Commodities. The Complainant has provided evidence that the registration of the Domain Name was part of a pattern of registrations following the suspension of the <hprcommodities.com> domain name, and that the Domain Name was provided to alleged victims of the scam.
The Complainant also contends that the Respondent’s name, John Galledo, may be a fictitious name based in part on the name of one of the Complainant’s employees. The Complainant further notes that the Domain Name registration lists a New York postal address for the Respondent that includes the street address of the NYMEX building, where the Complainant has an office, but that “Suite 665 Ѕ” does not exist.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Panel finds that it was properly constituted pursuant to the Rules and that it has jurisdiction to decide this dispute. The Panel notes that the record shows that the Respondent agreed to the Policy as part of the Domain Name registration, and was properly notified of the Complaint, the Default, and the Administrative Panel Procedural Orders under Paragraph 2(a) of the Rules, including at the email address included in Respondent’s registration. The Panel further notes that notwithstanding the Respondent’s failure to respond to the Complaint, the Panel has reviewed the record to determine whether or not the Complainant is entitled to the relief requested under the Policy, the Rules, and the Supplemental Rules.
The Policy is addressed at resolving disputes concerning allegations of abusive domain name registration and use. See Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc., d/b/a The Power Tool Store,
WIPO Case No. D2002-0774 (October 26, 2002). The Panel has reviewed the record in light of the three requirements set forth in the Policy, paragraph 4(a), which entitle the Complainant to transfer or cancellation of the disputed Domain Name if: (i) the Domain Name is identical or confusingly similar to a trademark or services mark in which the Complainant has rights; and (ii) Respondent has no rights or legitimate interests in the Domain Name; and (iii) Respondent registered and used the Domain Name in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has submitted sufficient evidence to establish common law trademark rights in HPR. It is well-settled that the Policy encompasses both registered and common law marks. See, e.g. The British Broadcasting Corporation v. Jaime Renteria,
WIPO Case No. D2000-0050 (March 23, 2000). Under United States trademark law, common law rights in a trademark or service mark “may be established by extensive or continuous use sufficient to identify particular goods or services as those of the trademark owner”. Lillian Vachovsky, COO, Aplus.net Internet Services v. A+ Hosting Inc.,
WIPO Case No. D2006-0703 (October 26, 2006). Here, the Complainant has submitted undisputed evidence that the Complainant and its founder have used HPR in commerce since 1983 in connection with professional energy trading services, and that HPR is recognized and relied upon by consumers in the energy trading business as exclusively identifying the Complainant’s services. This evidence includes the sworn affidavits of Robert Halper, President of the Complainant, William Nugent, an energy futures trader and member of NYMEX, and Ed Mandelbaum, a former member of NYMEX. This evidence is sufficient to establish the Complainant’s common law rights in HPR under United States law.
The Domain Name is confusingly similar to Complainant’s HPR mark because it incorporates the HPR mark in its entirety, and adds only the word “global”, a generic word frequently used in connection with companies that provide international services. See United Parcel Service of America, Inc. v. Shipping Administration,
WIPO Case No. D2002-1162 (February 17, 2003) (addition of the words “overnight” and “packages” to the <upsovernight.com> and <upspackages.com> domain names “reinforces rather than detracts from” the conclusion that they are confusingly similar to the complainant’s UPS mark). The likelihood of confusion is particularly acute because the Domain Name was used in a scam targeted at persons in Australia, who may have been confused into believing that the <hprglobal.com> Domain Name was connected to an international division of HPR Commodities, which is based in New York. Accordingly, the Complainant has met its burden under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
In order to meet the second element, the Complainant should make at least a prima facie showing that the Respondent has no rights or legitimate interests in the Domain Name. Once the Complainant has made a prima facie case, the Respondent should present evidence that the Respondent has rights or legitimate interests. Gerd Petrik v. Johnny Carpela,
WIPO Case No. D2004-1043 (March 4, 2005) (“Complainant has made the necessary assertions regarding any rights or legitimate interests of the Respondent. While not shifting the ultimate burden of proof, these assertions make it incumbent on Respondent to come forward with evidence refuting Complainant’s assertions and establishing Respondent’s rights or interests in the disputed domain name.”); Belupo d.d. v. WACHEM d.o.o.,
WIPO Case No. D2004-0110 (April 14, 2004) (noting that “the element of possible rights or legitimate interests of the Respondent in the domain name involves . . . matters, which are peculiarly within the knowledge of the Respondent”, and that requiring the Complainant to make more than a prima facie showing would impose “the impossible task of proving the negative”).
The Complainant has provided uncontested evidence that it has not authorized or licensed the Respondent to use the Complainant’s HPR mark or to register a Domain Name incorporating the mark. There is no evidence that the Respondent previously conducted a legitimate business under the name HPR or HPR GLOBAL, or has ever been commonly known by HPR, HPR GLOBAL, or the <hprglobal.com> Domain Name. The only instances on the record of the Respondent’s use of the Domain Name are in connection with what appears to be misleading and possibly criminal activity.
Based on the foregoing, the Panel finds that the Complainant has presented a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has not submitted any reply. Accordingly, the Complainant has met its burden under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant contends that the Respondent has registered and is using the Domain Name in bad faith under paragraph 4(b)(iv), by intentionally attempting to mislead Internet users as to the source of the Respondent’s services by creating a likelihood of confusion with the Complainant’s marks and corresponding services. The Complainant contends that the Respondent is doing so for commercial gain and as part of a larger fraudulent scam.
In its Complaint, the Complainant submitted substantial evidence of a scam involving “HPR Commodities Ltd.” and <hprcommodities.com>, which is described in the prior decision involving <hprcommodities.com>. See HPR Commodities LLC v. Rob Harper,
WIPO Case No. D2007-0153 (April 9, 2007). That evidence includes news articles and court pleadings relating to an investigation conducted by the Australian Securities and Investments Commission. Unknown individuals allegedly defrauded investors of over $3.9 million Australian dollars through websites that purported to be connected with the Complainant. The “www.hprcommodities.com” website appeared to be the legitimate website of a “full service commodities, futures, and options brokerage firm” named “HPR Commodities Ltd.”, which was supposedly “registered with the New York Mercantile Exchange (NYMEX) and the New York Petroleum Option Exchange (NYPOE)”. In fact, the record indicates that “HPR Commodities Ltd.” is not a member of NYMEX, and that the New York Petroleum Option Exchange does not even exist. In contrast, the Complainant HPR Commodities LLC is a legitimate company that is a member of NYMEX. The <hprcommodities.com> domain name was registered by “Rob Harper”, which appears to be a misspelling of “Robert Halper”, the principal of Complainant HPR Commodities. Rob Harper’s address was listed as “ Charlton Street, New York”, which appears to be a fictional address that does not exist.
In response to Procedural Order No. 1, the Complainant has submitted additional, unrebutted evidence connecting <hprglobal.com> to the “HPR Commodities” scam. Specifically, the Complainant has provided evidence that links the registration of the Domain Name to a pattern of registrations following the suspension of <hprcommodities.com>. This evidence indicates that shortly after <hprcommodities.com> and <hpr-commodities.com> were suspended, the Respondent, John Galledo, registered both the <hprcommodities.us> domain name and the <hprglobal.com> Domain Name on the same day. The <hprcommodities.us> registration was made using the same fictional addresses listed in the <hprcommodities.com> and <hpr-commodities.com> registrations. The <hprglobal.com> registration listed a different address, “1 North End Avenue, Suite 665 Ѕ, New York, NY rty456”, which corresponds to the street address (but not the suite number or zip code) of the Complainant. Thus, even though the <hprglobal.com> and <hprcommodities.us> registrations listed a different registrant (John Galledo instead of Rob Harper), they appear to have been made by the same person or persons who had previously registered the <hprcommodities.com> and <hpr-commodities.com> domain names.
In addition, the Complainant has submitted evidence that the Respondent’s name, “Galledo” is similar to the last name of one of the Complainant’s employees, who provided his name to an unknown caller from Australia shortly before the Domain Name was registered. The Complainant has also provided evidence that the <hprglobal.com> Domain Name appeared on a database of fraudulent bank websites dated November 30, 2006.
The Complainant has also submitted evidence that the Domain Name was used in an email address and as part of other contact information provided to an alleged victim of the scam.
Based on the evidence summarized above, the Panel concludes that the <hprglobal.com> Domain Name was part of the same fraudulent scheme summarized in the prior decision involving the <hprcommodities.com> domain name, and that the Complainant has met its burden of showing that the Domain Name was registered and used in bad faith.
Previous WIPO UDRP panels have found bad faith use based on a showing that a respondent was engaged in a fraudulent scheme aimed at misleading Internet users. Western Union Holdings, Inc. v. XYZ a/k/a Chahat Topiwala,
WIPO Case No. D2005-0945 (October 20, 2005) (bad faith where the respondent used the domain name to masquerade as the complainant as part of a fraudulent scheme to solicit monetary deposits to a sham banking institution). Such use includes use of the Domain Name as part of an email address. Bank for International Settlements v. James Elliott,
WIPO Case No. D2003-0987 (March 3, 2004) (bad faith where emails emanating from the disputed domain name purported to represent that a large amount of money would be paid to the recipient upon provision by the recipient of personal information).
Bad faith is also evidenced by the Respondent’s use of false registration information. As noted, there is some evidence that the Respondent’s name, John Galledo, may be a fictitious name based on the surname of one of the Complainant’s employees. Moreover, the New York postal address included in the Respondent’s Domain Name registration, in addition to linking the registration to the Complainant, is not a valid address. “1 North End Avenue” is the address of the NYMEX building where the Complainant has an office. Suite “665 Ѕ” does not exist, nor does the “rty456” zip code. The Respondent’s submission of false registration information reinforces the conclusion that the Domain Name was registered and used in bad faith. Western Union Holdings, Inc. v. XYZ a/k/a Chahat Topiwala,
WIPO Case No. D2005-0945 (October 20, 2005) (failure to maintain accurate contact information another indication of the respondent’s bad faith); United Parcel Service of America, Inc. v. Shipping Administration,
WIPO Case No. D2002-1162 (February 17, 2003) (failure to provide or maintain accurate contact information evidence of bad faith).
The Domain Name does not currently resolve to an active website, and it is not known whether it ever resolved to an active website. This is not surprising, given that the Domain Name was suspended as of November 10, 2007—one day after the Domain Name was registered. In any event, it does not matter whether the Domain Name resolved to an active website, as the passive holding of a Domain Name does not preclude a finding of bad faith. Telstra Corporation Limited v. Nuclear Marshmallows,
WIPO Case No. D2000-0003 (February 18, 2000).
In sum, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <hprglobal.com> be transferred to the Complainant.
Grant L. Kim
Dated: May 26, 2007