WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Novagold Resources Inc. v. WhoisGuard Protected, WhoisGuard, Inc. / Usa capital

Case No. D2021-0139

1. The Parties

The Complainant is Novagold Resources Inc., Canada, represented by Cassels Brock & Blackwell, LLP, Canada.

The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Usa capital, United States of America.

2. The Domain Name and Registrar

The disputed domain name <novagoldcorp.com> (the “Disputed Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 19, 2021. On January 19, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 19, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 20, 2021 providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on January 20, 2021.

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” 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 January 21, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 10, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 11, 2021.

The Center appointed Braun, Lynda M. as the sole panelist in this matter on February 19, 2021. 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. Following the appointment of the Panel, the Respondent submitted an informal communication on February 22, 2021 to the Center and the parties, which was then sent to the Panel. The Panel has decided not to take the communication into consideration when rendering a decision in this proceeding. See paragraph 10(d) of the Rules.

4. Factual Background

Founded in 1984, the Complainant is a public company listed on the New York Stock Exchange and the Toronto Stock Exchange. The Complainant explores, develops, and secures investments in major mining properties.

The Complainant is the owner of numerous trademark registrations for use in association with mining services, geophysical exploration for the mining industry and technical supervision and inspection in the field of geological mining, including, but not limited to: NOVAGOLD, Canadian Trademark Registration No. TMA868037, registered on December 30, 2013, with March, 1987 as its first use in commerce; and NOVAGOLD, United States Trademark Registration No. 4,574,621, registered on July 29, 2014, with March, 1987 as its first use in commerce (hereinafter referred to collectively as the “NOVAGOLD Mark”).

The Complainant hosts and operates the domain name <novagold.com>, which resolves to its official website at “www.novagold.com”. The NOVAGOLD Mark appears prominently at the top of each webpage on the Complainant’s website. Since at least as early as June 26, 2007, the Complainant has used its website to communicate with prospective and existing clients and investors about their mining operations and the related investment opportunities. The website provides information about the Complainant and its projects and includes “Business Plan”, “About us”, “Investors” and “Management” tabs. The Complainant also maintains a strong online presence through the extensive use of social media, including Facebook and Twitter.

The Disputed Domain Name was registered on July 20, 2020. The Disputed Domain Name resolves to a website that is almost indistinguishable from the Complainant’s official website and thus, the Respondent is passing itself off as the Complainant in order to perpetuate a fraudulent phishing scheme aimed at the Complainant’s clients and potential investors. The Respondent is impersonating the Complainant to solicit investments from unsuspecting consumers who believe that they are communicating with the Complainant. The Respondent’s resolving website also includes the identical tabs as those listed above that are part of the Complainant’s website, and also uses and reproduces the same photographs found on the Complainant’s website.

5. Parties’ Contentions

A. Complainant

The following are the Complainant’s contentions:

- the Disputed Domain Name is confusingly similar to the Complainant’s NOVAGOLD Mark;

- the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and,

- the Disputed Domain Name was registered and is being used in bad faith.

The Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy.

B. Respondent

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

6. Discussion and Findings

In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)(i-iii)):

(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.

A. Identical or Confusingly Similar

This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark. The Panel concludes that the Disputed Domain Name is confusingly similar to the NOVAGOLD Mark as set forth below.

The Complainant has established rights in the NOVAGOLD Mark based on its years of use as well as its registered trademarks for the NOVAGOLD Mark in Canada and the United States. The general consensus is that “registration of a mark is primafacie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive”. See CWI, Inc. v. Domain Administrator c/o Dynadot, WIPO Case No. D2015‑1734. The Respondent has not rebutted this presumption, and therefore the Panel finds that the Complainant has enforceable rights in the NOVAGOLD Mark.

The Disputed Domain Name <novagoldcorp.com> consists of the NOVAGOLD Mark followed by the dictionary term “corp”, the abbreviation for “corporation”, and then followed by the generic Top-Level Domain (“gTLD”) “.com”. When a disputed domain name incorporates the entirety of a trademark, the disputed domain name will generally be considered confusingly similar to that mark for purposes of UDRP standing. See the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. Here, the Disputed Domain Name contains the Complainant’s NOVAGOLD Mark in its entirety and thus, the Disputed Domain Name is confusingly similar to the NOVAGOLD Mark.

Moreover, as stated 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 (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”. For example, numerous UDRP decisions have reiterated that the addition of a dictionary word, such as “corp” to a trademark is insufficient to prevent a finding of confusing similarity. See Applied Materials Inc. v. Contact Privacy Inc. Customer 0152257585 / Name Redacted, WIPO Case No. D2019-1116 (“The term ‘inc’ refers to a form of corporate entity commonly used in business. Addition of that term to Complainant’s trademark in the disputed domain name does not prevent a finding of confusing similarity between Complainant’s trademark and the disputed domain name.”).

Finally, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well established that such element may be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012‑0182 and WIPO Overview 3.0, section 1.11. In sum, the Panel finds that the Disputed Domain Name is confusingly similar to the NOVAGOLD Mark.

B. Rights or Legitimate Interests

Under the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of production of evidence that demonstrates rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1.

In this case, the Panel finds that the Complainant has made out a prima facie case. The Respondent has not submitted any arguments or evidence to rebut the Complainant’s prima facie case. The Complainant has not authorized, licensed, or otherwise permitted the Respondent to use its NOVAGOLD Mark. Nor does the Complainant have any type of business relationship with the Respondent and there is no evidence that the Respondent is commonly known by the Disputed Domain Name or by any name similar to it. The Panel finds that nothing on the record before it would support a finding that the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name

Based on the use made of the Disputed Domain Name to resolve to a website that impersonates the Complainant’s official website in an attempt to deceive consumers into believing that they have reached a website that is operated or endorsed by or otherwise affiliated with the Complainant, the Panel finds that the Respondent is not making a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Disputed Domain Name. See MasterCard International Incorporated v. Dhe Jonathan Firm, WIPOCase No. D2007-0831 (finding that the act of linking the respondent’s impersonating website to the complainant’s official website was not a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name).

Finally, the composition of the Disputed Domain Name, comprising the entirety of the NOVAGOLD Mark followed by the dictionary term “corp”, the abbreviation for “corporation”, carries a high risk of implied affiliation and cannot constitute fair use here, as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. See WIPO Overview 3.0, section 2.5.

Thus, the Panel finds that the second element of paragraph 4(a) of the Policy has been met by the Complainant as the Respondent lacks rights or legitimate interests in respect of the Disputed Domain Name.

C. Registered and Used in Bad Faith

The Panel finds that based on the record, the Complainant has demonstrated the Respondent’s bad faith registration and use of the Disputed Domain Name pursuant to paragraph 4(a)(iii) of the Policy.

First, the Disputed Domain Name was registered years after the Complainant first began using the NOVAGOLD Mark. The Panel finds it likely that the Respondent had the Complainant’s NOVAGOLD Mark in mind when registering and using the Disputed Domain Name, demonstrating bad faith.

Second, the registration of a domain name that is confusingly similar to a trademark by an entity that has no relationship to that mark may be sufficient evidence of opportunistic bad faith. See Ebay Inc. v. Wangming, WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163. Based on the circumstances here, the Panel finds that the Respondent registered and is using the Disputed Domain Name in bad faith to target the Complainant’s NOVAGOLD Mark for financial gain.

Third, by registering and using the Disputed Domain Name, the Respondent has exhibited bad faith. Specifically, the Respondent intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s impersonating website by creating a likelihood of confusion with the Complainant’s name and NOVAGOLD Mark as to the source, sponsorship, affiliation, or endorsement of those emails. The Respondent is using the Disputed Domain Name to operate a phishing scheme aimed at defrauding the Complainant and its customers. “Panels have held that the use of a domain name for purposes other than to host a website may constitute bad faith. Such purposes include sending email, phishing, identity theft, or malware distribution. […] Many such cases involve the respondent’s use of the domain name to send deceptive emails, e.g., to obtain sensitive or confidential personal information from prospective job applicants, or to solicit payment of fraudulent invoices by the complainant’s actual or prospective customers.” See WIPO Overview 3.0, section 3.4.

Finally, the website to which the Disputed Domain Name resolves is a reproduction and impersonation of the Complainant’s official website and has numerous indicia demonstrating how the Respondent is passing itself off as the Complainant to further its illegitimate enterprise. For instance, the Respondent uses: (i) the Complainant’s NOVAGOLD trademark on the Respondent’s website; (ii) the verbatim reproduction of portions of the Complainant’s website; and (iii) photographs copied without permission from the Complainant’s website that the Respondent has placed on its resolving website and that demonstrate that the Respondent is likely liable for trademark and copyright infringement, all of the foregoing indications of bad faith.

Based on the above, the Panel finds that the third element of paragraph 4(a) of the Policy has been met by the Complainant and that the Respondent registered and is using the Disputed Domain Name 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 Name <novagoldcorp.com> be transferred to the Complainant.

Braun, Lynda M.
Sole Panelist
Date: March 5 2021