WIPO Domain Name Decision D2019-0512 for ptwisium.com
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION NEOVIA v. WhoIs Guard Protected / Thomas Sal Case No. D2019-0512 1. The Parties
The Complainant is NEOVIA of Saint-Nolff, France, represented by Innis Law Group LLC, United States of America (“United States”).
The Respondent is WhoIs Guard Protected of Panama, Panama / Thomas Sal of Bergen, Norway. 2. The Domain Name and Registrar
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 March 5, 2019. On March 6, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 6, 2019, 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 March 7, 2019, 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 March 14, 2019.
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 March 15, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 4, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 5, 2019.
The Center appointed Ian Blackshaw as the sole panelist in this matter on April 10, 2019. 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 was founded in 1954 and is now an international multibillion-dollar company with over 8,200 employees and seventy-five production sites serving customers in more than twenty-eight countries around the world.
For over sixty years, the Complainant has been a major global provider in animal health and animal nutrition solutions, with a global presence across Europe, North America, South America, Asia, and Africa.
In 2017, the Complainant had global sales of EUR 1,7 billion.
The Complainant owns numerous worldwide trademark registrations of its WISIUM trademark (the “WISIUM Mark”).
The WISIUM Mark is considered the Complainant’s Masterbrand for its pre-mix and firm-services business. Since 2017, the WISIUM Mark has been registered in the United States for the following goods and services:
- Class 05 – non-medicated additives for animal feed for use as nutritional supplements, namely, nutritional additives for foodstuff for livestock and horses, as well as for pets solely when intended for incorporation into their products by manufacturers of pet food; nutritional supplements and non-medicated additives for animal feed for use as nutritional supplements for livestock and horses, namely, dietary supplements made with trace elements, vitamins, minerals; veterinary products for the care of livestock and horses, namely, greases for veterinary purposes; sanitary products for livestock and horses, namely, disinfectants for livestock and horses;
- Class 31 – foodstuff for livestock and horses, as well as for pets solely when intended for incorporation into their products by manufacturers of pet food, namely, animal feed; products for animal litter and drying products for livestock litter, namely litter peat;
- Class 44 – consulting services relating to agriculture, namely, agricultural advice; consulting services in the field of veterinary services, namely, advice and assistance relating to animal food and animal health and hygiene.
The Panel has been provided with a copy of the United States Certificate of Registration for the WISIUM Mark.
Additionally, the Complainant owns numerous worldwide registrations of the WISIUM Mark that cover a wide range of goods and services. A representative list of those registrations has been provided to the Panel.
The goods and services offered under the WISIUM Mark are present in over fifty countries around the world. The Complainant currently manufactures over thirty-million tons of feed to be sold under the WISIUM Mark for over one-thousand industrial customers. As a result of promoting the WISIUM Mark and its extensive use of the WISIUM Mark, the Complainant has built an enhanced international reputation and goodwill in the WISIUM Mark.
The Complainant also owns the domain name including its sub-domain name .
The domain name and the sub-domain name were adopted, registered and are currently used by the Complainant in connection with its WISIUM products and services, including animal nutrition and premixes.
The Complainant also maintains an extensive on-line presence for its WISIUM goods and services through the website at . Screenshots of the domain name and the sub-domain name have been provided to the Panel.
The “www.” website allows consumers to read about the worldwide presence of the Complainant’s WISIUM goods and services. The website describes the Complainant’s products offered under the WISIUM Mark and provides customers with the latest news on the Complainant and the goods/services offered under its WISIUM Mark.
The “www.” website is an integral part of the Complainant’s business that allows consumers from around the world to learn about the Complainant and its goods/services sold under the WISIUM Mark. The site also allows consumers to conduct business with the Complainant from anywhere in the world. Through sub-domains, the “www.” website appears in different languages to better serve the Complainant’s customers and potential customers around the world. Furthermore, the domain name and sub-domain name are used by the Complainant’s employees in their email communications to clients and other employees. The sub-domain name is relevant to this proceeding because it is virtually identical to the disputed domain name that the Respondent has registered.
The Complainant also maintains an extensive online presence for itself and its WISIUM goods and services on Twitter, LinkedIn, and YouTube. Screenshots of the Complainant’s social media presence, including for its WISIUM products, have been provided to the Panel.
The disputed domain name was registered on February 13, 2019 and according to the evidence provided by the Complainant has been used to send fraudulent emails. 5. Parties’ Contentions A. Complainant
The Complainant makes the following assertions:
The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights
Similarity of the disputed domain name and the WISIUM Mark.
The disputed domain name is necessarily visually confusingly similar to the WISIUM Mark. It is established that “the prominent presence of a recognizable trademark in a domain name is sufficient to amount to confusing similarity with the trademark, irrespective of any dilution with other words or letters”. Osram Sylvania, Inc. v. Jason Blevins,WIPO Case No. D2009-0233.
Here, the disputed domain name completely and entirely incorporates the Complainant’s well-known WISIUM Mark and the WISIUM portion of the disputed domain name is clearly the most prominent part. Moreover, the inclusion of “pt” greatly increases the confusing similarity given the Complainant’s strong worldwide presence and use of its sub-domain name.
In fact, the disputed domain name could easily be mistaken for the Complainant’s website and only differs by the inclusion of a period between the “pt” and “WISIUM.”
The disputed domain name and the WISIUM Mark are also phonetically and conceptually similar. As previously mentioned, the WISIUM Mark is fully encompassed by the disputed domain name. As a result, they are necessarily phonetically similar with the only difference being the non-distinctive “pt.” Both the WISIUM Mark and the disputed domain name consist of six identical letters in the same order with no punctuation. It has been held that “the absence of a punctuation mark can be regarded as excluded for convenience and is only a slight change that does not alter the impression of the disputed domain name”. Carver Korea Co., Ltd. v. cai jiang nan cai jiang nan, cai jiang nan,WIPO Case No. D2016-0978. As a result, the disputed domain name and the WISIUM Mark should be treated as conceptually identical.
As discussed, the disputed domain name could easily be mistaken for the Complainant’s domain name and sub-domain name . Thus, the inclusion of “pt” only serves to increase the confusion with the Complainant’s WISIUM Mark.
Additionally, employees of the Complainant use “pt.” in the email addresses for legitimate communications within the business and to the Complainant’s customers. For example, the “[...]@pt.” email is used by the Complainant to communicate with its customers regarding services offered under the WISIUM mark.
As set forth in more detail below, the Respondent deliberately registered the disputed domain name and illegally used the WISIUM Mark and to cause confusion as to the source of the emails in order to fraudulently obtain the recipient’s banking information. Specifically, the Respondent is using the disputed domain name to impersonate multiple employees of the Complainant in an attempt to defraud the Complainant in connection with its unauthorized use of the WISIUM Mark and in violation of numerous civil and criminal laws.
Given the clear, visual, phonetic, and conceptual similarities, the Respondent’s disputed domain name is identical or confusingly similar to the Complainant’s WISIUM Mark.
The Respondent has no rights or legitimate interests in respect of the disputed domain name
The Complainant has not licensed or otherwise permitted the Respondent to use its WISIUM Mark or register the disputed domain name.
Further, upon information and belief, the Respondent is not nor has ever been commonly known, either as a business, individual, or an organization, by the disputed domain name.
Additionally, upon information and belief, the Respondent is not exercising a legitimate non-commercial or fair use of the disputed domain name without intent for commercial gain. Instead, the Respondent is using the disputed domain name to impersonate employees of the Complainant, including the Complainant’s General Director and Director of Finance, in violation of civil and criminal laws, in order to fraudulently obtain the recipients’ banking information.
Furthermore, upon information and belief, the Respondent does not use, nor has made preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.
The disputed domain name does not contain any content associated with a bona fide business but rather is a holding page. Screenshots of the disputed domain name have been provided to the Panel.
On the contrary, and as described in more detail below, the Respondent has deliberately adopted the disputed domain name and is now using it and the WISIUM Mark to intentionally trade on the goodwill of the Complainant’s WISIUM Mark and business reputation by impersonating multiple employees of the Complainant in email communications in an attempt to gain customer banking information.
The record shows that the Respondent has no rights or legitimate interests in the disputed domain name.
The disputed domain name was registered and is being used in bad faith
The f