WIPO Domain Name Decision D2019-2131 for wescoiar.com
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Wesco Aircraft Hardware Corp. v. Contact Privacy Inc. Customer 1245095601 / Gulf Guns and Gear Case No. D2019-2131 1. The Parties
Complainant is Wesco Aircraft Hardware Corp., United States of America (“United States”), represented by Umberg Zipser LLP, United States.
Respondent is Contact Privacy Inc. Customer 1245095601, Canada / Gulf Guns and Gear, United States. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Google LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 30, 2019. On September 2, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 Complainant on September 3, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant did not file an amendment to the Complaint.
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 Respondent, through all the contact information known to the Center, of the Complaint, and the proceedings commenced on September 11, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 1, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 2, 2019.
The Center appointed John C. McElwaine as the sole panelist in this matter on October 9, 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
Complainant is a California corporation and is a global distributor of products for the aerospace industry.
Complainant owns a United States trademark registration for the mark WESCO AIR, registered on August 18, 2015, with Registration No. 4795365, reciting, “distributorships featuring aerospace components and aircraft installation tooling, air craft hardware and fastener; wholesale services, namely, online store services and catalog services featuring aerospace components and aircraft installation tooling; presentation of goods, namely, aerospace components and aircraft installation tooling on communication media, for wholesale and retail purposes; advertising and business services including on-line services, in particular inventory management and the bringing together for the benefit of others a variety of goods, in particular aerospace components and aircraft installation tooling, enabling customers to conveniently view and purchase such products; organization of exhibitions for commercial or advertising purposes, in particular for aerospace components and for aircraft installation tooling; wholesale services, namely, online store services and catalog services featuring tooling designed for the installation of aerospace hardware and drilling and miscellaneous tools designed for use in aircraft manufacturing maintenance.”
Respondent’s identity was hidden by the Registrar’s privacy service. The Domain Name was registered on July 19, 2019. The Domain Name does not resolve to an active website, but has been used to send fraudulent emails. 5. Parties’ Contentions A. Complainant
Complainant alleges that it was founded in 1953 and has been using the mark WESCO AIR since at least as early as March 17, 2014. Complaint asserts to be known in the aerospace industry as one of the world’s leading distributors and providers of comprehensive supply chain management services to the global aerospace industry.
Complainant is the owner of the above-referenced United States trademark registration for the mark WESCO AIR, Registration No. 4765365 (the “WESCO AIR Mark”). In addition, Complainant alleges that it owns the domain name and United States Trademark Registration Nos. 2521481; 3924965; and 5111216, all for WESCO AIRCRAFT, and United States Trademark Registration No. 4372149 for WA WESCO AIRCRAFT + design.
Complainant contends that Respondent registered the Domain Name on July 19, 2019, and shortly thereafter began sending emails to Complainant’s customers to perpetrate a fraud scheme. Specifically, it is alleged that Respondent deliberately chose a visually similar domain name to Complainant’s own domain name and Complainant’s WESCO AIR Mark in an attempt to cause Complainant’s third party customers to send money to Respondent or its agents by making false claims in emails to said customers. Complainant provided copies of purported fraudulent emails that included a signature block that contains the correct email address of Complaint and contact information of an actual employee of Complainant, but the email originated from the Domain Name controlled by Respondent.
With respect to the first element of the Policy, Complainant asserts that the Domain Name is virtually identical to the WESCO AIR Mark, except that the Domain Name changes the order of the letters “a” and “i” in the word “air”. Complainant claims that the Domain Name consisting of the word “wescoiar” is confusingly similar to the WESCO AIR Mark and Complainant’s domain name. Complainant further points out that the Domain Name is a common typographical error in the spelling of Complainant’s WESCO AIR Mark.
Addressing the second element of the Policy, Complainant reiterates that Respondent registered the Domain Name for the purpose of impersonating Complainant and perpetrating a fraud. Complainant claims that there is no evidence to suggest that Respondent has been commonly known by the Domain Name, and there is no justification or apparent need for Respondent to use “wescoiar” in the Domain Name other than to confuse email recipients. Complainant contends that Respondent must have been aware of Complainant and the WESCO AIR Mark when registering the Domain Name because Respondent has intentionally used the Domain Name to unfairly take advantage of Complainant’s customers by capitalizing on Complainant’s goodwill and reputation. Moreover, Complaint asserts that Respondent’s use of the Domain Name is not in connection with any bona fide offering of goods or services or any legitimate noncommercial purpose or fair use.
Lastly, regarding the third element of the Policy, Complainant contends that the Domain Name was registered in bad faith, which is evidenced by Respondent registering the Domain Name after Complainant applied for the Wesco Air Mark with the United States Trademark Office, and by registering the Domain Name to be used to send fraudulent emails. Complainant asserts that Respondent acted in bad faith by purposefully creating a likelihood of confusion with the WESCO AIR Mark as to the source, sponsorship, affiliation, or endorsement of the email source. Complainant further asserts that due to the recognition of the WESCO AIR Mark, it is inconceivable that Respondent was not aware of Complainant’s WESCO AIR Mark at the time it registered the Domain Name, since Respondent was impersonating Complainant in its emails.
Likewise, with respect to bad faith use of the Domain Name, Complainant asserts that Respondent is acting in bad faith by purposefully creating a likelihood of confusion with the WESCO AIR Mark as to the source, sponsorship, affiliation, or endorsement of the email source, which may also cause damage to Complainant’s reputation. In addition, Complainant asserts that Respondent may continue use of the Domain Name in connection with fraudulent activities in the future and/or sell the Domain Name to a third party who could use it for the same malicious purposes. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Even though Respondent has defaulted, paragraph 4 of the Policy requires that, in order to succeed in this UDRP proceeding, Complainant must still prove its assertions with evidence demonstrating:
(i) the Domain Name is identical