The Complainant is TBWA Worldwide, Inc. of New York, United States of America, represented by SafeNames Ltd., United Kingdom of Great Britain and Northern Ireland.
The Respondent is John Mcneel of California, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Melbourne IT Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 7, 2011. On September 7, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 8, 2011, 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 Complainant filed its amended Complaint on September 20 and 22, 2011.
The Center verified that the Complaint together with the amended Complaints 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 26, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 16, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 20, 2011.
The Center appointed William F. Hamilton as the sole panelist in this matter on November 3, 2011. 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 a well-known, international advertising agency founded in 1976. The Complainant has more than 250 offices in 77 countries. The Complainant owns numerous trademark registrations for the mark TBWA including registrations in the European Union and the United States dating back to at least 1999.
The disputed domain name was registered on November 15, 2010. 5. Parties’ Contentions A. Complainant
The Complainant asserts that the registration of the disputed domain name is part of an incipient fraudulent scheme. The Complainant speculates, based on other reported incidents in the advertising industry, that the Respondent may have ultimately been seeking to place on the Complainant's partner's and customer's websites banner advertisements that downloaded "drive by" malware. The Complainant asserts that the Respondent registered the disputed domain name that is confusingly similar to Complainant's trade mark and then, utilizing the disputed domain name, sent a fraudulent email purportedly from one of the Complainant's executives to the Complainant's business partner about one of the Complainant's customers. The Respondent's name is, according to the Complainant, a theft of the identity of one of the Complainant's executives. The Complainant contends that the Respondent registered and used the disputed domain name to disrupt or interfere with the Complainant's business and to benefit commercially from the scheme. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy articulates three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and to obtain relief. These elements are:
i) The respondent’s 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 domain name, and
iii) The respondent’s domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The disputed domain name is confusingly similar to the Complainant's TBWA mark. The disputed domain name incorporates the mark entirely and merely adds the suffix "agency." It is long established that bracketing a registered mark of international renown with generic prefixes and suffixes is insufficient to avoid confusing similarity. Indeed the addition of suffixes, such as in the instant case, can increase the likelihood of confusion. EAuto, L.L.C. V. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047. The Panel finds that the Complainant has satisfied the requirements of Policy paragraph 4(a)(i). B. Rights or Legitimate Interests
The Respondent's website is marked as "Under Construction." The Complainant specifically avers that the Complainant has never licensed nor authorized the Respondent to utilize the Complainant's mark or to utilize the disputed domain name. There is no evidence that the Respondent has engaged in any bona fide business under the disputed domain name. The Respondent has failed to answer the Complaint and while the burden remains with the Complainant to establish each element under the Policy, the Respondent's failure to respond to the Complaint is a factor the Panel may consider. Moreover, the circumstances discussed below strongly suggest that there is no bona fide commercial or noncommercial use of disputed domain name by the Respondent. The Panel finds that the Respondent does not have any rights or legitimate interests in the disputed domain name and that the Complainant has satisfied the requirements of Policy paragraph 4(a)(ii). General Motors Corporation and General Motors of Canada Limited v. Andre Rheaume,WIPO Case No. D2004-0664. C. Registered and Used in Bad Faith
The evidence submitted by the Complainant, although not conclusive, is sufficient to establish for the purposes of this proceeding that the domain name was registered and is being used in bad faith. While the disputed domain name resolves to a website "Under Construction," the use of the disputed domain name in a bogus email sent by an unidentified person who misappropriated the name of one of the Complainant's executives is sufficient to give rise to a presumption of bad faith registration and use. While the outline and structure of the Respondent's scheme can only be sketchily outlined, the registration and use of a confusingly similar domain name in order to deceive the Complainant's business partners and customers for whatever reason is clearly sufficient to meet the requirements of the Policy. The Panel finds on the evidence presented that the disputed domain name was registered and is being used in bad faith to disrupt or interfere with the Complainant's business. The Panel finds that the Complainant has satisfied the requirements of Policy paragraph 4(a)(iii). 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 domain name be transferred to the Complainant.
William F. Hamilton
Sole Panelist
Dated: November 17, 2011
Full & Egal Universal Law Academy