Complainant is Terex Corporation of Westport, Connecticut, United States of America (“United States”), represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States.
Respondent is Williams Sid, Partners Associate of Bassett, Southampton, United Kingdom of Great Britain and Northern Ireland “United Kingdom”). 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 7, 2014. On October 7, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 8, 2014, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 13, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 2, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 3, 2014.
The Center appointed Ross Carson as the sole panelist in this matter on November 7, 2014. 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.
On October 15, 2014 the Center received an email from Ms. […] advising that she had been informed that a proceeding had been commenced against Respondent on October 13, 2014. She advised the Center; “I am sure that this is not a right complaint for me.” She informed the Center that she was not the owner of the disputed domain name and someone had provided her address, a hall in a university she had moved into three weeks previously.
On October 17, 2014 the Center forwarded an email to Ms. […] in response advising that the Center must advise Respondent (the Rules, paragraph 1) as well as those persons or entities whose addresses have been supplied by the concerned Registrar (Rules, paragraph 2(a)(i)) that a proceeding has been commenced relating to the disputed domain name under the UDRP. The Center also informed that the respondent in a UDRP proceeding means the holder of a domain name registration against which a complaint is initiated. Further, the Center informed Ms. […] that it is the role of the Panel on appointment to make a substantive assessment on the merits of her claims and/or evidence in this regard.
The Panel has reviewed the WhoIs information on file; the information provided by the concerned Registrar; the correspondence between Ms. […] and the Center, and information relating to notification of the named persons who are required to be informed that a proceeding has been commenced. The Panel concludes following the review that on the basis of the evidence on the file that Ms. […] is not the holder of the disputed domain name and consequently not Respondent in this action. 4. Factual Background
Complainant and its parent company, Genie Industries, Inc., sell ,rent and distribute a broad range of construction and handling equipment including all terrain cranes, rough terrain cranes, carrier-mounted hydraulic cranes, telescoping boom cranes, industrial cranes, aerial work platforms, construction boom lifts, knuckle boom lifts, scissor lifts, container handlers, stackers, truck-mounted aerial lifts, digger derricks and replacement parts therefor; and truck cranes, boom trucks, bucket trucks, aircraft de-icing trucks and structural parts therefor in the United States and many other countries throughout the world in association with its trademark TEREX.
Complainant is the owner of the following trade mark registrations for TEREX on the principal register in the United States:
Registration No.1347216, registered on July 9, 1985, for the goods and services: equipment for moving earth, rock, coal, ore, and timber-namely, haulers, scrapers, front end loaders, wheel dozers and crawler dozers. First use: October 11, 1968. First use in commerce: October 11, 1968.
Registration No. 2156535, registered on May 12, 1998, for the goods and services: all terrain cranes, rough terrain cranes, carrier-mounted hydraulic cranes, telescoping boom cranes, industrial cranes, aerial work platforms, construction boom lifts, knuckle boom lifts, scissor lifts, container handlers, stackers, truck-mounted aerial lifts, digger derricks and replacement parts therefor; and truck cranes, boom trucks, bucket trucks, aircraft de-icing trucks and structural parts therefor. First use: September, 1995. First use in commerce: September, 1995.
Complainant is also the registrant of the domain name created on November 2, 1995, which Complainant uses in connection with a website about its products and services.
The disputed domain name was registered on August 31, 2014. 5. Parties’ Contentions A. Complainant A.1. Identical or Confusingly Similar
Complainant is the owner of the two federal trademark registrations for the trademark TEREX in the United States particulars of which are provided in Section 4 immediately above. As can be seen from the particulars of the registrations, Complainant’s registered trademarks for TEREX have been registered since 1985 and 1998 respectively, decades before Respondent created the disputed domain name.
Complainant states that previous panels under the Policy have found that Complainant has rights in the TEREX Trademark. Terex Corporation and Genie Industries, Inc. v. Powko Industries LLC, WIPO Case No. D2010-1468 (transfer of, inter alia, , and ); and Terex Corporation v. Texas International Property Associates - NA NA, WIPO Case No. D2008-0733 (transfer of ).
Complainant submits that the disputed domain name is confusingly similar to Complainant’s registered TEREX trademarks. The disputed domain name incorporates Complainant’s trademark TEREX in its entirety, adding only a hyphen and the generic term: “us”.
Complainant further submits that the relevant comparison is to be made with the second-level portion of the disputed domain name only (i.e., “terex-us”), as it is well-established that the top-level domain (i.e., “.com”) should be disregarded for this purpose.
See, Hoffmann-La Roche Inc. v. UrProxy Domains, WIPO Case No. D2007-0456 (“the relevant comparison to be made is with the second-level portion of each of the Domain Names only […], as it is well-established that the top-level domain names […] should be disregarded for this purpose”).
Complainant submits that where, as here, a disputed domain name wholly incorporates a complainant’s registered trademark, that is sufficient to establish confusing similarity for purposes of the Policy. See, e.g., Old Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (“when a domain name incorporates a complainant’s mark in its entirety, it is confusingly similar to that mark despite the addition of other words”); and Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.
Complainant further submits that, where, as here, the second-level domain contains a complainant’s trademark (“terex”) plus a geographic identifier word “us”, a common abbreviation for “United States”, where Complainant is located and where the fraudulent e-mail using the disputed domain name states that jobs are being offered (“Terex Corporation is having openings for 2014 job employment offer in United States”), previous panels under the Policy have found confusing similarity. See, e.g., Dr. Ing. H.c. F. Porsche AG v. yangyong / Domain Whols Protection Services, WIPO Case No. D2012-1058 (transfer of ); and Lancome Parfums et Beaute et Compagnie v. Shi Jiaqi, WIPO Case No. D2011-0390 (transfer of, inter alia, ).
Complainant submits that the dash (or hyphen) in the disputed domain name is irrelevant for purposes of the Policy, because the presence or absence of punctuation marks such as hyphens cannot on their own avoid a finding of confusing similarity. See, Six Continents Hotels, Inc. v. Georgetown Inc., WIPO Case No. D2003-0214 (hyphens do not “serve to dispel Internet user confusion”). A.2. Rights or Legitimate Interests
Complainant submits that Respondent has no rights or legitimate interests in the disputed domain name. Complainant has never assigned, granted, licensed, sold, transferred or in any way authorized Respondent to register or use the TEREX trademark in any manner. See, Six Continents Hotels, Inc. v. Patrick Ory, WIPO Case No. D2003-0098 (“There is no evidence of any commercial relationship between the Complainant and the Respondent which would entitle the Respondent to the mark. Consequently, the Panel concludes that the Respondent has no rights nor legitimate interests in the Domain Name given there exists no relationship between the Complainant and the Respondent that would give rise to any license, permission or authorization by which the Respondent could own or use the Domain Name.”).
Complainant additionally submits upon information and belief, Respondent has never used, or made preparations to use, the disputed domain name or any name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. Respondent is using the disputed domain name in connection with an employment-related and identity-theft scam, by impersonating Complainant in an effort to obtain personal information from innocent job-seekers.
Complainant further submits that to its knowledge, Respondent has never been commonly known by the disputed domain name and has never acquired any trademark or service mark rights in the disputed domain name and, therefore, Respondent has no rights or legitimate interests in the disputed domain name under paragraph 4(c)(ii) of the Policy. According to the WhoIs record, the registrant of the disputed domain name is “Williams Sid, Partners Associate” — not “Terex” or any variation thereof. As found by the panel in Alpha One Foundation, Inc. v Alexander Morozov, NAF Claim No. 76638; “This fact, combined with the lack of evidence in the record to suggest otherwise, allows the panel to rule that Respondent is not commonly known by the disputed domain name or any variation thereof pursuant to Policy ¶ 4(c)(ii).”. In addition, given Complainant’s established use of the TEREX trademark for more than 45 years, it is exceedingly unlikely that Respondent is commonly known by this trademark. See, Six Continents Hotels, Inc. v. Trasporto di Networ and Pro Intel, WIPO Case No.D2004-0246 (“given the Complainant’s established use of its [...] marks, it is unlikely that the Respondents are commonly known by any of these marks”).
Complainant submits that, to its knowledge, Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish Complainant’s TEREX trademark, and, therefore, has no rights or legitimate interests in the disputed domain name under paragraph 4(c)(iii) of the Policy. Rather, Respondent has made an illegitimate, commercial, unfair use of the disputed domain name, with intent for commercial gain misleadingly to divert consumers. Specifically, Respondent is using the disputed domain name in connection with an employment-related and identity-theft scam, by impersonating Complainant in an effort to obtain personal information from innocent job-seekers.
Complainant further submits that in previous disputes involving facts nearly identical to those here, panels found a lack of rights or legitimate interests where respondent used the disputed domain names in connection with employment scams. For example, in Starwood Hotels & Resorts Worldwide, Inc., Sheraton LLC, Sheraton International Inc. v. Isaac Isaac, WIPO Case No. D2011-1275, the panel wrote: “The claimant contends that the respondent is using its SHERATON mark within the disputed domain name solely to facilitate a “phishing” scam whereby applicants for non-existent jobs at the claimant’s hotel in Kuala Lumpur are tricked into divulging personal information and paying large sums of money to the respondent and its associates. Given that the complainant’s adoption and extensive use of the SHERATON trade mark predates the respondent’s registration of the disputed domain name, the burden is on the respondent to establish its rights or legitimate interests in the disputed domain name. The respondent has not demonstrated any such right or legitimate interest.” A.3. Registration in Bad Faith
Complainant submits that an indication of bad faith under the Policy is the fact that Complainant’s use of its TEREX trademark pre-dates Respondent’s registration of the disputed domain name by more than 45 years.See,WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 3.4 (“[w]here a complainant had a United States registered trademark and respondent was located in the United States, this concept has been used in a few cases to support a finding of registration and/or use in bad faith. In those cases, where the complainant’s trademark registration preceded the respondent’s domain name registration, respondent was presumed to have notice of the trademark.”).
Complainant further submits that in addition to using its TEREX trademark for 45 years Complainant is also the registrant of the domain name created on November 2, 1995, which Complainant uses in connection with a website about its products and services.
Complainant additionally submits that Respondent is using the disputed domain name in connection with an employment-related and identity-theft scam, by impersonating Complainant in an effort to obtain personal information from innocent job-seekers. As evidence of this scam; Complainant attached as an annex to the Complaint, a printout of a fraudulent e-mail sent from Respondent on September 11, 2014, to an innocent job-seeker, in which Respondent states, in part:
“Terex Corporation is having openings for 2014 job employment offer in United States [...].
As the Senior Vice President, Human Resources and on behalf of this organization, I am generally wishing to have you as one of our employees and hope that you will find your employment with us satisfactory.
Attached in this mail is the application and interview form, which you have to print out, fill the personal information needed on it with pen and return it to us as attach file by email. This form will be reviewed in the office by the RECRUITMENT DEPARTMENT.
We have also decided to interview you by email. You are to prudently answer the questions attached to this mail and kindly return your answer script together with filled application form within 72 hours of this receipt email [...].”
The fraudulent e-mail was not authorized by Complainant, despite the fact that it is falsely stated that it was sent from “Terex Corporation careers@” and purports to be signed by “[…] / Senior Vice President, Human Resources” (Although Mr. […] is indeed employed by Complainant Terex as Senior Vice President of Human Resources, Mr. […] did not authorize, send or sign this e-mail, and the telephone number in the e-mail is not Mr. […]'s).
Complainant submits that there can be no doubt that Respondent knew of Complainant’s TEREX trademark when it registered the disputed domain name, leading to evidence of bad faith. As set forth above, the TEREX trademark is a well-established, long-registered mark —and Respondent’s use of the disputed domain name is obviously intended to impersonate Complainant. This demonstrates that Respondent must have not only been aware of Complainant’s marks, but even knew of Complainant’s related domain name and constitutes strong evidence of bad faith. See, Six Continents Hotels, Inc. v. Albert Jackson, WIPO Case No. D2003-0922; and Marriott International, Inc. v Momm Amed Ia, NAF Claim No. FA95573. A.4. Domain Name Used in Bad Faith
Under paragraph 4(b)(iv) of the Policy, inter alia, the following circumstances shall be evidence of the use and registration of a domain name in bad faith: by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.
Complainant submits that Respondent has intentionally attempted to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with Complainant’s TEREX trademark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of a product or service on Respondent’s website, in violation of paragraph 4(b)(iv) of the Policy. See, e.g., Six Continents Hotels, Inc. v. Finlaw Agency and ResS, Inc., WIPO Case No.D2002-1159..
Complainant further submits that Respondent’s actions with respect to the disputed domain name are similar to that described in a previous proceeding under the Policy. See, CA, Inc. and Computer Associates Think, Inc. v. Cheryl Jones, WIPO Case No. D2009-1045. In that case, the respondent used domain names that contained the complainant’s trademark as a way to entice job seekers to provide confidential information. There, the Panel said: “The Complainants have set out details of inquiries made and publicly available background information causing them to believe that they have identified a relatively well-known Internet scam upon which the Respondent’s activity is modelled. By this scam an applicant is offered fictitious employment and is induced to pay advance fees, which eventually are lost. The Complainants list a number of Internet websites that exchange information and publicize warnings about such scams.” In finding that such actions constituted bad faith, the panel further wrote: “It is not necessary to know the present Respondent's intentions, had contact with the [job] applicant progressed further. The Panel finds on the facts that the website corresponding to the disputed domain name gave a clear impression of being the “HR” (human resources, or employment) department of “CA Managers”, which Internet users could confuse with the Complainants; that the applicant was induced to visit the site, and was initially caused to be confused into associating it with the Complainants. The Panel finds it implausible, on balance, that the Respondent’s operation behind the Complainants’ trademark could have any other intention than commercial gain. The Panel finds on the balance of probabilities that the Respondent intended to attract Internet users by confusion between the disputed domain name and the Complainants’ trademark for commercial gain within the meaning of paragraph 4(b)(iv) of the Policy.”
Complainant submits that similarly here, Respondent’s actions — using the disputed domain name in connection with an employment-related and identity-theft scam, by impersonating Complainant in an effort to obtain personal information from innocent job-seekers, clearly could cause confusion resulting in Respondent’s commercial gain, within the meaning of paragraph 4(b)(iv) of the Policy.
Complainant submits that indeed, the facts of this case are nearly identical to other proceedings under the Policy involving employment and identity-theft scams — proceedings in which the respective panels found bad faith. See, e.g., ConAgra Foods RDM, Inc. v. Mark Berry, WIPO Case No. D2013-0240, and the decisions cited therein.
Complainant further submits that Respondent also has acted in bad faith pursuant to paragraph 4(b)(ii) of the Policy, because Respondent’s registration of the disputed domain name obviously prevents Complainant from reflecting its mark in a corresponding domain name and because Respondent has “engaged in a pattern of such conduct” as evidenced by a previous decision under the Policy, Roper Industries, Inc. v. Sid Williams, Ropendant Clearance Industries, WIPO Case No. D2014-0904 (transfer of ). Given the similarity of the registrants (“Williams Sid” in the instant case, and “Sid Williams” in Roper Industries, Inc. v. Sid Williams, Ropendant Clearance Industries, supra) and the similarity of the facts (inRoper Industries, Inc. v. Sid Williams, Ropendant Clearance Industries, supra, the panel wrote that “Respondent falsely purports to be Complainant’s Vice President of Human Resources and offers false employment opportunities, in order to obtain personal information from innocent individuals”), Complainant believes that Respondent in the instant case is the same as the respondent in Roper Industries, Inc. v. Sid Williams, Ropendant Clearance Industries, supra. This pattern is further supported by Annex 8, a printout showing that the incorrect telephone number for Mr. […] used by Respondent in the scam email in this case was also used by Respondent in a similar scam email targeting another company, Eaton Corporation. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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.
The fact that Respondent did not submit a Response does not automatically result in a decision in favor of Complainant. The failure of Respondent to file a Response results in the Panel drawing certain inferences from Complainant’s evidence. The Panel may accept all reasonable and supported allegations and inferences following there from in the Complaint as true. Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403. A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, Complainant must establish rights in a trademark and secondly must establish that the disputed domain name is identical to or confusingly similar to the trademark in which Complainant has rights.
Complainant has established that it is the owner of US Trademark Registration No. 1347216 for the word mark TEREX and US Trademark Registration No. 2156535 for the word mark TEREX, particulars of which are provided in Section 4 above. The earlier TEREX mark has been in use in commerce in the United States since October 11, 1968 while the later TEREX mark has been in use in commerce in the United States since September 1995. The disputed domain name was registered on August 31, 2014, decades after Complainant registered and used its TEREX trademarks in the United States.
Previous panels under the Policy have found that Complainant has rights in the TEREX Trademark. See, Terex Corporation and Genie Industries, Inc. v. Powko Industries LLC, supra (transfer of, inter alia, , and ); and Terex Corporation v. Texas International Property Associates - NA NA, supra (transfer of ).
The disputed domain name incorporates Complainant’s trademark TEREX in its entirety, adding only a hyphen, the geographical term “us” and the generic Top-Level Domain (gTLD) description “.com”.
Many UDRP panels have found that domain names are confusingly similar to trademarks when the disputed domain name incorporates the trademark in its entirety. See eBay, Inc v. Progressive Life Awareness Network,WIPO Case No. D2001-0068, (finding that the domain name incorporated the complainant’s mark in its entirety and holding it to be confusingly similar to complainant’s EBAY mark).
The letters “us” in the disputed domain name is a common abbreviation for “United States”, a short form of “United States of America” which is the home country of Complainant and the country in which Complainant’s TEREX trademarks are registered. The use of the abbreviation “us” in the disputed domain name does not serve to distinguish the disputed domain name from confusing similarity with Complainant’s TEREX trademark but increases the likelihood of confusion by incorporating a reference to Complainant’s home country and the country of registration of the TEREX trademark relied on by Complainant’s. Previous panels under the Policy have found confusing similarity when respondents have used the abbreviated country description “us” in association with a complainant’s trademark as part of confusing domain name. See, e.g., Dr. Ing. H.c. F. Porsche AG v. yangyong /Domain Whols Protection Services, supra(transfer of ); and Lancome Parfums et Beaute et Compagnie v. Shi Jiaqi, supra (transfer of, inter alia, ).
The inclusion of a hyphen in the disputed domain name is irrelevant for purposes of determining the confusing similarity under the Policy, because the presence or absence of “punctuation marks such as hyphens cannot on their own avoid a finding of confusing similarity”. Six Continents Hotels, Inc. v. Helen Siew, WIPO Case No. D2004-0656 (citing Six Continents Hotels, Inc. v. Georgetown Inc.,supra (hyphens do not “serve to dispel Internet user confusion”).
The inclusion of the gTLD descriptor “.com” in the disputed domain name does not affect a finding of confusing similarity. UDRP panels have repeatedly held that the specific top level of the domain name such as “.org”, “.net” or “.com” generally does not affect the domain name for the purpose of determining whether it is identical or confusingly similar (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., supra, holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name; and Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429, finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel finds that Complainant has proven that the disputed domain name is confusingly similar to Complainant’s trademark TEREX. B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, Complainants must prove that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Complainant contends that Respondent is not affiliated with Complainant and has never been authorized by Complainant to use Complainant’s TEREX trademark including any domain name confusing with Complainant’s TEREX trademark or Complainant’s domain name.
Complainant further contends that Complainant has no knowledge that Respondent has ever been commonly known by the disputed domain name or acquired any trademark or service mark rights in the disputed domain name.
There is no evidence that before any notice of the dispute Respondent used or made demonstrable preparations to use the disputed domain name , in connection with a bona fide offering of goods or services.
The disputed domain name does not resolve to an active website. The disputed domain name linked with the descriptive word “careers”, “careers@”, is used by Respondent as an email address to forward scam letters incorporating job application and interview forms having the look and feel of emanating from Complainant. Achieving the look and feel of emanating from Complainant commences at the first line of the scam email which reads: “From: Terex Corporation ” through to the sign off at the end of the email: “Regards, […], Senior Vice President, Human Resources, Tel: +[…], Corporate Headquarters Terex Corporation USA”. The telephone number shown for Mr. […] in the scam email is not Mr. […]’s actual phone number at Complainant’s head office, but is the number of a call center which probably redirects any telephone calls to Respondent. The scam letter advises Internet users that communication with Respondent should be by email using the disputed domain name as the email address. In fact, […] is the name of the Senior Vice President, Human Resources of Complainant. However, neither Complainant or […] have authorized any such misleading use of their identity or persona in the scam email or otherwise. The unauthorized use of Complainant’s International Copyright Marking supports the bad faith use of the disputed domain name.
Complainant contends that in previous UDRP disputes involving facts nearly identical to those here, panels found a lack of rights or legitimate interests where respondent used the disputed domain names in connection with employment scams. For example, in Starwood Hotels & Resorts Worldwide, Inc., Sheraton LLC, Sheraton International Inc. v. Isaac Isaac, supra, the panel wrote: “The claimant contends that the respondent is using its SHERATON mark within the disputed domain name solely to facilitate a “phishing” scam whereby applicants for non-existent jobs at the claimant’s hotel in Kuala Lumpur are tricked into divulging personal information and paying large sums of money to the respondent and its associates. Given that the complainant’s adoption and extensive use of the SHERATON trade mark predates the respondent’s registration of the disputed domain name, the burden is on the respondent to establish its rights or legitimate interests in the disputed domain name.” See also Inter-Continental Hotels Corporation v. James Alex, Design Factory, WIPO Case No. D2010-0974 (“Users attracted to [Respondent’s] sites are induced to apply for fictitious jobs whereby they are likely to be tricked into disclosing personal information. Commercial gain would come from the sale of such information to criminals. It would also come from pocketing the travelling expenses to be paid up front to be paid to bogus diplomats or agents.”).
Respondent appear to have used the disputed domain name in connection with an employment-related and identity-theft scam, by impersonating Complainant in an effort to obtain personal information from innocent job-seekers.
The Panel finds that Complainant has made a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. It is difficult for a complainant to prove the negative that a respondent does not have any rights or legitimate interests in a domain name. Previous decisions under the UDRP have found it sufficient for a complainant to make a prima facie showing that a respondent does not have any rights or legitimate interests in a domain name. Once this showing is made, the evidentiary burden shifts to the respondent to demonstrate its rights or legitimate interests in the domain name. See Deutsche Telekom AG v. Britt Cordon,WIPO Case No. D2004-0487, where the panel stated “A number of WIPO cases have established that, by virtue of paragraph 4(c) of the Policy, once a Complainant establishes a prima facie case that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the Respondent.”
In this case, Respondent was given the opportunity by way of reply to demonstrate any rights or legitimate interests in the disputed domain name pursuant to paragraph 4(c) of the Policy. However, Respondent did not file a Response nor avail itself of the benefits of paragraph 4(c) of the Policy.
The Panel finds that Complainant has proven on a balance of probabilities that Respondent does not have any rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Pursuant to paragraph 4(a)(iii) of the Policy, Complainant must prove that the disputed domain name has been registered and is being used in bad faith. C.1. Registered in Bad Faith
The disputed domain name was registered on August 31, 2014.
Complainant first used its TEREX trademark in commerce in the United States on October 11, 1968 which pre-dates the registration of the disputed domain name by more than forty five (45) years. Additionally, Complainant is also the registrant of the domain name created on November 2, 1995, which Complainant uses in connection with a website promoting its products and services.
Within twelve days of the registration of the disputed domain name, Respondent was using the disputed domain name in conjunction with “careers”: “careers@” as an email address for sending scam invitations of employment with Complainant, accompanied by attached employment application forms, without Complainant’s knowledge or consent. The scam letters incorporating job application and interview forms have the look and feel of emanating from Complainant. Achieving the look and feel of emanating from Complainant commences at the first line of the scam email which reads: “From: Terex Corporation ” through to the signature at the end of the email: “Regards, […], Senior Vice President, Human Resources, Tel: +[…], Corporate Headquarters Terex Corporation, USA”. The telephone number shown for Mr. […] in the scam email is not his actual phone number at Complainant’s head office, but is the number of a call center which probably redirects any telephone calls to Respondent. In fact, […] is the name of the Senior Vice President, Human Resources of Complainant. However, neither Complainant or […] authorized any such misleading use of their identity or persona in the scam email or otherwise. The unauthorized use of Complainant’s International Copyright Marking supports the bad faith use of the disputed domain name.
Respondent’s postal address is located in the City of Basset in the United Kingdom. The Panel infers that Respondent included the geographical abbreviation “us” as part of the disputed domain name prior to creation of the disputed domain name in anticipation of passing itself off as Complainant, which is incorporated within the United States and has carried on business in the United States for decades in association with its TEREX trademark and domain name.
The Panel finds on a balance of probabilities that Respondent created the disputed domain name with knowledge of Complainant’s TEREX trademark rights with the intention to falsely and misleadingly trade on the goodwill associated with Complainant’s TEREX trademark rights which constitutes registration of the disputed domain name in bad faith. C.2. Domain Name Used in Bad Faith
Under paragraph 4(b)(iv) of the Policy, inter alia, the following circumstances shall be evidence of the use and registration of a domain name in bad faith: by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.
For the reasons in Section C.1., immediately above, the Panel finds that Respondent used the disputed domain name as part of the email address “carrers@”, which is confusingly similar to Complainant’s TEREX trademark, as an email address for forwarding scam letters offering false employment opportunities with Complainant and attaching documents requiring personal information from potential responders seeking such employment. Additionally, Respondent used the disputed domain name as the email address to receive responses from those interested in such false offers of employment with Complainant. The Panel infers that Respondent’s attachment of job applications for completion by those receiving scam offers of nonexistent employment with Complainant for completion and return by email to Respondent was part of a scheme to perpetrate identity fraud for commercial gain amounting to bad faith registration and use of the disputed domain name in contravention of paragraph 4(b)(iv) of the Policy See, Roper Industries, Inc. v. Sid Williams, Ropendant Clearance Industries, supra; and Endemol Netherland B.V. v. David Williams,WIPO Case No. D2010-1728, cases in which previous panels found bad faith use where the domain name was used to send out fraudulent scam emails.
The Panel finds that Complainant has proven the requirement of paragraph 4(a)(iii) of the Policy. 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 be transferred to Complainant.
Ross Carson
Sole Panelist
Date: November 20, 2014
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