The Complainant is The Engineering and Development Group Limited (Edgo) of Tortola, British Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland, represented by Talal Abu Ghazaleh Legal, Egypt.
The Respondent is VistaPrint Technologies Ltd of Hamilton, Bahamas. 2. The Domain Name And Registrar
The disputed domain name is registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 21, 2016. On February 22, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 22, 2016, the Registrar transmitted by email to the Center its verification response confirming that the 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 2, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 22, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 23, 2016.
The Center appointed Jonas Gulliksson as the sole panelist in this matter on April 4, 2016. 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 company incorporated in the British Virgin Islands and active within the energy services sector. Furthermore, the Complainant is, along with its subsidiary company Edgo Management Group (EMG), the holder of trademark registrations for EDGO and device in, inter alia, the European Union and Jordan. The Complainant’s EU trademark (registration number 012920922) was filed on May 29, 2014 and registered on February 23, 2015, while the oldest of the Complainant’s Jordan trademarks was registered on September 23, 2007.
The disputed domain name was registered on April 9, 2015. 5. Parties’ Contentions A. Complainant
The Complainant has been in business since 1956 and is one of the leading providers of energy services on a global basis. The Complainant is offering expertise in oilfield services and logistic support, serving the energy markets from thirty-two bases in twenty-one countries. For example, the Complainant has been involved in several high profile development projects within Saudi Arabia and Oman.
EDGO is an abbreviation of the Complainant’s company name “The Engineering and Development Group”. The Complainant has been using and operating its business under the term “Edgo” for several years and has through its world-wide reputation acquired a long standing fame in energy services.
Along with its subsidiary company EMG, the Complainant is also the holder of the domain name since October 12, 1998.
The disputed domain name is confusingly similar to the Complainant’s EDGO trademark, as it incorporates the trademark in its entirety. The number “0” does not sufficiently distinguish the disputed domain name from the Complainant’s trademark.
The Respondent is not affiliated with the Complainant in any way. The Complainant has never authorized or licensed the Respondent to use the EDGO trademark, nor to register a domain name incorporating the trademark in question. Moreover, the Respondent has no prior rights or legitimate interests in the disputed domain name. The Complainant’s operation of the “Edgo” brand goes back to 1956, and the first trademark registration was made in 2007, while the disputed domain name was registered in 2015. The purpose of the registration was merely to create a connection to the Complainant and to take unfair advantage of its trademark.
The disputed domain name was registered and is being used in bad faith. Since the Complainant has been operating the “Edgo” brand since 1956, established the company in 1991 and registered its domain name in 1998, it is implausible that the Respondent was unaware of the Complainant’s trademark rights.
The Respondent has registered the disputed domain name to mislead people. The disputed domain name does not resolve to any active website and has been used to perpetrate a fraud. By creating email addresses, some of them containing “edg0”, the Respondent has corresponded with the Complainant and one of the Complainant’s suppliers and thus got the Complainant to transfer funds to a fraudster’s account. By using the disputed domain name as the origin of the emails perpetrating fraudulent activities, the Respondent has intentionally attempted to attract, for commercial gain, the Complainant’s suppliers to the Respondent’s online location by creating a likelihood of confusion between the Complainant’s trademark and the source or affiliation of the fraudulent emails. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion And Findings
Paragraph 4(a) of the Policy requires the Complainant to prove all three of the following elements to be entitled to the relief sought: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant is the holder of several trademark registrations for EDGO and device. The disputed domain name incorporates the word element of the Complainant’s trademark in its entirety, apart from the fact that the letter “o” is replaced with the number “0”, and with the addition of the generic Top-Level Domain (gTLD) “.com”. According to the well-established consensus among UDRP panels, the gTLD is generally not distinguishing. In the Panel’s view, the difference between “edgo” and “edg0” is insignificant. Thus, the Panel finds that the differences between the disputed domain name and the Complainant’s trademark are insufficient to avoid a finding of confusing similarity under the first element of the Policy.
In accordance with the findings above, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark within the meaning of Policy paragraph 4(a)(i), and the first element of the Policy is thus fulfilled. B. Rights or Legitimate Interests
In cases when a respondent fails to present a response, the complainant is still required to make at least a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions Second Edition (“WIPO Overview, 2.0”), paragraph 2.1; The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064; and Berlitz Investment Corp. v. Stefan Tinculescu,WIPO Case No. D2003-0465. Further, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.
The Complainant has asserted that no permission to register the disputed domain name has been granted to the Respondent. Moreover, the Complainant has stated that the Respondent has no rights of its own or legitimate interests in the disputed domain name, which incorporates the word element of the Complainant’s trademark.
Having considered the submissions of the Complainant, and in the absence of a Response from the Respondent, the Panel infers that the Respondent is not connected with the Complainant or authorized to use the Complainant’s trademark in the disputed domain name. Neither does the Panel find any other indications that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, or that the Respondent is using the disputed domain name for a bona fide offering of goods or services. Rather, the Complainant has submitted evidence that the Respondent has been using the disputed domain name for email addresses to perpetrate fraudulent activities.
In the light of what is stated above, the Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted this case with appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name. Therefore, the Panel finds that the second element of the Policy is fulfilled. C. Registered and Used in Bad Faith
The disputed domain name was registered on April 9, 2015, which is more than seven years after the Complainant’s first trademark registration for EDGO and device and more than sixteen years after the registration of the Complainant’s domain name . The fact that the Respondent has deliberately chosen a domain name nearly identical to the Complainant’s trademark and corresponded with the Complainant and one of its suppliers shows that the Respondent must have had knowledge of the Complainant’s prior rights.
According to the Complainant’s uncontradicted information, the disputed domain name does not resolve to any active website. However, as has already been mentioned, the evidence provided by the Complainant shows that the Respondent has been using email addresses associated with the disputed domain name in its contacts with one of the Complainant’s suppliers, creating the impression of being one of the Complainant’s employees. These circumstances strongly suggests that the disputed domain name was registered and is being used with the intention of attracting customers for commercial gain by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or location or of a products or service on the Respondent’s website or location.
All in all, the Panel finds that the disputed domain name was registered and is being used in bad faith. The third element of the Policy is thus fulfilled. 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 the Complainant.
Jonas Gulliksson
Sole Panelist
Date: April 20, 2016
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