The Complainant is Trodat GmbH of Wels, Austria, represented by Salomonowitz Horak, Austria.
The Respondent is Williams, Oakland shipping of Glasgow, United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name (the “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 March 21, 2016. On March 21, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 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 24, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 13, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 14, 2016.
The Center appointed Olga Zalomiy as the sole panelist in this matter on April 20, 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 manufacturer of self-inking stamps and laser machines. The Complainant owns several trademark registrations for the TRODAT and TROTEC trademarks. Specifically, the Complainant owns the international registration of the word trademark TRODAT in International class 16, serial number 484432, dated March 30, 1984, which was based on the trademark registration in Austria, serial number 88048, dated May 24, 1978 and the European Union registration of the word trademark TROTEC in International classes 7, 9, 17 and 42, serial number 005443254, dated December 10, 2007. The Complainant also owns several websites associated with domain names incorporating its trademarks, such as , and .
Respondent registered the Domain Name on January 19, 2016. The Domain Name does not direct to any website. 5. Parties’ Contentions A. Complainant
The Complainant claims that it owns numerous trademark registrations for the TRODAT and TROTEC trademarks with the first TRODAT trademark registered in 1958. The Complainant alleges that it is the world’s leader in self-inking stamps and is internationally recognized as the leading manufacturer of computer controlled laser machines for laser engraving, laser cutting and laser marking. The Complainant claims that it owns the domain names , and .
The Complainant argues that the Domain Name is confusingly similar to the Complainant’s well-established trademark TROTEC because the Domain Name includes the TROTEC trademark in its entirety. The Complainant contends that the misspelling of the well-known mark TRODAT does not detract from the confusing similarity of the Domain Name and the Complainant’s mark. The Complainant claims that the addition of the generic Top-Level Domain (“gTLD”) “.com” does not distinguish the Domain Name from the Complainant’s trademark.
The Complainant alleges that the Respondent does not have rights or legitimate interests in the Domain Name because the Complainant has not given any license or authorization to the Respondent to use the TRODAT or TROTEC trademarks. The Complainant claims that the marks TRODAT and TROTEC are invented words, which makes it inconceivable that the Respondent did not know about existence of the trademarks or chose to incorporate them into the Domain Name for any legitimate use.
The Complainant claims that the Respondent registered the Domain Name decades after the TRODAT trademark was first registered, so it is certain that the Respondent knew about the Complainant’s trademark. The Complainant argues that the Respondent’s passive holding of the Domain Name does, nevertheless, amount to bad faith use of the Domain Name.
The Complainant claims that the Respondent hacked into one of the Complainant area manager’s computer and in February of 2016 sent emails to a Complainant’s customer posing as the Complainant’s area manager. One of the emails requested that recipient transfer money to a bank account that was not owned by the Complainant to close a purported transaction to acquire a laser. The e-mails were sent from an e-mail address, which was created using the Domain Name and which was very similar to the real email address of one of the Complainant’s area managers, […]@. The Complainant argues that the third party emails were used to give the impression that the emails originated from a person affiliated with the Complainant and to disrupt Complainant’s business, forging the footer of the e-mail and the combined “trodat-trotec-group-logo”. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Pursuant to paragraph 4(a) of the UDRP, to succeed in this proceeding, the Complainant must prove each of the following elements with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)). A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in the TRODAT and TRODEC trademarks as a result of its trademark registrations on file.
The Panel finds that the Domain Name is confusingly similar to the Complainant’s TROTEC and TRODAT trademarks. The test for confusing similarity under the UDRP “involves a comparison between the mark and the domain name […] In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name1 .”
Here, the Domain Name consists of the TROTEC trademark, the word “trodet”, a hyphen and the gTLD “.com”. The Panel finds that the Domain Name is confusingly similar to the Complainant’s TROTEC and TRODAT trademarks because it fully incorporates the TROTEC trademark and the easily recognizable TRODAT trademark remains the principal component of the Domain Name. Apart from the letter “e” used instead of the letter “a” in the TRODAT trademark, a hyphen and the gTLD “.com”, the Domain Name is identical to the Complainant’s trademarks. It is well-established that a “domain name which contains a common or obvious misspelling of a trademark normally will be found to be confusingly similar to such trademark, where the misspelled trademark remains the dominant or principal component of the domain name”2 and that adding the top-level domain suffix “.com” or its equivalent would usually be disregarded under the confusing similarity test, as it is a technical requirement of registration3 . Here, the Domain Name contains an obvious misspelling of the TRODAT trademark, which is the principal component of the Domain Name, and the gTLD “com”, none of which detracts from confusing similarity of the Complainant’s trademarks and the Domain Name.
Thus, the Panel finds that the first element of the UDRP has been met. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the UDRP, the Respondent may establish that it has rights or legitimate interests in the Domain Name by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use the Domain Name or a name corresponding to the Domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Once a complainant makes a prima facie case in respect of the lack of rights or legitimate interests of a respondent, the respondent carries the burden of demonstrating it has rights or legitimate interests in the domain name4 . Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.5
The Panel accepts that the Respondent is not a licensee nor is it associated with the Complainant in any way that could give rise to any license, permission or other right by which the Respondent could own or legitimately use the Complainant’s TROTEC or TRODAT trademarks. The Respondent is also not commonly known by the Domain Name, nor did it use the Domain Name in connection with a bona fide offering of goods or services. The current passive holding of the Domain Name does not give rise to any rights or legitimate interests.
Thus, the Panel finds that the second element of the UDRP has been met. C. Registered and Used in Bad Faith
Under the third UDRP element, the Complainant is required to prove that the Domain Name was registered and is being used in bad faith.
To support its claim that the Respondent registered and used the Domain Name in bad faith, the Complainant alleges that the Respondent is associated with third party-disseminated emails requesting recipient to transfer money to a bank account allegedly belonging to the Complainant. The e-mails came from “[…]@” email, which was created using the Domain Name, and which was very similar to the real email address of one of the Complainant’s area managers, “[…]@”. The Complainant argues that the third party emails were used to give the impression that the emails originated from a person affiliated with the Complainant and to disrupt the Complainant’s business. Evidence on file supports allegations of the improper use of the Domain Name.
The Panel finds that the argument concerning fraud is noteworthy. The Domain Name is being used in bad faith as part of a scam (the emails are sent from an account which uses the disputed domain name).
Similar use of the disputed domain names have been found to constitute bad faith, even where, like here, the relevant domain names were used only for email. See, e.g., Terex Corporation v. Williams Sid, Partners Associate,WIPO Case No. D2014-1742 (“Respondent was using the disputed domain name in conjunction with […] an email address for sending scam invitations of employment with Complainant”); and Olayan Investments Company v. Anthono Maka, Alahaji, Koko, Direct investment future company, ofer bahar,WIPO Case No. D2011-0128 (“although the disputed domain names have not been used in connection with active web sites, they have been used in email addresses to send scam emails and to solicit a reply to an “online location””).
In addition, cumulative circumstances of this case also support finding of bad faith registration and use. The Panel accepts that at the time of registration the Respondent must have been aware of the Complainant’s trademarks and that the Respondent registered the Domain Name incorporating those trademarks in bad faith for the following reasons. First, the Respondent registered the Domain Name at least twenty eight years after the Complainant registered its TRODAT trademark and at least nine years after the Complainant registered its TROTEC trademark. Second, the Respondent registered the Domain Name five years after the Complainant registered the domain name, which is virtually identical to the Domain Name.6
Third, the evidence establishes that the address provided by the Respondent with registration of the Domain Name is likely false. Several prior panels have found that deliberately furnishing false contact information to a domain name registrar can constitute bad faith in registration and use. See Home Director, Inc. v. Home Director,WIPO Case No. D2000-0111, where “false or misleading” contact information led to a finding of bad faith in registration and use. See also, Chanel v. 1,WIPO Case No. D2003-0218, where panel found that use of false or misleading information for the registration of the domain name to be an additional circumstance evidencing bad faith in the registration and use of the domain name. Finally, the Respondent failed to respond to the Complaint and did not contest the Complainant’s allegations that the Domain Name was registered and is being used in bad faith. Based on the cumulative circumstances of this case, the Panel concludes that the Domain Name was registered and is being used in bad faith.
Thus, the Panel finds that the third element of the UDRP has been met. 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.
Olga Zalomiy
Sole Panelist
Date: May 3, 2016
1 WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2.
2 WIPO Overview 2.0, paragraph 1.10.
3 See, WIPO Overview 2.0, paragraph 1.2.
4 WIPO Overview 2.0., paragraph 2.1.
5 Id.
6 See, WIPO Overview 2.0, paragraph 3.1, stating that in situations where the respondent was clearly aware of the complainant, bad faith can be found.
Full & Egal Universal Law Academy