The Complainant is Leaseweb IP B.V. of Amsterdam, the Netherlands, represented by Boekx Advocaten, the Netherlands.
The Respondents are Domains by Proxy, LLC of Scottsdale, Arizona, United States of America ("US") and Laura Henry of Brookline, Massachusetts, US. 2. The Domain Names and Registrar
The disputed domain names and are registered with Wild West Domains, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 22, 2016. On July 22, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 25, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 26, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on July 26, 2016.
The Center verified that the Complaint together with the amendment to 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 July 27, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 16, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 17, 2016.
The Center appointed John Swinson as the sole panelist in this matter on August 25, 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 the Dutch company Leaseweb IP B.V. The Complainant is an Internet hosting service mainly active in Europe, Asia and the US. It is part of the OCOM Group.
OCOM IP B.V., the Complainant's parent company, owns the following registered trade marks:
- European Union Trade Mark No. 005304456 for OCOM, registered October 29, 2007;
- Benelux Trade Mark No. 0731280 for OCOM, registered May 27, 2003;
- European Union Trade Mark No. 005304449 for LEASEWEB, registered November 8, 2007; and
- Benelux Trade Mark No. 0722934 for LEASEWEB, registered September 6, 2002.
OCOM IP B.V. has also owned the domain name since January 21, 1997 and the domain name since April 21, 1997.
The Respondents are Domains by Proxy, LLC, a domain privacy service provider of Scottsdale, Arizona, US and Laura Henry of Massachusetts, US. The Respondents did not file a Response, and consequently little information is known about the Respondents.
The Respondents registered the disputed domain names on July 7, 2016. When the Panel attempted to access the websites at the disputed domain names, an error message was displayed. 5. Parties' Contentions A. Complainant
The Complainant makes the following (limited) submissions. Identical or Confusingly Similar
The disputed domain names use the OCOM and LEASEWEB trade marks, with the minor addition of "nl". The addition of "nl" only increases the similarity, as "nl" is the abbreviation for the Netherlands, where the OCOM Group is headquartered. Rights or Legitimate Interests
The Respondents do not have any rights or legitimate interests in the disputed domain names and use them "merely for fraudulent, criminal purposes". Registered and Used in Bad Faith
The Complainant is a well-known Internet provider company which offers its services worldwide under the trade marks listed in Section 4 above.
The Complainant submits that the following evidences the Respondents' bad faith.
On the same day as the Respondents registered the disputed domain names, the Complainant's financial department received emails from the addresses "[nameCEO]@" and
"[nameCEO]@" stating in Dutch (the following translation was provided by the Complainant):
"Marcel, Can you do an international payment today? Greetings. Con." The Complainant submits that the Respondents were passing themselves off as the CEO of the Complainant or the Complainant's parent company in order to receive payments from the finance department. B. Respondents
The Respondents did not reply to the Complainant's contentions. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the disputed domain names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondents have no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
The onus of proving these elements is on the Complainant. 6.1. Failure to File a Response
The Respondents' failure to file a response does not automatically result in a decision in favor of the Complainant (see, e.g., Airbus SAS, Airbus Operations GmbH v. Alesini Pablo Hernan / PrivacyP, WIPO Case No. D2013-2059). However, the Panel may draw appropriate inferences from the Respondents' default. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the disputed domain names are identical or confusingly similar to trade marks in which the Complainant has rights.
The Complainant is not the owner of the trade mark registrations listed in Section 4 above. The registrations are held by OCOM IP B.V., the Complainant's parent company. Generally, a related company such as a subsidiary to the registered holder of a trade mark is considered to have rights in a trade mark under the UDRP (see, e.g., Toyota Motor Sales U.S.A. Inc. v. J. Alexis Productions,WIPO Case No. D2003-0624 and Grupo Televisa, S.A., Televisa, S.A. de C.V., Estrategia Televisa, S.A. de C.V., Videoserpel, Ltd. v. Party Night Inc., a/k/a Peter Carrington,WIPO Case No. D2003-0796). In this case, while it the Panel would have preferred documentary evidence, it is prepared to infer a license to the trade marks from the parent company OCOM IP B.V. to its subsidiary Complainant. Accordingly, the Complainant has the requisite rights in relation to the LEASEWEB and OCOM trade marks.
In this case, the generic Top-Level Domain ".com" is irrelevant in assessing confusing similarity under the Policy and may be ignored (see, e.g., Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic,WIPO Case No. D2000-1698).
Previous UDRP panels have found that where a distinctive trade mark is wholly incorporated in a domain name, adding a geographic indicator will generally not distinguish the domain name from the trade mark (see ,e.g., Google Inc. v. Google Adwords Service at HCMC, Vietnam, WIPO Case No. D2013-0298). Here, the Panel finds that the trade marks (as listed in Section 4) are the distinctive element of the disputed domain names. The addition of the geographic indicator "nl" (the country abbreviation for the Netherlands) does nothing to prevent the confusing similarity of the disputed domain names with the trade marks. In fact, the fact that the disputed domain names incorporate the country abbreviation for the country in which the Complainant and its parent company are headquartered adds to the confusing similarity.
In light of the above, the Complainant succeeds on the first element of the Policy. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondents have no rights or legitimate interests in respect of the disputed domain names. The Complainant is required to make out a prima facie case showing that the Respondents lack rights or legitimate interests.
The Panel finds that the Complainant has made out a prima facie case. This finding is based upon the following:
- there is no evidence that either Respondent is commonly known by the disputed domain names;
- there is no evidence that either Respondent has any connection with the trade marks listed at Section 4 above and the Complainant has not given either Respondent any permission to use the trade marks; and
- the Respondents are not using the disputed domain names in connection with a bona fide offering of goods or services and are not making a legitimate noncommercial or fair use of the disputed domain names. Attempting to access the websites at the disputed domain names returns an error message.
The Respondents had the opportunity to demonstrate its rights or legitimate interests, but did not do so. In the absence of a Response from the Respondents, the prima facie case established by the Complainant has not been rebutted and the Complainant succeeds on the second element of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondents registered and subsequently used the disputed domain names in bad faith.
The websites at the disputed domain names are currently inactive. However, the Complainant submits that the disputed domain names have previously been used in relation to a financial scam. The Complainant has provided evidence of an email sent from an email address associated with one of the disputed domain names. The email appears to be from the CEO of the Complainant or the Complainant's parent company. It is to the finance department of the Complainant and requests an international payment.
The Complainant submits that this email is part of a fraudulent scheme which uses the disputed domain names, and the Panel accepts that submission. This constitutes bad faith registration and use under the Policy (see, e.g., Insight Investment Management Limited v. Hossein Fazlollahi,WIPO Case No. DCO2016-0004).
In light of the above, the Panel finds that the Complainant has succeeded on the third element 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 names and be transferred to the Complainant.
John Swinson
Sole Panelist
Date: September 7, 2016
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