The Complainant is Swegon Aktiebolag of Kvänum, Sweden, represented by Domain and Intellectual Property Consultants, Dipcon AB, Sweden.
The Respondent is LaRisa Brookins-Rose of Cape Giradeau, Missouri, United States of America (“USA”). 2. The Domain Name and Registrar
The disputed domain name is registered with 1&1 Internet SE (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 5, 2016. On September 5, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 6, 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 proceeding commenced on September 9, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 29, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 30, 2016.
The Center appointed Alexandre Nappey as the sole panelist in this matter on October 5, 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 Swedish company Swegon Aktiebolag, which has developed products and systems for energizing indoor climate for more than 60 years.
The Complainant runs its business all over the world including in Europe, North America and Asia.
The Complainant is the owner of the following trademarks in connection with its business:
- USA trademark No. 3707446 SWEGON, filed on April 16, 2008, and registered on November 10, 2009 in classes 9 and 11;
- Swedish trademark No. 516635 SWEGON, filed on October 18, 2013 and registered on December 20, 2013 in classes 11 and 37;
- International trademark No. 1209834 SWEGON, registered on November 15, 2013 in classes 6, 11 and 37;
The disputed domain name is . It was registered on June 19, 2016 in the name of LaRisa Brookins-Rose located in the USA. It does not resolve to any active website. 5. Parties’ Contentions A. Complainant
1. The Complainant first alleges that the disputed domain name is very similar to its earlier trademarks, to the point of creating confusion.
The disputed domain name reproduces its earlier trademarks SWEGON in their entirety, the only difference is the exchange of the letter “o” with the number “0” which does not bring any visual or conceptual change.
The addition of the Top-Level Domain “.com” is irrelevant.
2. Secondly, the Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Respondent does not have any rights in the trademark SWEGON.
The Complainant has not given the Respondent any permission to register the trademark as a domain name.
The disputed domain name is not being used for any legitimate purpose.
The Complainant has neither authorized nor licensed the Respondent to use or exploit its earlier trademark SWEGON, nor to register it as a domain name.
As the disputed domain name is not used, the Respondent has not made a legitimate noncommercial use of the disputed domain name.
3. Finally, the Complainant alleges that the disputed domain name was registered and is being used in bad faith. Registered in bad faith:
The Complainant’s trademarks were registered well before the disputed domain name, so it is obvious that the Respondent was well aware of the Complainant´s trademarks and business when registering the disputed domain name. Used in bad faith:
The Respondent has created the fraudulent email address “[name]@” in order to pretend to be the CFO of the Complainant and to try to get the economy department of the Complainant to proceed to an unauthorized money transfer.
This illegal action clearly indicates that the disputed domain name has been registered and used in bad faith and with the intention to make the Complainant transfer money to the Respondent. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Notwithstanding the default of the Respondent, it remains up to the Complainant to make out its case in accordance with paragraph 4(a) of the Policy, and to demonstrate that:
(i) The disputed 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 disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
However, under paragraph 14(b) of the Rules, where a party does not comply with any provision of the Rules, the Panel “shall draw such inferences therefrom as it considers appropriate”.
Having consideration to the Parties’ contentions, the Policy, Rules, Supplemental Rules and applicable substantive law, the Panel’s findings on each of the abovementioned elements are the following. A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant owns exclusive trademark rights in SWEGON (which predate the registration of the disputed domain name).
The Panel finds that the disputed domain name is confusingly similar to the registered SWEGON trademarks owned by the Complainant.
Indeed, the disputed domain name incorporates the entirety of the Complainant’s SWEGON trademarks.
The only difference between the earlier trademarks and the disputed domain name is the substitution of the letter “o” by the number “0” which are visually confusingly similar, so as the disputed domain name will be read and pronounced by the public in the same way as the earlier trademarks.
See decision in Philip Morris USA Inc. v. Oneandone Private Registration, 1&1 Internet Inc. / Marlboro Cemal,WIPO Case No. D2016-1279, in which the disputed domain name was found confusingly similar to the earlier MARLBORO trademarks.
Therefore, in the present case, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Considering the difficulty to demonstrate a negative, UDRP panels generally find convenient that the Complainant raise a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the Policy and then the burden shifts to the Respondent to demonstrate its rights or legitimate interests.
See De Beers Intangibles Limited v. Domain Admin, Whois Privacy Corp.,WIPO Case No. D2016-1465.
Here, the Complainant has stated that it has not authorized, licensed or consented to the Respondent any use of its SWEGON trademark.
It results from the circumstances that the Respondent does not own any right on the trademark SWEGON.
In the light of what is stated above, the Panel finds that the Complainant has made an unrebutted prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
As the Respondent has not provided otherwise, the Panel finds from the available record that the second element of paragraph 4(a) of the Policy is fulfilled. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out examples of circumstances that will be considered by a panel to be evidence of bad faith registration and use of a domain name. It provides that:
“For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that [the respondent has] registered or [has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) [the respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.”
In the present case, the Complainant has proved that its trademarks SWEGON were registered and widely used long before the disputed domain name was registered.
Moreover, the Complainant has submitted printouts of emails received by an employee of the Complainant, showing that the Respondent had created the email address “[name]@” reflecting the name of the CFO of the Complainant.
It appears that the Respondent knew not only the Complainant itself but also its composition and the names of its officers.
By sending emails from the above cited email address, it appears that the Respondent tried to pass itself off as a legal representative from the Complainant in order to get the illegitimate payment of an invoice by the Complainant.
See Minerva S.A. v. Whoisguard Protected, Whoisguard, Inc.,/ Greyhat Services,WIPO Case No. D2016-0385:
“Respondent made use of the Disputed Domain Name by sending fraudulent emails in an attempt to create a likelihood of confusion between it and the Complainant. The Panel accepts that the Respondent impersonated the Complainant naming itself the ‘China Representative Office’ of the Complainant, sending emails, purportedly signed by the Complainant’s employees, with quotations for the sale of products of the type sold by the Complainant mentioning telephone numbers and the location of the Complainant. The Panel accepts that this was a clear attempt to target the Complainant’s customers using a fraudulent scheme and that this scheme attempted to mislead the Complainant’s customers so that they transmitted payments to the Respondent’s bank account.”
In the light of the above, it appears that, by using the disputed domain name, the Respondent tried to create a likelihood of confusion with the Complainant’s earlier trademarks SWEGON and to financially benefit from its reputation or to disrupt the Complainant’s business while portraying itself as one of the officers of the Complainant.
The Panel finds that the third requirement of paragraph 4(a) of the Policy is 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.
Alexandre Nappey
Sole Panelist
Date: October 17, 2016
1 The Panel notes that the WhoIs information for the registrant of record lists the registrant being located in the State of Montana, however, the Panel also notes that the address and post code in the WhoIs correspond to a location in Missouri, and concludes that the reference to Montana is likely a selection or typographical error.
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