The Complainant is Portakabin Limited of Huntington, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”) represented by DLA Piper UK LLP, United Kingdom.
The Respondent is Name Redacted.1 2. The Domain Name and Registrar
The disputed domain name is registered with 1&1 Internet AG (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 13, 2016. On October 14, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 17, 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 October 21, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 10, 2016. On October 25 and 27, 2016, the Respondent submitted informal communications. The Respondent did not submit a formal response.
The Center appointed Knud Wallberg as the sole panelist in this matter on November 21, 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 engaged in the business of designing, manufacturing, retailing and leasing of portable buildings. The Complainant is the proprietor of the trademark PORTAKABIN, which is registered inter alia in the European Union, the United Kingdom, and the United States of America, and which is used for the before mentioned goods and services. In this regard, the Complainant has inter alia the trademark PORTAKABIN in the United Kingdom, registration number 2252984, registered on November 16, 2000. Due to the widespread use and significant reputation of the Complainant’s mark the Complainant further states that it enjoys common law and similar unregistered rights in the reputation and goodwill associated with the mark.
The disputed domain name was registered July 25, 2016. The disputed domain name does not direct to an active website, however, it was used to send emails to the Complainant’s employees. 5. Parties’ Contentions A. Complainant
The disputed domain name is a misspelling of the Complainant’s trademark PORTAKABIN and is as such confusingly similar to this trademark.
The Complainant has not licensed the Respondent to use the PORTAKABIN trademark and the Respondent is not otherwise authorized to act on the Complainant’s behalf. Further, the Respondent has no rights or legitimate interests in the disputed domain name.
Since the disputed domain name is a clear misspelling of the Complainant’s mark, the Complainant states that the Respondent was undoubtedly aware of the Complainant when it registered the disputed domain name incorporating the Complainant’s trademark.
The Respondent has used the disputed domain name to engage in fraudulent activities. The Respondent has contacted employees of the Complainant and has presented itself as an employee of the Complainant in that context, as evidenced by annexes attached to the Complaint, using an email address that reflects the disputed domain name. Such conduct is evidence of bad faith under Policy, paragraph 4(b).
The Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions, but submitted communication on October 25 and 27, 2016, claiming that the disputed domain name had been fraudulently registered in her name and denying any affiliation with the registration of the disputed domain name. 6. Discussion and Findings
According to paragraph 15(a) of the Rules the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that a complainant must prove each of the following:
(i) that the 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 domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules, or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate. A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trademark PORTAKABIN since it contains the mark in its entirety, the only difference being that the letter “i” is substituted by the letter “l”. The addition of the generic Top-Level Domain (“gTLD”) “.com” does not dispel a finding of confusing similarity where it otherwise exists, as it does in the present case.
The Panel finds that the conditions in paragraph 4(a)(i) of the Policy are therefore fulfilled in relation to the disputed domain name. B. Rights or Legitimate Interests
It is clear from the facts of the case that the Complainant has not licensed or otherwise permitted the Respondent to use its trademark and given the circumstances of this case, the Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent has not rebutted this and both the absence of any reply to the Complaint as cited above and the way that the Respondent has been and is using the disputed domain name does not support a finding of rights or legitimate interests.
Consequently, the Panel finds that the conditions in paragraph 4(a)(ii) of the Policy are also fulfilled. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove both registration and use of the disputed domain name in bad faith. Paragraph 4(b) of the Policy provides examples of circumstances which shall be evidence of registration or use in bad faith:
(i) circumstances indicating that the domain name holder 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 holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the domain name holder 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 domain name holder has engaged in a pattern of such conduct; or
(iii) the domain name holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the domain name holder has intentionally attempted to attract, for commercial gain, Internet users to the domain name holder’s 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 holder’s website or location or of a product or service on the domain name holder’s website or location.
Accordingly, for the Complainant to succeed, the Panel must be satisfied that the disputed domain name has been registered and is being used in bad faith.
Given the distinctive nature of the Complainant’s PORTAKABIN marks and the longtime use of the mark, it is inconceivable to the Panel that the Respondent registered the disputed domain name without prior knowledge of the Complainant or without the intention of targeting the Complainant, its customers or the employees of the Complainant.
The Panel therefore finds that the disputed domain name was registered in bad faith.
As to the use of the disputed domain name, the Respondent is using the disputed domain name for a phishing scam to deceive employees of the Complainant by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s activities. This constitutes bad faith use under the Policy, see, inter alia,Valero Energy Corporation, Valero Marketing and Supply Company v. VEnergy, Valery,WIPO Case No. D2014-0268; National Westminster Bank plc v. Abdelilah Jadron,WIPO Case No. D2013-2232; NES Rentals Holdings, Inc. v. Domains By Proxy LLC and Allison Mills,WIPO Case No. D2013-1812; and Valero Energy Corporation, Valero Marketing and Supply Company v. Maurine flavour seafoods,WIPO Case No. D2013-1849.
Noting that the disputed domain name incorporates a registered and widely used trademark, that no Response has been filed, and that there appears to be no conceivable good faith use that could be made by the Respondent of the disputed domain name, and considering all the facts and evidence, the Panel therefore finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case. 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.
Knud Wallberg
Sole Panelist
Date: December 2, 2016
1 The Panel has decided that the Respondent has been the subject of identity theft or that no purpose is to be served by including the named Respondent in this decision, and has therefore redacted its name from the caption and body of this decision. The Panel has, however, attached as Annex 1 to this Decision an instruction to the Registrar regarding transfer of the disputed domain name that includes the named Respondent, and has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding. However, the Panel has further directed the Center, pursuant to paragraph 4(j) of the Policy and paragraph 16(b) of the Rules, that Annex 1 to this Decision shall not be published based on exceptional circumstances. See Banco Bradesco S.A. v. FAST-12785241 Attn. B / Name Redacted,WIPO Case No. D2009-1788.
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