The Complainant is Pact, Inc. of Washington, D.C., United States of America, represented by Kirkland & Ellis, United States of America (“US”).
The Respondents are Joint Donor and Pacts Worlds 1 both of Nairobi, Kenya. 2. The Domain Names and Registrar
The disputed domain names and are registered with L Inc. and D, LLC, respectively (the “Registrars”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 21, 2016. On November 22, 2016, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On November 22, 2016, the Registrars transmitted by email to the Center their verification responses 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 December 1, 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 amended Complaint on December 1, 2016.
The Center verified that the Complaint together with the amended 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 December 7, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 27, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 29, 2016.
The Center appointed Mario Soerensen Garcia as the sole panelist in this matter on January 11, 2017. 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 Pact Inc. of Washington, D.C., US. The Complainant is a non-profit international development organization which was founded in 1971.
The Complainant owns US Trademark Registrations Nos. 3,910,449, for PACT (word mark), registered on January 25, 2011, and 4,464,621, for PACT & design, registered on January 14, 2014, both in classes 16, 35, 36, 41 and 43. These registrations comprise products and services related to charity in the fields of health, environmental protection, politics, economics, democracy, conflict resolutions, peace building, good governance, anti-corruption and building civil society organizations.
The domain name was registered by the Complainant on July 18, 1996.
The Respondents are Pacts Worlds 1 and Joint Donor of Nairobi, Kenya.
The disputed domain names and were registered on June 6, 2016 and April 28, 2016, respectively. The disputed domain names resolve to a website of an entity that identifies itself as PACTS World International (PWI), and claims to be a leading humanitarian organization that fights global poverty. The disputed domain names were also used in connection with fraudulent email schemes. 5. Parties’ Contentions A. Complainant
The Complainant is an international Non-Governmental Organization (“NGO”) that operates in over 30 countries seeking to improve the lives of poor and marginalized people.
The Complainant claims that the disputed domain names, and , are confusingly similar to its PACT trademark and domain name.
According to the Complainant, each of the disputed domain names incorporate the Complainant’s PACT trademark, adding to it the word “worlds” and, in the case of the disputed domain name , also adding an “s” to the PACT trademark to make it plural. The Complainant argues that these additions are not sufficient to prevent the disputed domain names from being confusingly similar to the PACT trademark.
The Complainant also states that the Respondents have used the disputed domain names to send emails inducing people to provide their personal information and, possibly, money, in order to apply for jobs, believing that the job offers were made by the Complainant.
Furthermore, the Complainant has argued, and provided evidence in support of the arguments, that the Respondents are a fake company, since there are no registered companies with the Respondents’ declared name in the countries in which the Respondents declare to operate, and the information on the Respondents’ website appear to have been copied from the websites of other NGOs.
The Complainant claims that it does not have any relationship with the Respondents, and has not consented to, licensed or authorized the use of the PACT trademark by the Respondents.
Finally, the Complainant requests the transfer of the disputed domain names. B. Respondents
The Respondents did not reply to the Complainant’s contentions. 6. Discussion and Findings
As a preliminary matter, the Panel finds that the Complainant’s consolidated Complaint against both Respondents is appropriate in the circumstances of this case, and will proceed to a decision as to both disputed domain names. The Complainant has provided sufficient evidence of the same use of the disputed domain names and of common contact information for all disputed domain names for the Panel to find that they are under common control.
As per paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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. A. Identical or Confusingly Similar
The evidence presented demonstrates that the Complainant is the owner of US registrations for the PACT trademark (as a word mark and as a design mark). The Complainant’s trademark registrations predate the registration of the disputed domain names.
The Complainant is also the registrant of the domain name , which is prior to the registration of the disputed domain names.
The disputed domain names imitate the PACT trademark, with the addition of the word “worlds” and, in the case of the disputed domain name , also with the addition of the letter “s” to make the Complainant’s mark PACT plural.
The inclusions above are not sufficient to avoid a finding of confusing similarity with the Complainant’s trademark.
The mere addition of the letter “s” to the Complainant’s PACT trademark does not differentiate the disputed domain names from the Complainant’s trademark. On the contrary, it increases the likelihood of confusion by emphasizing the mark, as decided on the previous cases Just Wheels & Tires Co. d/b/a TSW Alloy Wheels v. Covanta Corporation / DNS Admin,WIPO Case No. D2009-1242; Apple Inc. v. Private Whois Service,WIPO Case No. D2011-0929.
The Panel finds that paragraph 4(a)(i) of the Policy has been proved by the Complainant, i.e., the disputed domain names are confusingly similar to the Complainant’s trademark. B. Rights or Legitimate Interests
The Complainant has made a prima facie case that the Respondents do not have any rights or legitimate interests in the disputed domain names.
The Respondents have not denied the Complainant’s contentions.
The Respondents have not proved that they are known by the disputed domain names and there is no evidence of the Respondents’ activities, other than the apparently fraudulent emails activity presented by the Complainant. The contents of the Respondents’ websites appear to have been copied from the websites of other entities, including the Complainant’s website, claiming to offer services as an humanitarian organization.
There is no evidence in the case file of a legitimate company operated by the Respondent under the name “PACTS World Internation PWI”. On the contrary, the lack of response to the Complaint and inconsistent contact information also suggest that the Respondents do not have any rights or legitimate interests in the disputed domain names.
For the above reasons, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been satisfied, i.e., the Complainant has demonstrated that the Respondents have no rights or legitimate interests in the disputed domain names. C. Registered and Used in Bad Faith
The disputed domain names incorporate the Complainant’s PACT trademark and imitate the Complainant’s domain name .
The Respondents have no rights or legitimate interests in the disputed domain names.
The disputed domain names have been used to send and post fake job offers using the Complainant’s trademarks in order to obtain individuals’ personal information and, possibly, money. The Complainant has provided extensive evidence that the Respondents have managed to actually confuse several people.
Previous UDRP decisions have found that phishing is sufficient to support a finding of registration and use in bad faith. See First American Financial Corporation v. VistaPrint Technologies Ltd,WIPO Case No. DCO2016-0008; Independent Health Association Inc. v. Registration Private, Domains By Proxy, LLC / [K. A.],WIPO Case No. D2016-1625; ABB Asea Brown Boveri Ltd. v. Mohsin Khan,WIPO Case No. D2014-1992.
This Panel finds that the Respondents’ intention of taking undue advantage of the PACT trademarks, as described in paragraph 4(b)(iv) of the Policy, has been demonstrated.
For the above reasons, the Panel finds that the condition of paragraph 4(a)(iii) of the Policy has been satisfied, i.e., the disputed domain names have been registered and are being used in bad faith. 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.
Mario Soerensen Garcia
Sole Panelist
Date: January 24, 2017
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