The Complainant is Datamatics Global Services Limited of Mumbai, India, represented by Amir Arsiwala, Advocate, India.
The Respondent is Bill Sweasy of Key West, Florida, United States of America ("United States"). 2. The Domain Name and Registrar
The disputed 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 December 2, 2016. On December 2, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 3, 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 December 8, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 28, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 29, 2016.
The Center appointed Syed Naqiz Shahabuddin as the sole panelist in this matter on January 13, 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 identifies itself in the Complaint as a corporation incorporated and registered under Indian law, and is a global information technology and business process outsourcing organization delivering "smart, next-generation business solutions" for its enterprise clients across the globe. Since 2004, the Complainant was listed on the Bombay Stock Exchange.
Although the Complainant was incorporated on November 3, 1987, the Complainant claims that it had first used the name "Datamatics" since at least 1975, when a predecessor company "Datamatics Consultants Limited" was formed. The Complainant states that the name "Datamatics" was wholly its founders' invention, and has no dictionary definition.
According to the Complainant, between the years 2014 and 2016 the Complainant averaged an annual revenue of about INR 8.346 billion. It further states that the name and trademark DATAMATICS is instrumental to the Complainant and its group, under which more than 20 companies are organized containing the name "Datamatics" as part of their corporate names, and all of which use the name "Datamatics" to conduct their business.
Within India, the Complainant claims that it has rights over the following:
#
Mark (Wordmark)
In Class(es)
Registration Number
1
DATAMATICS
9
1464301
2
DATAMATICS
35
1464302
3
DATAMATICS
36
1464303
4
DATAMATICS
38
1464304
5
DATAMATICS
41
1464305
6
DATAMATICS
42
1464306
7
DATAMATICS
36
1464307
Outside of India, the Complainant claims that it has rights to DATAMATICS in the following jurisdictions:
#
Mark (Wordmark)
Jurisdiction (Registration Number)
1
DATAMATICS
United States (3987749)
2
DATAMATICS
United Kingdom of Great Britain and Northern Ireland (2525830)
3
DATAMATICS
European Union (8920084)
However, the Complainant did not adduce evidence of the trademark registrations listed in the Complaint.
The Complainant claims to be the ultimate registrant of the domain name . The Complainant supports this with a screenshot of the ICANN WhoIs database for in Annex 5 to the Complaint, which shows that the domain name was created on March 25, 2002 and that the registrant at the time was one "Datamatics Technologies Ltd.". A certificate exhibited in Annex 4 to the Complaint shows that the Complainant's name was changed from "Datamatics Technologies Limited" to its current name "Datamatics Global Services Limited" on January 17, 2009.
The disputed domain name was registered by the Respondent on November 22, 2016. The Registrar has since placed a Registrar Lock on the disputed domain name pursuant to paragraph 8 of the UDRP, which it had confirmed to the Center in response to its questionnaire on December 3, 2016, and the disputed domain name no longer resolves to an active website. 5. Parties' Contentions A. Complainant
The Complainant seeks relief in the form of transfer of the disputed domain name to the Complainant in accordance with paragraph 4(i) of the Policy, on the following grounds:
Firstly, the Complainant has rights over the trademark DATAMATICS, and the insertion of the letter "i" into the middle of the Complainant's existing domain name to form the disputed domain name was done with the sole intention of creating a domain name that is visually near-identical to the Complainant's domain name.
Secondly, the Complainant denies that the Respondent could have any rights or legitimate interests in the disputed domain name, given that there is no "correlation" or "nexus" between the Respondent and the disputed domain name. The Complainant subscribes to the consensus view of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), which states that the burden of production shifts to the Respondent where the Complainant establishes a prima facie case showing the lack of rights and legitimate interests of the Respondent in the disputed domain name.
Thirdly, the Complainant alleges that the disputed domain name was registered and used in a clear case of bad faith, and that on the same day as the registration of the disputed domain name, the Complainant's personnel had received an email from an individual posing as the Complainant's Chief Executive Officer ("CEO"), using an email address containing the disputed domain name, and sent to an employee of the Complainant, instructing the latter to transfer USD 16, 500.00 to that individual. The Complainant considers this a "phishing" attack, which are unequivocal demonstrations of a domain name having been registered in bad faith. The exchange of emails are filed as Annex 7 to the Complaint.
Fourthly, there is circumstantial evidence that the Respondent is or was engaging in other attempts at phishing given the dubious nature of the Respondent's email identification information provided to the domain name registrar. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Given that the Respondent did not file a response, this Panel will decide on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and will draw appropriate inferences in accordance with paragraph 14(b) of the Rules.
The Complainant must prove that each limb of the three-part test in paragraph 4(a) of the Policy has been satisfied, in order to prevail. These are addressed in turn. A. Identical or Confusingly Similar
This Panel is satisfied that the Complainant has rights to the DATAMATICS mark, and that the disputed domain name is nearly identical and confusingly similar to that mark.
While the Complainant did not file proof as to the trademark registrations listed in paragraph VI (A) to the Complaint, such as registration certificates or public registry search results, this Panel refers to paragraph 3(b)(vii) of the Rules, which lists inter alia among the requirements of a properly constituted Complaint. With respect to existing marks a Complainant need only "[s]pecify the trademark(s) or service mark(s) on which the complaint is based and, for each mark, describe the goods or services, if any, with which the mark is used (the Complainant may also separately describe other goods and services with which it intends, at the time the complaint is submitted, to use the mark in the future.)"
The Rules therefore do not expressly require the exhibit of the proof of registration although that is allowed under Paragraph 3(b)(xv) of the Rules and is clearly a best practice that counsel would be well-advised to follow, if only out of prudence. Moreover, the Complaint concludes with the mandatory certification by an authorized representative of the Complainant which "certifies that the information contained in this Complaint is to the best of the Complainant's knowledge complete and accurate, that this Complaint is not being presented for any improper purpose, such as to harass, and that the assertions in this Complaint are warranted under these Rules and under applicable law, as it now exists or as it may be extended by a good‑faith and reasonable argument" as required under paragraph 3(b)(xiii) of the Rules and paragraph 15 of the Supplemental Rules.
Strictly speaking, this Panel need not initiate any searches of its own accord and is inclined to accept the Complainant's representations as to its rights in the DATAMATICS mark; for the sake of integrity in the UDRP process however, the Panel has confirmed the status of these marks, the earliest of which were registered on July 16, 2007.
The Panel finds that the addition of the letter "i" to the middle of the disputed domain name makes the disputed domain name virtually identical to the Complainant's trademark without considering:
(i) the generic Top-Level Domain ("gTLD") ".com" as this may be disregarded when assessing identity or confusing similarity; or
(ii) the abbreviated word "tech" to the end which is also found in the Complainant's domain name. Given that the Complainant is an information technology business, the addition of "tech" to the mark DATAMATICS does not minimize or avoid the confusing similarity, and in fact supports a finding that the Respondent was targeting the Complainant's mark (see Halliburton Energy Services, Inc. v. Domains By Proxy, LLC / "Brian Ware", halliburtoninc,WIPO Case No. D2015-2021).
In determining what constitutes confusing similarity, paragraph 1.2 of the WIPO Overview 2.0 emphasizes the overall impression created by the domain name, and the distinguishing value (if any) of any terms, letters or numbers used. In this case, it is clear that the addition of the letter "i" to the Complainant's mark does not obviate confusion, and does not render it significantly different from the Complainant's mark. On the effect of the letter "i" being insufficient to alter the dominant or principal component of the disputed domain name, see Docler IP S.à r.l., Docler S.à r.l. and WebMindlicenses Korlátolt Felelösségü Társásag v. Su Xing,WIPO Case No. D2016-2201 ("[T]he disputed domain name differs from the Complainants' marks only by the addition of the initial first letter ('i'). That letter does not obviate confusion").
Additionally, an unsuspecting Internet user would find the disputed domain name visually and phonetically similar and almost identical to the Complainant's mark, particularly since the additional letter occurs at a place in the name (i.e., "datama[i]tics") that would not appreciably render the name phonetically changed by the addition. See Heartland Payment Systems v. Purple Bucquet,WIPO Case No. D2010-0722 for a similar holding.
In accordance with these UDRP decisions, this Panel finds that the disputed domain name is nearly identical and confusingly similar to the Complainant's mark. Accordingly, the Panel finds that the Complainant has met the requirements of paragraph 4(a)(i) of the UDRP. B. Rights or Legitimate Interests
Since the Respondent has elected not to respond to the Complaint, this Panel refers to the consensus view in paragraph 2.1 of the WIPO Overview 2.0 which states that while the overall burden of proof rests with the Complainant, this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the Respondent.
Therefore, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.
The Panel is satisfied that the Complainant has established a prima facie case against the Respondent having considered the elements in the consensus view. This Panel is satisfied that the Complainant has demonstrated a well-established history of using its trademark across multiple countries across the globe as part of its marketing and ordinary usage. The trademark concerned is unique and has no corollary dictionary definition, and its use by the Complainant was long-standing, open and notorious. Therefore on the totality of the facts it is not likely that the disputed domain name containing the trademark could have been used by the Respondent for a legitimate purpose, such as in conjunction with a bona fide offering of goods or services, or other legitimate noncommercial or fair use without intent for commercial gain to misleadingly divert consumers. Nor is there any evidence that the Respondent has been commonly known by the disputed domain name.
The Respondent has not produced evidence of any rights or legitimate interests in the disputed domain name to rebut the Complainant's prima facie showing the contrary, and therefore fails to establish any rights or legitimate interests in the disputed domain name. See Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455.
Accordingly, the Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(ii) of the UDRP. C. Registered and Used in Bad Faith
This Panel is strongly persuaded by the evidence filed into the record demonstrating that the Respondent had used the disputed domain name to engage in a "phishing" identity theft scheme and fraud upon the Complainant and its personnel, by sending emails using the disputed domain name and purporting to be the Complainant. This Panel cites with approval the decision in B & H Foto & Electronics Corp. v. Whois Privacy Protection Service, Inc. / Jackie Upton,WIPO Case No. D2010-0841 which held the disputed domain name in that case was both registered and used in bad faith when the disputed domain name was used in a fraud scheme to send email orders immediately following registration that would appear to have been issued by the complainant, using the names of the complainant's employees and an email domain name differing by only two letters from the complainant's domain name.
The facts of the above case are similar to this case. In both cases, the fraudulent "phishing" activities were conducted or attempted immediately following registration of the disputed domain name. In this case, the activity was conducted on the same day. It appears that the Respondent or another individual, or individuals with access or control over the disputed domain name, masqueraded as the CEO of the Complainant, in an attempt to induce the transfer of a significant amount of funds (USD 16,500). This Panel accepts as conclusive the evidence filed as Annex 7 to the Complaint, and agrees with the Complainant that bad faith is plainly evident, sufficient in fact to obviate any rights or legitimate interests the Respondent had or may have had in the disputed domain name to begin with, and further is inclined to believe that defrauding the Complainant was the sole purpose the Respondent had registered the disputed domain name.
On the Complainant's further allegation that the email identification of the Respondent as supplied to the Registrar itself contains a suspicious misspelling of "red wing shoes", suggesting that the Respondent is a serial and repeat phishing offender and is or has been targeting other entities (here the e-commerce venture ""), this allegation assumes certain facts that are not in our record, and should be properly raised by a complainant with the rights, title or interest in that particular mark or domain name, allowing the Respondent a rightful opportunity to defend or assert its interest in the same, if any. Therefore the Complainant's further allegation's merits do not form part of this Panel's consideration, howsoever irresistible such a conclusion may be.
Nonetheless, this Panel finds bad faith registration and use to be amply proven by the existing evidence, and thus the Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(iii) of the UDRP. 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.
Syed Naqiz Shahabuddin
Sole Panelist
Date: January 27, 2017
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