Complainant is Riches, McKenzie & Herbert LLP of Toronto, Canada, represented internally.
Respondent is Musa, Hector of Benin, Nigeria. 2. The Domain Name and Registrar
The disputed domain name (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 February 16, 2017. On February 17, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 20, 2017, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. Complainant submitted an amended Complaint on February 21, 2017.
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 Respondent of the Complaint, and the proceedings commenced on February 22, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 14, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 15, 2017.
The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on March 22, 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
Complainant is a partnership providing legal services in the province of Ontario, Canada, focusing on patents, trademarks and other forms of intellectual property. Complainant is the holder of the following Canadian trademark registration which it uses in connection with intellectual property services and legal services:
RICHES@PATENTS-TORONTO.COM, Canadian trademark registered with the Canadian Intellectual Property Office (“CIPO”) on December 1, 2005 under No. TMA654105 in class 45 for intellectual property services and legal services.
The Disputed Domain Name, , has been registered on November 19, 2016. The Disputed Domain Name does not refer to an active website. However, the Disputed Domain Name has been used for email communication, inter alia,within the email address “riches@”. Complainant produces as evidence email communications in which Respondent requests payment from Complainant’s clients via said email address. 5. Parties’ Contentions A. Complainant
Complainant considers the Disputed Domain Name to be confusingly similar to trademark in which it claims to have rights. Complainant further claims that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. According to Complainant, Respondent has not used the Disputed Domain Name in connection with a legitimate use. Also, according to Complainant, Respondent has not been commonly known by the Disputed Domain Name. Finally, Complainant claims that the Disputed Domain Name was registered and is being used in bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The onus is on Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer the Disputed Domain Name. As the proceedings are administrative, the standard of proof is the balance of probabilities.
Thus for Complainant to succeed, it must prove, within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that:
1. The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
2. Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
3. The Disputed Domain Name has been registered and is being used in bad faith.
The Panel will deal with each of these requirements in turn. A. Identical or Confusingly Similar
To prove this element Complainant must first establish that there is a trademark or service mark in which it has rights. Complainant has clearly established that there is a trademark in which Complainant has rights. The mark has been registered and used.
The Disputed Domain Name differs from Complainant’s trademark as follows: (i) the Disputed Domain Name omits the “riches@” component of Complainant’s trademark, and (ii) the Disputed Domain Name substitutes the letter “e” for the letter “a” in the last portion of Complainant’s trademark. Apart from these differences, the Disputed Domain Name is identical to Complainant’s RICHES@PATENTS-TORONTO.COM trademark. The Panel is of the opinion that the similarities between Complainant’s trademark and the Disputed Domain Name outweigh the differences, and thus, that the Disputed Domain Name is confusingly similar to Complainant’s trademark. The Panel also observes in this respect that Respondent has been using the Disputed Domain Name to communicate with the “riches@” email address, which is virtually identical to Complainant’s RICHES@PATENTS-TORONTO.COM trademark.
Accordingly, Complainant has made out the first of the three elements that it must establish under the Policy. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, Complainant has the burden of establishing that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
It is an established consensus view of previous UDRP panels that it is sufficient for Complainant to make a prima facie showing that Respondent has no rights or legitimate interests in the Disputed Domain Name in order to place the burden of production on Respondent (see Champion Innovations, Ltd. v. Udo Dussling (45FHH),WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110).
The Panel notes that Respondent has not apparently been commonly known by the Disputed Domain Name and that Respondent does not seem to have acquired trademark or service mark rights. Respondent’s use and registration of the Disputed Domain Name was not authorized by Complainant. There are no indications that a connection between Complainant and Respondent existed.
Moreover, the Panel is of the opinion that Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name. The Disputed Domain Name is used to impersonate Complainant and request from clients of Complainant the payment of invoices to unauthorized bank accounts.
Finally, the Panel notes that Respondent did not respond to the complaint.
In view of the foregoing, the Panel considers that Complainant has also made out the second of the three elements that it must establish under the Policy. C. Registered and Used in Bad Faith
Complainant must prove on the balance of probabilities both that the Disputed Domain Name was registered in bad faith and that it is being used in bad faith (See, e.g., Telstra Corporation Limited v. Nuclear Marshmallow,WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd,WIPO Case No. D2006-1052).
In the instant case, the Panel finds that it is undisputed that Respondent had knowledge of Complainant’s rights in the RICHES@PATENTS-TORONTO.COM trademark at the moment it registered the Disputed Domain Name. Respondent used an email address which is virtually identical to Complainant’s trademark in an attempt to impersonate Complainant and to obtain the payment of invoices from clients of Complainant. The use of the email address and the fact that Respondent contacted clients of Complainant is a clear indication that Respondent was aware of Complainant’s trademark rights.
Respondent’s awareness of Complainant’s trademark rights at the time of registration suggests bad faith (See Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz, WIPO CaseNo. D2011-2209; Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite,WIPO Case No. D2001-1070, where POKÉMON was held to be a well-known mark of which the use by someone without any connection or legal relationship with the complainant suggested opportunistic bad faith; BellSouth Intellectual Property Corporation v. Serena, Axel,WIPO Case No. D2006-0007, where it was held that the respondent acted in bad faith when registering the disputed domain name, because widespread and long-standing advertising and marketing of goods and services under the trademarks in question, the inclusion of the entire trademark in the domain name, and the similarity of products implied by addition of telecommunications services suffix (“voip”) suggested knowledge of the complainant’s rights in the trademarks).
The Panel also finds that the use of fraudulent emails in the present case, pretending to be genuine emails coming from Complainant, in an attempt to re-route payments for Complainant constitutes clear evidence of fraudulent and bad faith use, which is detrimental to Complainant’s trademark (See Merial v. Prince, RST Technologies,WIPO Case No. DCO2016-0007).
Finally, by failing to respond to the Complaint, Respondent did not take any initiative to contest the foregoing. Pursuant to paragraph 14 of the Rules, the Panel may draw the conclusions it considers appropriate.
In view of the above, the Panel finds that, on the balance of probabilities, it is sufficiently shown that the Disputed Domain Name was registered and is 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 Name be transferred to Complainant.
Flip Jan Claude Petillion
Sole Panelist
Date: April 4, 2017
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