The Complainant is Cummins Inc. of Columbus, Indiana, United States of America ("United States"), represented by Mayer Brown LLP, United States.
The Respondent is Brian Lucas, Colfor Manufacturing, Inc. of Toronto, Ontario, Canada. 2. The Domain Name and Registrar
The disputed domain name (the "Domain Name") is registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 9, 2017. On March 9, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 9, 2017, 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 March 14, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 3, 2017. A communication from a company apparently related to the Respondent was received by the Center on March 20, 2017 requesting a copy of the Complaint. The Center notified the Commencement of the Panel Appointment process to the Parties on April 10, 2017.
The Center appointed Dawn Osborne as the sole panelist in this matter on April 18, 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 owns the registered trade marks CUMMINS (e.g., United States trade mark number 579346, registered on September 1, 1953) and CUMMINS FILTRATION (e.g., United States trade mark number 3878201, registered on November 16, 2010), inter alia in the United States and Canada (where the Respondent has stated that it is based) for engines and related goods and services with first registration of CUMMINS obtained in 1953 in the United States.
The Domain Name was registered on December 20, 2016. As evidenced in the Complaint, the Domain Name has been used for a web site that appears to be an official site of the Complainant, as well as in an email scam in attempt to obtain goods by deception. 5. Parties' Contentions A. Complainant
The Complainant's contentions can be summarised as follows:
The Complainant is the world's largest independent engine manufacturer and is the owner of hundreds of trade mark registrations around the world for marks comprising or incorporating "cummins", including CUMMINS FILTRATION (device mark). It has used the CUMMINS brand since 1919 and specifically the mark CUMMINS FILTRATION (device mark) since 2006. The CUMMINS brand is well known and famous.
Respondent registered the Domain Name in 2016. It is currently disabled, however Respondent has most recently used the Domain Name to intentionally mislead customers and cause customer confusion. Specifically the Respondent has apparently operated an email address at "[…]@" under the name of a retired employee to impersonate the Complainant and cause consumers to wrongly believe that the Domain Name is affiliated directly with Complainant, implying that it is the web site for the Complainant's North America division.
The Domain Name is confusingly similar to the CUMMINS and CUMMINS FILTRATION (device mark), adding "na" intended to stand for "North America", where the Complainant is based, which will not reduce the confusing similarity of the Domain Name with the Complainant's marks. In deciding whether or not a trade mark is identical or confusingly similar to a domain name the generic Top-Level Domain ("gTLD") ".com" may be disregarded.
The Respondent registered the Domain Name many years after the CUMMINS trade mark was first used. The Complainant has not consented to or otherwise authorised the Respondent's use of the CUMMINS marks. The Respondent is not affiliated with or endorsed by the Complainant in any way. The Respondent is not commonly known by the Domain Name and does not own any trade mark rights in the "cummins" name.
The Domain Name most recently resolved to a web site that purported to have a direct affiliation with Complainant and falsely purported to be the Complainant's North American division and falsely purported to offer genuine CUMMINS products. The web site used the Complainant's CUMMINS trade marks and the message "Welcome to Cummins Filtration North America" and gave a postal address affiliated with the Complainant evidencing Respondent's awareness of the Complainant. Also the actual name of an ex−employee of the Complainant was used in relation to an email using the Domain Name without any authorization. Respondent has made a deliberate attempt to attract Internet users to the website attached to the Domain Name for commercial gain and has tried to create the appearance of a legitimate business connection by operating an email address associated with the Domain Name incorporating the CUMMINS mark in an attempt to create and intercept delivery orders with legitimate businesses by impersonating the Complainant which cannot provide the Respondent with rights or legitimate interests in the Domain Name. The Respondent has used the Domain Name and the Complainant's trade marks to perpetuate fraudulent transactions for commercial gain and to mislead Internet users into believing the Respondent is affiliated with the Complainant when it is not.
The Domain Name has been registered and used in bad faith. The use shows the Respondent was aware of the Complainant and its business. The Domain Name has been registered to intentionally attempt to attract Internet users to the Respondent's web site by creating a likelihood of confusion with the Complainant's CUMMINS trade marks as to the source, affiliation or endorsement of the Respondent's website. Using a Domain Name for fraud is clear bad faith. B. Respondent
The Respondent did not provide a response in these proceedings. 6. Discussion and Findings A. Identical or Confusingly Similar
The Domain Name consists of the Complainant's CUMMINS mark (which is registered in, inter alia, the United States and Canada for engine-related products and services, with first registration in 1953), the dictionary term "filtration", the two-letter abbreviation for North America "na" and the gTLD ".com". Previous UDRP panels have found confusing similarity when a respondent merely adds a dictionary term to a complainant's mark. See PG&E Corporation v. Samuel Anderson and PGE in the year 2000,WIPO Case No. D2000-1264 (finding that respondent does not by adding common descriptive or generic terms create new or different marks nor does it alter the underlying mark held by the complainant). The Panel agrees that the addition of the dictionary term "filtration", and the geographic abbreviation for North America "na" to the Complainant's mark does not avoid confusing similarity of the Domain Name from the Complainant's trade mark pursuant to the Policy. In fact it may add to the association of the Domain Name with the Complainant's mark as the Complainant is based in North America and uses the device mark CUMMINS FILTRATION which is also registered.
The gTLD ".com" is typically ignored and does not serve to distinguish the Domain Name from the CUMMINS mark, which is the distinctive component of the Domain Name.
Accordingly, the Panel holds that the Domain Name is confusingly similar for the purpose to a mark in which the Complainant has rights.
As such the Panel holds that paragraph 4 (a)(i) of the Policy has been satisfied. B. Rights or Legitimate Interests
The Complainant has not authorised the use of its CUMMINS mark. The Respondent has not answered this Complaint to give any explanation why it would be allowed to use the CUMMINS mark in the fashion discussed above.
The Respondent uses the Complainant's brand CUMMINS on its web site with the prominent declaration "Welcome to Cummins Filtration North America" which indicates the "na" in the Domain Name is meant to indicate North America, where the Complainant is based. The site does not make it clear that there is no affiliation with the Complainant but rather appears to be an official site of the Complainant using a real postal address associated with the Complainant even though the web site is not. This use is confusing and deceptive. The registrant of the Domain Name is cited as Brian Lucas of Colfor Manufacturing, although the Complainant believes this is false information. In any event it does not appear the Respondent is commonly known as "cummins" or the Domain Name or has any related rights or legitimate interests. Further the Domain Name has been used in an email scam scheme to obtain goods by deception which is the absolute opposite of legitimate use.
As such the Panelist finds that the Respondent does not have rights or legitimate interests in the Domain Name and that the Complainant has satisfied the second limb of the Policy. C. Registration and Use in Bad Faith
In the opinion of the Panel the use made of the Domain Name in relation to the site connected to it is confusing and deceptive in that visitors to the site might reasonably believe it is connected to or approved by the Complainant as it appears to offer competing services under a Domain Name and on a web site containing the Complainant's mark. The use of the Complainant's CUMMINS mark, and "Cummins Filtration" (which is used by the Complainant and registered as a device mark) on the Respondent's web site with a postal address associated with the Complainant and the use of an ex-employee of the Complainant's name in an email scam shows that the Respondent is aware of the Complainant and its business. The email scam also appears to be deliberately capitalising on likely confusion between the Domain Name and the Complainant's mark. Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating likelihood of confusion with the Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of the web site likely to disrupt the business of the Complainant. Further the email scam appears to be fraud, which would be bad faith disruptive use of the Domain Name in itself.
As such, the Panelist believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under paragraphs 4(b)(iv) and 4(a)(iii). 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 Domain Name, , be transferred to the Complainant.
Dawn Osborne
Sole Panelist
Date: May 2, 2017
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