The Complainant is Alfa Laval Corporate AB of Lund, Sweden, of Sweden, represented by Advokatbyrån Gulliksson AB, Sweden.
The Respondent is Prince, Michael, PMUJ of Lagos, Nigeria. 2. The Domain Names and Registrars
The disputed domain names and are registered with PDR Ltd. d/b/a PublicDomainR 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 18, 2017. On August 18, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 19, 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 Complainant submitted an amendment to the Complaint on August 25, 2017.
The Center verified that the Complaint together with the amendment to 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”).
On August 23, 2017, the Center communicated to the Parties that action was needed to ensure that the disputed domain name was active (i.e. not expired) during the proceedings. On August 25, 2017, the Complainant advised that it wished that the disputed domain name be renewed and remain under lock. It was subsequently confirmed by the Registrar that the Complainant had paid the corresponding fees.
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint and amendment to the Complaint (including annexes), and the proceedings commenced on September 1, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 21, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 22, 2017.
The Center appointed David J.A. Cairns as the sole panelist in this matter on October 6, 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 a Swedish corporation specialised in heat transfer, centrifugal separation and gas and fluid handling products and services across many industries.
The Complainant is the registered owner of numerous registered trademarks, including the European Union trade mark (EUTM) registration number 003481702 for the word mark ALFA LAVAL, registered on March 3, 2005, and the United States trademark registration number 0764251 for the trademark ALFA LAVAL, registered on February 4, 1964.
The Complainant holds several domain name registrations worldwide containing the ALFA LAVAL mark including its main on-line marketing portal at , registered on May 12, 1997, and various country-code Top-Level Domains (ccTLDs), such as , registered on April 19, 2002.
The disputed domain name was registered on June 20, 2016, and the disputed domain name was registered on June 22, 2017. The Panel entered both disputed domain names in its web browser on October 13, 2017. The Panel found that the landing site for the disputed domain name contained a communication announcing that the site had been blocked, whilst there was no active landing page for the disputed domain name . 5. Parties’ Contentions A. Complainant
The Complainant states that ALFA LAVAL trademark has been used extensively for more than a 100 years and is famous and well known in the Complainant’s business sectors of heat transfer, centrifugal separation, and gas and fluid handling products and services. The Complainant states that it was founded in 1907.
The Complainant states that the disputed domain names are confusingly similar to the ALFA LAVAL trademarks. It states that the substitution of the letter “i” for the letter “l” in both disputed domain names does not alter substantially the disputed domain names in relation to the Complainant’s ALFA LAVAL trademark. It states the disputed domain names contain sufficiently recognizable elements of the ALFA LAVAL trademark and should be considered obvious or intentional misspellings. In any event, the Complainant alleges that the high degree of similarity aurally and visually leads to conclude that the disputed domain names are confusingly similar to the Complainant’s ALFA LAVAL trademark.
The Complainant states that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant asserts that there is no relationship between the Complainant and the disputed domain names and the Respondent. It avers that it has found no evidence of any offering of goods or services under the disputed domain names, or a sign of legitimate or fair use of the disputed domain names. The Complainant alleges that the Respondent has carried out phishing activities using the disputed domain names by impersonating the Complainant for fraudulent purposes. It states that there is no website attached to the disputed domain names, nor any evidence of historic use.
The Complainant states that the Respondent has registered and is using the disputed domain names in bad faith. It states in the Complaint that the disputed domain names are passively held and were evidently registered to take unfair and illegitimate advantage of the ALFA LAVAL trademark. The Complainant states that the disputed domain names involve obvious or intentional misspellings of the ALFA LAVAL trademark, and the mere fact that the Respondent is the holder of two misspellings of the ALFA LAVAL trademark is itself evidence of bad faith. It alleges a clear case of typosquatting.
In the amendment to the Complaint, the Complainant also alleges (and submits supporting evidence) that the Respondent had used the disputed domain names for fraudulent purposes. It refers to email correspondence that it allegedly demonstrates that the Respondent had used the disputed domain names to create email addresses so as to mislead the Complainant’s customers to make payments to the Respondent. The Complainant states that the use of domain names to create an email address so as to impersonate another business constitutes bad faith.
The Complainant requests that the disputed domain name be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Panel is required to decide 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. (Paragraph 15(a) of the Rules).
The Policy requires the Complainant to prove all three of the following elements to be entitled to the relief sought: (i) that the disputed 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 disputed domain name; and (iii) that the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy elaborates some circumstances that shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(c) of the Policy sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all evidence presented, shall demonstrate that the Respondent has rights or legitimate interests in the disputed domain name. A. Identical or Confusingly Similar
The Panel accepts that the Complainant owns the trademark registrations for the word mark ALFA LAVAL referred to above.
Section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition. (“WIPO Overview 3.0”) states that the test for identity or confusing similarity “typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name”.
Section 1.9 WIPO Overview 3.0 states that “[a] domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element. This stems from the fact that the domain name contains sufficiently recognizable aspects of the relevant mark.” The same paragraph gives as an example of such typos the “substitution of similar-appearing characters”.
In the present case, the disputed domain names are not identical to the ALFA LAVAL trademark. Each disputed domain name differs from the trademark in that a letter ‘i’ is substituted for a letter ’l’ in the trademark, and the disputed domain names each comprise a single word (‘aifalaval’ and ‘alfalavai’ respectively), while the ALFA LAVAL trademark comprise two words.
The Panel considers that on a side-by-side comparison, the disputed domain names are confusingly similar to the ALFA LAVAL trademark for the following reasons: (i) ALFA LAVAL is a distinctive name; (ii) the differences between the disputed domain names and the ALFA LAVAL trademark are minor, and easily overlooked; (iii) on a visual comparison, the letters “l” and “i” are very similar and can be easily confused; (iv) the terms “aifalaval” and “alfalavai” do not have any original meaning; and (v) the overall effect of the disputed domain names is to suggest the Complainant’s ALFA LAVAL trademark.
For these reasons, the Panel considers that the disputed domain names are confusingly similar to the Complainant’s trademark. B. Rights or Legitimate Interests
The Panel notes the following circumstances in relation to any possible rights or legitimate interests of the Respondent in the disputed domain names: (i) there is no evidence that the Respondent has any contractual or proprietary rights in any registered trademark corresponding to the disputed domain name; (ii) the Respondent is not authorised or licensed by the Complainant to use the ALFA LAVAL trademark or to register and use the disputed domain names; (iii) there is no evidence that the Respondent has been commonly known by the disputed domain names.
Paragraph 4(c) of the Policy refers to three circumstances, any of which is sufficient to evidence that the Respondent has rights or legitimate interests in the disputed domain names. There is no evidence of any use of the disputed domain names to make a bona fide offering of goods or services; rather the only evidence of use of the disputed domain names is to create email addresses from which the Respondent has sought to impersonate the Complainant in order to deceive and defraud its customers. This is clearly neither a bona fide offering of goods or services nor a fair use of the disputed domain names within the meaning of paragraph (4)(c)(i) or (iii) of the Policy.
For the above reasons, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain names. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that a disputed domain name was registered in bad faith and also that it is being used in bad faith. Paragraph 4(b) of the Policy sets out four circumstances “in particular but without limitations” which, if found to be present by a Panel, shall be evidence of the registration and use of a domain name in bad faith.
In the present case, there is no evidence of any webpage associated with the disputed domain names. Nevertheless, the Complainant in its amended Complaint has provided evidence that the Respondent has used the disputed domain names to create deceptive email addresses that have then been used to send fraudulent communications to the Complainant’s customers.
The Panel finds that bad faith registration within the meaning of paragraph 4(b) of the Policy is established in the present case for the following reasons: (i) the Panel finds that the Respondent’s choice of the terms “aifalaval” and “alfalavai” for the disputed domain names was deliberate, and in full knowledge of the Complainant’s ALFA LAVAL trademark; (ii) the substitution of the letter “l” with “i" was made because it was a visually barely discernable variation, which might easily be overlooked; (iii) at the time of registration the Respondent knew and intended that Internet users would confuse the disputed domain names and the Complainant’s ALFA LAVAL trademark; and (iv) this is a clear case of typosquatting which presupposes registration in bad faith.
The Panel is also satisfied that the Respondent is using the disputed domain names in bad faith because the Respondent has used the disputed domain names to establish email addresses so as to impersonate the Complainant and to make fraudulent communications to the Complainant’s customers, in order to deceive the customers into making payments to the Respondent in the belief that the payments were being made to the Complainant.
Further, typosquatting, in itself, constitutes registration and use in bad faith (see National Association of Professional Baseball Leagues, Inc., d/b/a Minor League Baseball v. John Zuccarini,WIPO Case No. D2002-1011,“Typosquatting, however, is the intentional misspelling of words with intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith”).
For these reasons, the Panel finds that the Respondent has registered and is using the disputed domain names in bad faith. D. Remedy
The Complainant seeks the transfer of the disputed domain name to the Complainant, and the Panel so orders.
The Complainant makes no request for any remedy in respect of the disputed domain name. Accordingly, there is a question as to what remedy, if any, should be ordered in respect of the domain name.
The Complainant in failing to request a remedy in respect of the disputed domain name has not complied with paragraph 3(x) of the Rules that requires a complaint to “specify, in accordance with the Policy, the remedies sought”. When a party does not comply with the Rules “the Panel shall draw such inferences therefrom as it considers appropriate” (paragraph 14(b) of the Rules).
Paragraph 4(j) of the Policy provides that the remedies available to a complainant are limited to cancellation or transfer. Having initiated the proceeding in relation to the disputed domain name and demonstrated that the three elements of the Policy are satisfied, the rational inference is the Complainant wishes some remedy for the violation of its rights, and that the remedy required must have been either transfer or cancellation as these are the only two remedies available under the Policy.
The Panel notes that the cancellation of an infringing domain name, does not require a complainant to take responsibility for the domain name, with its registration obligations and costs. Cancellation is therefore a more minimalist remedy than transfer.
However, in this case, the Complainant is a substantial corporation, and the Panel infers that it would seek the more effective remedy, irrespective of cost and convenience considerations. This is particularly so in the current case, where the disputed domain names have been used for fraudulent purposes, and if not transferred to the Complainant may be used for fraudulent purposes again. The Panel notes that the remedy of cancellation in no way guarantees that a trademark owner can subsequently make a defensive registration of the disputed domain name if it so wishes. To the contrary, the existence of “drop-catching” services show that a cancelled domain name might be registered by a third party (or even again by the respondent) before the trademark owner has an opportunity to register it. In the current case, cancellation is simply not an adequate remedy given the circumstances of the violation of the Complainant’s rights.
Finally, the fact that the Complainant has requested the transfer of the supports an inference that the Complainant has no objection to accepting the transfer of the disputed domain name as well.
Accordingly, the Panel decides that transfer is also the appropriate remedy for the disputed domain name. 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.
David J.A. Cairns
Sole Panelist
Date: October 23, 2017
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