The Complainants are Datamatics Global Services Limited of Mumbai, India, and CIGNEX Datamatics Technologies Limited of Ahmedabad, India, represented by Amir Arsiwala, India.
The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America ("United States") / Avinash Gupta of Hyderabad, India. 2. The Domain Name and Registrar
The disputed 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 December 29, 2017. On January 2, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 3, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 4, 2018, 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 January 8, 2018.
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 January 9, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 29, 2018. On January 9, 2018, the Center received an informal email communication from the Respondent. The Center notified the Parties of the commencement of the panel appointment process on January 31, 2018.
The Center appointed Harini Narayanswamy as the sole panelist in this matter on February 6, 2018. 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 First Complainant, Datamatics Global Services Limited, is an Indian company in the area of Information Technology. The Second Complainant, CIGNEX Datamatics Technologies Limited, is a step down subsidiary of the First Complainant. The Complainants use the trademarks DATAMATICS and CIGNEX DATAMATICS in connection with their business. The registered trademarks of the Complainants are:
TRADEMARK
REGISTRATION NO.
DATE
CLASS
DATAMATICS
1464302
June 26, 2006
35
DATAMATICS
1464303
June 26, 2006
36
DATAMATICS
1464304
June 26, 2006
38
DATAMATICS
1464305
June 26, 2006
41
DATAMATICS
1464306
June 26, 2006
42
CIGNEX DATAMATICS
2382220
August 21, 2012
9
CIGNEX DATAMATICS
2382214
August 21, 2012
35
CIGNEX DATAMATICS
2382216
August 21, 2012
42
The international registered trademarks of the Complainants are:
TRADEMARK
REGISTRATION NO.
REGISTRATION DATE
JURISDICTION
DATAMATICS
3987749
July 5, 2011
United States of America
DATAMATICS
2525830
September 11, 2009
Great Britain and Northern Ireland
DATAMATICS
008920084
August 2, 2010
European Union
CIGNEX DATAMATICS
4274568
January 15, 2013
United States of America
CIGNEX DATAMATICS
10728087
July 26, 2012
European Union
The Respondent registered the disputed domain name on September 21, 2017.
The disputed domain name resolves to the Registrar's parking page. 5. Parties' Contentions A. Complainant
The Complainants state that the First Complainant was incorporated on November 3, 1987. Its promoters had coined the term "Datamatics" and have used it from 1975 under the name "Datamatics Consultants Limited". The Second Complainant was incorporated on November 30, 2006, and offers solutions in the area of Open Source, Cloud, and Automation. The Complainants state that the shares of the First Complainant have been listed in Indian Stock Exchanges from the year 2004.
The Complainants state that the word "Datamatics" is being used by more than twenty of its group companies as part of their corporate names. Furthermore, the DATAMATICS trademark is used by its group companies in connection with their business. The First Complainant is the registrant of the domain name , which is used for communications with its potential employees. The Second Complainant owns the domain name , which is also used by the First Complainant for purposes of communication with its potential employees.
The Complainants state that the disputed domain name is confusingly similar to their trademarks and has been registered and used in bad faith to launch phishing attacks. The Complainants assert that soon after the registration of the disputed domain name, their staff were approached by numerous persons claiming to have received employment offers from the Second Complainant. On enquiry, the Complainants state that the false offer letters of employment were found to be sent by email from the disputed domain name.
The Complainants contend that the Respondent has made deceptive use of the Complainants' trademarks under the pretext of providing employment, with an intention of obtaining personal details from recipients. Such activity could be termed a "phishing attack", state the Complainants. Referring to prior decisions, the Complainants assert that domain names falsely incorporating others' trademarks and used for phishing activity is recognized as bad faith under the Policy. Further, the use of privacy services by the Respondent, under the circumstances, indicate the Respondent's bad faith motives, assert the Complainants.
The Complainants argue that the Respondent has no rights or legitimate interests in the disputed domain name, as the disputed domain name has not been put to use and it resolves to a blank page. The Complainants further argue that there is no correlation between the Respondent's name and the disputed domain name. The Complainants request as a remedy the transfer of the disputed domain name to the Second Complainant. B. Respondent
The Respondent did not file a response in these proceedings. The Respondent, however, sent an email communication on January 9, 2018 to the Center. In that email, it has been stated that the Respondent would deactivate the disputed domain name and "go for a new one", due to the dispute concerning the domain name. The Respondent also further seems to state that there would arise no reason for further disputes with the two named Complainants of the present dispute. 6. Discussion and Findings
To obtain the remedy of transfer of the disputed domain name, the Complainant has to establish the three requirements set out under paragraph 4(a) of the Policy. These are:
The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and
The Respondent lacks rights or legitimate interests in the disputed domain name; and
The disputed domain name was registered and is being used in bad faith by the Respondent. A. Identical or Confusingly Similar
The Complainants, under the first requirement of paragraph 4(a) of the Policy, need to establish that the disputed domain name is confusingly similar to a trademark or a service mark in which they have rights.
The Complainants have established registered rights in the trademarks DATAMATICS and CIGNEX DATAMATICS. Copies of trademark registration certificates for the said marks are submitted as evidence by the Complainants. The disputed domain name contains the terms "Datamatics" and "Cignex". The trademark DATAMATICS is completely incorporated in the disputed domain name, whereas the trademark CIGNEX DATAMATICS is used in the disputed domain name but interchanges the terms "Datamatics" and "Cignex". The Panel finds that merely reversing the terms "Datamatics" and "Cignex" does not support a finding that the disputed domain name ceases to be confusingly similar to the CIGNEX DATAMATICS mark.
In the minds of the public and the persons in the trade, the terms "Cignex" and "Datamatics" are affiliated with the Complainants, who have rights in the corresponding trademarks due to extensive use. It is significant that the DATAMATICS mark has been placed first in the disputed domain name. Being the older of the two marks, DATAMATICS could bring about immediate recall of the Complainants in the minds of users, given that the DATAMATICS mark is widely associated with the Complainants and their group of companies.
The Panel therefore finds the disputed domain name, comprising of the terms "Datamatics" and "Cignex", is confusingly similar to the trademarks in which the Complainants have rights. The Complainants have accordingly established the first requirement under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
The second element under paragraph 4(a) of the Policy requires the Complainant to make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Complainants have argued that the Respondent lacks rights or legitimate interests as the disputed domain name resolves to a blank page and there is no correlation between the Respondent's name and the disputed domain name. The Panel notes that the website currently resolves to the Registrar provided parking page. The Panel finds the registration record shows the Respondent's name is Avinash Gupta, and there is no material on record to indicate that the Respondent has been commonly known by the disputed domain name. The Panel also finds there is no business affiliation between the Parties, nor has any permission or license been given to the Respondent by the Complainants to use their marks in any manner.
The Complainants have submitted evidence of an employment offer letter, where the potential employee is required to submit scanned copies of personal documents to the email address offer@datamaticscignex. A list of such documents include: education certificates, employment and salary details, identity proof, and address proof among others. The Panel finds from the evidence submitted by the Complainants that the Respondent's employment offer letter appears to be sent by the Second Complainant. Clearly, this shows an attempt to use the disputed domain name for purposes of phishing, namely, to lure people to provide sensitive information by disguising as a trustworthy entity. Use of the disputed domain name for a phishing scheme is not a bona fide offering of goods or services under the Policy. See Diamond Hill Investment Group, Inc. v. Richard Stroud, WIPO Case No. D2016-0510. The Panel accordingly finds that there is no material on record to suggest that the disputed domain name is used in connection with a bona fide offering of goods or services by the Respondent.
The Panel notes from the Respondent's email dated January 9, 2018 to the Center that the Respondent has not addressed any of the allegations made in the Complaint. Based on the evidence and the unrebutted submissions, the Complainants are found to have made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Respondent has also stated in the email to the Center that the disputed domain name would be deactivated by the Respondent. The Panel is of the view that the Respondent's offer to discontinue use of the disputed domain name adds to the inference of the Respondent's lack of rights and legitimate interests.
The Panel accordingly finds the Complainant has established the second element under paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
The third element under paragraph 4(a) of the Policy requires the Complainant to establish the disputed domain name has been registered and is being used in bad faith by the Respondent.
The Panel finds the Respondent has made deliberate use of the disputed domain name that is confusingly similar to the Complainants trademarks for purposes of gathering personal information from persons seeking employment with the Second Complainant. Inducing users into disclosing personal information based on a fraudulent email scheme from a disputed domain name constitutes phishing. See Balfour Beatty plc v. Steve Levett,WIPO Case No. D2017-1941. Such use of the disputed domain name for purposes of phishing emails, even if the website is inactive, under the circumstances, does not prevent a finding of bad faith. See Klarna Bank AB v. Shen Zhong Chao,WIPO Case No. D2017-2491.
Wrongful use of others' trademarks to extort information from unsuspecting and unwary people, by using the disputed domain name for phishing activity, is considered abusive registration of the disputed domain name under the Policy. See CareerBuilder, LLC v. Stephen Baker,WIPO Case No. D2005-0251; The Boots Company, PLC v. The programmer adviser,WIPO Case No. D2009-1383; and Societe Francaise Du Radiotelephone - SFR v. Morel David,WIPO Case No. D2009-1563.
In Go Daddy Operating Company, LLC v. Wu Yanmei,WIPO Case No. D2015-0177, emails sent by the respondent from domain names using the complainant's trademark in an attempt to obtain complainant's customer information was held to be use of the disputed domain name for a phishing scheme and consequently bad faith under the Policy. See also Fareportal Inc. v. Jarin Lawrence,WIPO Case No. D2016-2453, where the respondent's use of the disputed domain name for purposes of phishing activity of attempting to solicit sensitive information was held to constitute bad faith registration and use under the Policy, and AB Electrolux v. Piotr Pardo, WIPO Case No. D2017-0368, where engaging in fraudulent email phishing activities through unauthorized use of a trademark for obtaining data or deriving information is construed as bad faith under the Policy.
Misuse of information derived from phishing activity is likely to lead to tainting or tarnishing the trademark. See Banca Intesa S.p.A v. Moshe Tal,WIPO Case No. D2006-0228. The use of a disputed domain name in a "phishing" scheme is in itself evidence that the disputed domain name was registered and is being used in bad faith. See Yahoo Holdings, Inc. v. Registration Private, Domains By Proxy, LLC / Technonics Solutions,WIPO Case No. D2017-1336; BHP Billiton Innovation Pty Ltd v. Domains By Proxy LLC/ Douglass Johnson,WIPO Case No. D2016-0364.
In Intesa Sanpaolo S.p.A v. Name Redacted,WIPO Case No. D2016-1286, it was held that phishing is bad faith use according to paragraph 4(b)(iv) of the Policy. Paragraph 4(b)(iv) of the policy specifies that bad faith is established where a respondent has intentionally registered and used the disputed domain name in an attempt to attract, for commercial gain, Internet users to an online location by creating a likelihood of confusion with the complainant's mark. In Archer-Daniels-Midland Company v. Chamiris Mantrana,WIPO Case No. D2013-0257, citing the case Halifax plc v. Sontaja Sunducl,WIPO Case No. D2004-0237, it was stated that "[t]he potential for 'phishing' and obtaining information by deception, is not just evidence of bad faith, but possibly suggestive of criminal activity."
In conclusion, the Panel finds from the entire circumstances of the case that there appears to be no convincing legitimate reason for the Respondent's choice of the disputed domain name. The Respondent has targeted the Complainant's mark, by registering the disputed domain name that is a confusingly similar variant of the Complainants' trademarks and setting up a scheme to use the disputed domain name for phishing activities. Such is the basis to find bad faith registration and use of the disputed domain name. Further inference of bad faith can be drawn from the fact that the Respondent has used privacy services to register the disputed domain name and opted to deactivate the disputed domain name when confronted with a dispute.
The Panel finds, for the reasons discussed, that the Complainant has successfully established the third element under paragraph 4(a) of the Policy. 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 Second Complainant, CIGNEX Datamatics Technologies Limited.
Harini Narayanswamy
Sole Panelist
Date: February 19, 2018
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