Complainant is AdvanSix Resins & Chemicals, LLC of Parsippany, New Jersey, United States of America, represented by Faegre Baker Daniels, LLP of Indianapolis, Indiana, United States of America.
Respondent is Name Redacted.1 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with Google Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 31, 2018. On February 1, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 2, 2018, 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 Respondent of the Complaint, and the proceedings commenced on February 5, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 25, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 1, 2018.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on March 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
Complainant states that it “and its predecessors in interest have been in the chemicals industry for almost 135 years”; that it “employs approximately 1,300 employees across its six facilities in the United States of America and China in service of its approximately 500 customers, globally”; and that “[a]s of the end of the third quarter, 2017, Complainant held a total of nearly a billion dollars in assets and made cumulative year-to-date gross sales of over 1.1 billion dollars.”
Complainant further states that “[t]he decision to use ADVANSIX as the house-mark and unifying brand for Complainant’s business was made public when its reorganization was announced in a press release on May 12, 2016”; that it “has filed 53 applications for the ADVANSIX house-mark (in either stylized or word-only format), covering as many as 26 jurisdictions around the world in association its wide range of product”, some of which have registered, including U.S. Reg. No. 5,321,829 for the mark ADVANSIX (first used in commerce December 12, 2016; registered October 31, 2017) for use in connection with various chemicals (the “ADVANSIX Trademark”).
The Disputed Domain Name was registered on December 13, 2017, and, according to Complainant, is being used by Respondent “to perpetrate a fraudulent scheme by sending emails from an outgoing email server using the Domain Name,” including emails “impersonating[the] President and Chief Executive Officer of Complainant, to Complainant’s other executives in attempts to secure fraudulent payments.” Respondent has not contradicted this. 5. Parties’ Contentions A. Complainant
Complainant contends, in relevant part, as follows:
- The Disputed Domain Name is confusingly similar to the ADVANSIX Trademark because “the [Disputed] Domain Name entirely incorporates the federally registered ADVANSIX trademark, minus the letter ‘i,’ and simply represents ‘typo-squatting’ or purposeful misspelling”; and “[i]t is well-established under the Policy that a domain name composed solely of a trademark that has been purposefully misspelled by a typo-squatter is still confusingly similar to the trademark.”
- Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “Respondent is neither using the Domain Name in connection with the bona fide offering of goods and services nor making a legitimate noncommercial or fair use of the Domain Name”; “Respondent uses the Domain Name to perpetrate a fraudulent scheme by sending emails from an outgoing email server using the Domain”; and “Complainant has not given Respondent permission, authorization, consent or license to use its ADVANSIX trademark, nor has Respondent requested such permission.”
- The Disputed Domain Name was registered and is being used in bad faith because, inter alia, “[p]anels have repeatedly found that use of a domain name to send e-mail purporting to be from the President and CEO of [c]omplainant to the CFO of [c]omplainant requesting a significant wire transfer’ is clear evidence of registration and use of a domain in bad faith” (internal punctuation and citation omitted); “panels have found that the registration of a domain name that is confusingly similar to a registered trademark by an entity that has no relationship to the mark is sufficient evidence to demonstrate opportunistic bad faith”; and “[t]he WhoIs information provided by the Respondent, purporting that the Domain Name was registered by Complainant’s own President and Chief Executive Officer, is not accurate.” B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name has been registered and is being used in bad faith. (Policy, paragraph 4(a)). A. Identical or Confusingly Similar
Based upon the trademark registration cited by Complainant, it is apparent that Complainant has rights in and to the ADVANSIX Trademark.
As to whether the Disputed Domain Name is identical or confusingly similar to the ADVANSIX Trademark, the relevant comparison to be made is with the second-level portion of the Disputed Domain Name only (i.e., “advansx”) because “[t]he applicable Top-Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.1.
Here, the Disputed Domain Name contains the ADVANSIX Trademark in its entirety. The only differences between the ADVANSIX and the Disputed Domain Name is the missing letter “i”.
As stated in WIPO Overview 3.0, section 1.7, “in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.”
It is obvious that the Disputed Domain Name contains the ADVANSIX Trademark in its entirety other than the missing letter “i” and that “a missing letter… in the middle, a mistake easily made by web users quickly typing in a domain name… [is a] deliberate and obvious misspelling of a mark [that] constitutes ‘typosquatting’, and does not make a domain name any less ‘identical or confusingly similar’ for purposes of satisfying this first prong of paragraph 4(a)(i) of the Policy.” Allstate Insurance Company v. Acme mail,WIPO Case No. D2010-2162.
Accordingly, the Panel finds that Complainant has proven the first element of the Policy. B. Rights or Legitimate Interests
Complainant has argued that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “Respondent is neither using the Domain Name in connection with the bona fide offering of goods and services nor making a legitimate noncommercial or fair use of the Domain Name”; “Respondent uses the Domain Name to perpetrate a fraudulent scheme by sending emails from an outgoing email server using the Domain”; and “Complainant has not given Respondent permission, authorization, consent or license to use its ADVANSIX trademark, nor has Respondent requested such permission.”
WIPO Overview 3.0, section 2.1, states: “While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
The Panel finds that Complainant has established its prima facie case and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has satisfied the second element of the Policy. C. Registered and Used in Bad Faith
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).
Here, Complainant has provided an email sent from an address using the Disputed Domain Name to “other executives” inquiring about payment to a “supplier” in Hong Kong, (China). The email states that “[w]e need to get payment across to them not later than next tomorrow Thursday” and adds: “I have a bit of a cold, I can just email you the details to process the payment upon confirmation.”
As described in the Complaint, this email impersonates Complainant’s chairman and CEO (and contains the signature block for the chairman and CEO) and is designed “to perpetrate a fraudulent scheme.” Complainant further states: “this fraudulent activity was quickly identified by Complainant’s IT security personnel and all email traffic originating from the Domain Name was blocked. Presumably, if this had not occurred, Respondent would provide wire transfer instructions in order to receive the referenced fraudulent payment.” Complainant’s description is supported by appropriate evidence and is not contradicted by Respondent.
. The Panel agrees with Complainant that using a domain name to impersonate a trademark owner creates a likelihood of confusion and, therefore, bad faith under the Policy. See, e.g., Comerica Bank v. Name Redacted,WIPO Case No. D2017-1686 (“[i]t is clear from the record that the Respondent’s motive in relation to the registration and use of the disputed domain name was to capitalize on the Complainant’s trademark rights by creating a likelihood of confusion with the Complainant’s mark, with the ultimate aim to profit illicitly therefrom”); and Oldcastle, Inc. v. Name Redacted,WIPO Case No. D2017-0327 (“[t]he Panel considers the Respondent’s act of obtaining a domain name appropriating the Complainant’s mark and falsely registering it in the name of one of the Complainant’s officers as tantamount to identify theft”).
Accordingly, the Panel finds that Complainant has proven the third element 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 Complainant.
Douglas M. Isenberg
Sole Panelist
Date: March 19, 2018
1 As it appears the Respondent has fraudulently used a name of an officer of Complainant when registering the Disputed Domain Name, the Panel has decided that no purpose can be served by including the named Respondent in this decision, and has therefore redacted the Respondent’s name from the caption and body of this decision. The Panel has, however, attached as Annex 1 to this Decision an instruction to the Registrar regarding transfer of the Disputed Domain Name that includes the named Respondent, and hereby authorizes the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding. However, the Panel has further directed the Center, pursuant to paragraph 4(j) of the Policy and paragraph 16(b) of the Rules, that Annex 1 to this Decision shall not be published due to exceptional circumstances. See Banco Bradesco S.A. v. FAST-12785241 Attn. B / Name Redacted,WIPO Case No. D2009-1788.
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