The Complainant is TELUS Corporation of Scarborough, Ontario, Canada, represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States of America (“United States”).
The Respondent is Domain Admin, Privacy Protect, LLC of Burlington, Massachusetts, United States / Mayur Mangesh Rege, Mayur Consultants of Mumbai, Maharashtra, India. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with Web4Africa Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 21, 2018. On February 21, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 9, 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 March 9, 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 amendment to the Complaint on March 12, 2018.
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”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 12, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 1, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 3, 2018.
The Center appointed John Swinson as the sole panelist in this matter on April 17, 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 Complainant is TELUS Corporation, a Canadian telecommunications company listed on the Toronto Stock Exchange and the New York Stock Exchange. According to the Complaint, the Complainant receives CAD 12.8 billion of annual revenue and has 12.7 million subscriber connections, including 8.6 million wireless subscribers, 1.7 million high-speed Internet subscribers, 1.4 million residential network access lines and more than 1 million TELUS TV customers.
The Complainant owns several registered trade marks for TELUS, the earliest of which was registered in Canada on December 24, 1993 (Canadian Registered Trade Mark Number TMA421361) (the “Trade Mark”).
The Complainant operates its primary business website from a domain name which incorporates the Trade Mark, being .
The Respondent is Mayur Consultants of India. The Respondent did not file a Response, and consequently little information is known about the Respondent.
The Respondent registered the Disputed Domain Name on December 1, 2017. The Disputed Domain Name resolves to what appears to be a website for a hotel located in Toronto, Canada. According to the Complainant, this website is an employment phishing scam through which the Respondent obtains the personal information of job applicants. 5. Parties’ Contentions A. Complainant
The Complainant makes the following contentions.
Identical or Confusingly Similar
The Disputed Domain Name contains the Trade Mark in its entirety. Previous UDRP panels have found that this is sufficient to establish confusing similarity. The addition of the words “tower” and “hotel” do nothing to alleviate any confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Trade Mark is the dominant portion of the Disputed Domain Name.
Rights or Legitimate Interests
The Respondent has no rights or legitimate interests in the Disputed Domain Name. The Complainant has never assigned, granted, licensed, sold or transferred the Trade Mark to the Respondent, or in any way authorized the Respondent to register or use the Trade Mark.
The Respondent is using the Disputed Domain Name in connection with an elaborate website (which displays the Complainant’s logo) for the non-existent “Telus Tower Hotel”. This website is part of a sophisticated online employment phishing scam designed to obtain personally identifiable information and/or fees from unsuspecting job applicants. This does not constitute a bona fide offering of goods or services.
To the Complainant’s knowledge, the Respondent has never been commonly known by the Disputed Domain Name, and has not acquired any trade mark or service mark rights in the Disputed Domain Name.
The Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name. By using the Disputed Domain Name in connection with a website that appears to be associated with the Complainant, the Respondent is conveying the false impression that Internet users can apply for jobs with the Complainant at the website using the Disputed Domain Name. The website at the Disputed Domain Name displays the Complainant’s logo and includes an address for an office building in which the Complainant occupies most floors and which displays exterior signage for the Complainant.
Registered and Used in Bad Faith
The Trade Mark is widely known. Given the fame of the Trade Mark, it is implausible that the Respondent was not aware of the Complainant when it registered the Disputed Domain Name. It is likely the Respondent has engaged in opportunistic bad faith in violation of the Policy. The Respondent likely knew of the Complainant’s reputation and sought to attract Internet users to its website based on that confusion.
Further, the Respondent is using the Disputed Domain Name in connection with a phishing scam. Numerous UDRP panels have found that this constitutes bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the 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.
The onus of proving these elements remains on the Complainant even though the Respondent has not filed a Response.
The Respondent’s failure to file a response does not automatically result in a decision in favour of the Complainant (see, e.g., Airbus SAS, Airbus Operations GmbH v. Alesini Pablo Hernan / PrivacyP,WIPO Case No. D2013-2059). However, the Panel may draw appropriate inferences from the Respondent’s default. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.
The Disputed Domain Name is confusingly similar to the Trade Mark. The Trade Mark is clearly recognizable within the Disputed Domain Name (see WIPO Overview 3.0, section 1.7), with the addition of the descriptive terms “tower” and “hotel”. As submitted by the Complainant, the Panel considers that the Trade Mark is the dominant portion of the Disputed Domain Name, and the addition of these descriptive terms does not alleviate the confusing similarity.
The Complainant succeeds on the first element of the Policy. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Panel finds that the Complainant has made out a prima facie case. This finding is based on the following:
- The Respondent has not used, or made demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods or services. The website at the Disputed Domain Name ostensibly advertises a hotel located in Toronto, Canada. The website displays the Complainant’s logo, and advertises its location as being a building in which the Complainant’s offices are located. The website allows Internet users to book a room or apartment in the hotel, but on clicking the “Book Now” button, the user is redirected to a booking website for a hotel named “The Racquet Club” located in Liverpool in the United Kingdom of Great Britain and Northern Ireland (“United Kingdom”). The connection between the Respondent and “The Racquet Club” is unclear. As submitted by the Complainant, the Panel considers it likely that the Respondent is involved in phishing or some other financial scam. Phishing websites are illegal in most jurisdictions and cannot amount to a bona fide offering of goods or services (see WIPO Overview 3.0, section 2.13, and, e.g., Diageo Ireland v. Guinnessclaim,WIPO Case No. D2009-0679).
- The Panel accepts the Complainant’s submission that it has not authorized or licensed the Respondent to use the Trade Mark.
- The Respondent has not been commonly known by the Disputed Domain Name, and has no trade marks which incorporate the Disputed Domain Name.
- The Respondent has not been making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain. Whatever the Respondent’s intention behind the website, the Panel considers it highly likely that the Respondent is attempting to derive revenue from its use of the Disputed Domain Name.
The Respondent had the opportunity to demonstrate its rights or legitimate interests, but did not do so. As such, the prima facie case established by the Complainant has not been rebutted and the Complainant succeeds on the second element of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
The Complainant has had registered rights in the Trade Mark since 1993. It clearly has a substantial reputation in Canada. The Disputed Domain Name was registered on December 1, 2017. In light of the reputation of the Complainant, as well as the Respondent’s use of the Complainant’s logo on the website at the Disputed Domain Name, and the reference on that website to the office building in Toronto in which the Complainant is located, the Panel considers that there are no conceivable circumstances in which the Respondent did not have the Complainant or the Trade Mark in mind at the time it registered the Disputed Domain Name.
In some circumstances, where the reputation of a complainant in a given mark is significant and the mark has strong similarities to the disputed domain name, the likelihood of confusion is such that bad faith may be inferred (see, e.g., Verner Panton Design v. Fontana di Luce Corp,WIPO Case No. D2012-1909 and cases cited therein). Here, the Panel can reasonably infer that the Respondent sought to make use of the reputation of the Complainant and registered the Disputed Domain Name in bad faith.
The Complainant submits that the website at the Disputed Domain Name is being used in connection with a phishing scam. The Complainant has provided a copy of an email from one of its employees which describes a report made by an individual whose family member applied for a job at the TELUS Tower Hotel and Restaurant. According to the email, that family member was required to provide a copy of their passport to the “employer” as part of the application process.
Also, as stated above, while the website allows Internet users to book a room or apartment in the hotel, on clicking the “Book Now” button, the user is redirected to a booking website for a hotel named “The Racquet Club” located in Liverpool in the United Kingdom.
In light of this, the Panel can reasonably infer that the website at the Disputed Domain Name is being used for some illegitimate purpose, and likely to fraudulently obtain the personal information of Internet users. This is bad faith under the Policy.
In these circumstances, the use of a privacy service also supports a finding of bad faith (see, e.g., The Uder Company Pty Ltd and Stay In Bed Milk & Bread Pty Ltd (trading as Aussie Farmers Direct) v. PrivacyP, Domain Admin, ID # 10760,WIPO Case No. D2012-0924 and cases cited therein).
In light of the above, and in the absence of a Response and any evidence rebutting bad faith registration and use, the Panel finds that the Complainant has succeeded on 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 the Complainant.
John Swinson
Sole Panelist
Date: April 24, 2018
Full & Egal Universal Law Academy