Complainant is Valtech SE of Paris, France, represented by Féral-Schuhl / Sainte-Marie AARPI, France.
Respondent is Steve Stearns of Pueblo, Colorado, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 3, 2018. On April 5, 2018, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the Domain Name. On April 6, 2018, the Registrar transmitted by e-mail to the Center its verification response confirming that 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 April 10, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 30, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 1, 2018.
The Center appointed Marina Perraki as the sole panelist in this matter on May 4, 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
According to the Complaint, Complainant was founded in 1993 and is part of a large group of companies specialized in digital and technological marketing, with presence and operations in over fourteen countries worldwide, including the United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).
Complainant and its group of companies is the owner of a number of trademark registrations which include the word “VALTECH” since as early as 1998 and of domain names containing the word “VALTECH” since as early as 1995. The latter include a) the domain name in the name of Valtech Ltd., a United Kingdom company, registered in August 1996, b) the domain name registered on July 11, 1997 and c) the domain name in the name of Valtech Solutions Inc. registered on August 29, 2006.
Complainant’s trademark registrations for the VALTECH mark include European Union word trademark registration VALTECH no. 883538, filed on September 14, 1998, registered on March 9, 2000, for services in classes 35, 41, 42 and European Union word trademark registration VALTECH no 15677735, filed on July 22, 2016, registered on January 6, 2017, for goods and services in classes 9, 35, 38, 41, 42 and 45.
The Domain Name was registered on January 16, 2018. According to the Complaint and relevant evidence, the Domain Name was used for a fraudulent e-mail scheme. 5. Parties’ Contentions A. Complainant
Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Name. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Complainant has demonstrated rights through registration and use on the VALTECH mark.
The Panel finds that the Domain Name is confusingly similar to the VALTECH trademark of Complainant.
The Domain Name incorporates the trademark of Complainant in its entirety. The suffix “-uk” is disregarded as it is a non-distinctive, generic, geographical term (Accenture Global Services Limited v. Jean Jacque / Luck Loic, WIPO Case No. D2016-1315;Wragge Lawrence Graham & Co LLP v. Registration Private, Domains by Proxy LLC / Ian Piggin 1,WIPO Case No. D2015-0135). The Panel finds that it not only averts likelihood of confusion, but it enhances it, as Complainant, per the Complaint, offers its services and operates also in the United Kingdom.
The generic Top-Level Domain (“gTLD”) “.com” is also disregarded, as TLDs typically do not form part of the comparison on the grounds that they are required for technical reasons only (Rexel Developpements SAS v. Zhan Yequn,WIPO Case No. D2017-0275).
Complainant has established Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name.
Respondent has not submitted any response and has not claimed any such rights or legitimate interests with respect to the Domain Name. As per Complainant, Respondent was not authorized to register the Domain Name.
Respondent did not demonstrate any prior to the notice of the dispute, use of the Domain Name or a trademark corresponding to the Domain Name in connection with a bona fide offering of goods or services.
On the contrary, as Complainant demonstrates, the Domain Name leads to an inactive website and Respondent used the disputed Domain Name for the purpose of initiating a fraud scheme, namely to send a fraudulent e-mail to an employee of Complainant, impersonating a senior officer of Complainant, for the only purpose of scam. The use of the Domain Name for an illegal activity such as constructing an e-mail composition containing the Domain Name for deceiving purposes cannot confer rights or legitimate interests on the Respondent (L’ Oréal v. Cimpress Schweiz GmbH,WIPO Case No. DCO2017-0021; Accenture Global Services Limited v. Jean Jacque / Luck Loic, WIPO Case No. D2016-1315; Syngenta Participations AG v. Simon Laidler / Who Is Agent, WhoIs Privacy Protection Service, Inc.,WIPO Case No. D2014-1702; Groupe Lactalis v. John Kleedofer / Privacy Protection Service INC d/b/a Privacy P,WIPO Case No. D2014-0133; Twitter, Inc. v. Moniker Privacy Services, WIPO Case No. D2013-062;Inter-Continental Hotels Corporation v. Louise Lane / WhoisGuard, WIPO Case No. D2012-2037).
These circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Name.
Complainant has established Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Respondent has registered and used the Domain Name in bad faith. Because the VALTECH mark had been widely used and registered at the time of the Domain Name registration, the Panel finds it more likely than not that Respondent had Complainant’s mark in mind when registering this Domain Name. Respondent could have searched the European Union trademark registry and should have found Complainant’s prior registrations in respect of VALTECH (Citrix Online LLC v. Ramalinga Reddy Sanikommu Venkata,WIPO Case No. D2012-1338).
Furthermore, it is apparent that Respondent was aware of Complainant and Complainant’s mark VALTECH when registering the Domain Name. As Complainant demonstrated, Respondent used the Domain Name, on the same day as the day it was registered, to create an e-mail address and send a fraudulent e-mail to one of Complainant’ s employees (Arla Foods Amba v. Michael Guthrie, M. Guthrie Building Solutions,WIPO Case No. D2016-2213; Groupe Lactalis v. John Kleedofer / Privacy Protection Service INC d/b/a Privacy P,WIPO Case No. D2014-0133).
As regards bad faith use, Complainant demonstrated that the disputed Domain Name leads to an inactive website and it was used for purposes other than to host a website. As Complainant demonstrated, the Domain Name was used to create an e-mail address similar to real e-mail addresses of Complainant and send an e-mail, impersonating Complainant’s Chief Financial Officer of the group, to the Financial Director of its Swedish branch. The e-mail was sent on January 16, 2018, which is the date that the Domain Name was registered. The purpose of this e-mail was to receive money from Complainant. As per Complainant, this e-mail address reproduces the structure of Complainant’s official e-mail addresses, adding the term “uk”: “[...]@”. This pattern can be used in support of bad faith registration and use (Arla Foods Amba v. Michael Guthrie, M. Guthrie Building Solutions,WIPO Case No. D2016-2213; Yahoo! Inc. v. Aman Anand, Ravi Singh, Sunil Singh, Whois Privacy Corp., Domains By Proxy, LLC,WIPO Case No. D2016-0461; Minerva S.A. v. Whoisguard Protected, Whoisguard, Inc., / GREYHAT SERVICES,WIPO Case No. D2016-0385; Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; L’ Oréal v. Cimpress Schweiz GmbH, WIPOCaseNo. DCO2017-0021;Accenture Global Services Limited v. Jean Jacque / Luck Loic, WIPO Case No. D2016-1315;Wragge Lawrence Graham & Co LLP v. Registration Private, Domains by Proxy LLC / Ian Piggin1, WIPO Case No. D2015-0135; Syngenta Participations AG v. Simon Laidler / Who Is Agent, WhoIs Privacy Protection Service, Inc. WIPO Case No. D2014-1702; Monarch Airlines Limited v. Richard Nani,WIPO Case No. D2012-2484; La Française des Jeux v. MichaelE Wilkins, WIPO Case No. D2009-0898; and WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 3.3 and 3.4).
Under these circumstances and on this record, the Panel finds no good-faith basis for Respondent’s conduct vis-à-vis the Domain Name.
Complainant has established Policy paragraph 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 Complainant.
Marina Perraki
Sole Panelist
Date: May 18, 2018
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