Complainant is Konecranes, Inc. of Springfield, Ohio, United States of America ("United States"), represented by Brad W. Stoll, United States.
Respondent is James White of Pennsylvania, United States. 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 17, 2018. On April 18, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 19, 2018, the Registrar transmitted by email 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 May 8, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 28, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on May 29, 2018.
On May 14, 2018, the Center received Complainant's supplementary filing, amending its request regarding the Domain Name from "cancelled" to "transferred to Complainant".
The Center appointed John C. McElwaine as the sole panelist in this matter on June 7, 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.
On June 20, 2019, the Panel issued Procedural Order No. 1 requesting the following information from Complainant:
1. Identify by Registration Number and provide evidence of registration of the marks relied upon by Complainant in this proceeding to establish trademark rights;
2. Explain the legal relationship of Complainant to the named registrant of the trademarks relied upon by Complainant in this proceeding;
3. If Complainant is not the registrant of the trademarks, then Complainant should identify and explain what exclusive rights or authorization it has to file this Complaint. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.4;
4. Provide a brief description of Complainant's business.
Complainant was requested to provide the above-requested information by June 25, 2018. Respondent was invited to reply to the submissions of Complainant by June 30, 2018. A response from Complainant was received on June 22, 2018. No response from Respondent was received. 4. Factual Background
Complainant is the United States subsidiary of Konecranes Global Oy. Complainant's parent company and its affiliate are owner of several United States trademark registrations for the mark KONECRANES.
Respondent registered the Domain Name with the Registrar on March 27, 2018. The Domain Name does not link to an active website but has been used as a fraudulent email address to communicate with Complainant's customers. 5. Parties' Contentions A. Complainant
Complainant asserts to be a provider of industrial lifting equipment and service. Complainant manufactures and sells hoists, cranes and material handling solutions to a wide range of customers, including Waste-to-Energy and Biomass, Paper, General Manufacturing, Automotive and Metals Production. Complaint also provides specialized maintenance services and spare parts for all types and makes of industrial cranes and hoists. Globally, Complainant's parent companies and affiliates also provide a complete range of container handling equipment (both manned and automated), shipyard handling equipment, mobile harbor cranes and heavy-duty lift trucks, along with related services for these products.
Complainant contends that its parent and affiliated companies own the following trademarks registered in the United States:
Registered Mark
Owner
U.S. Reg. No.
KCI KONECRANES fig
KCI Konecranes Plc
2041645
KONECRANES
Konecranes Global Corporation
1105506
KONECRANES
Konecranes Plc
3689455
KONECRANES fig
Konecranes Global Corporation
1104238
KONECRANES fig
Konecranes Plc
3689458
Complainant further explains that Complainant is wholly owned by Konecranes Plc (formerly KCI Konecranes Plc) (a non-operating holding company) and that Konecranes Plc also wholly owns Konecranes Global Corporation (a non-operating holding company), making it an affiliate/parent of Konecranes, Inc. Complainant also asserts that, on April 17, 2018, authorization to bring this proceeding was granted by the General Counsel of Konecranes.
Complainant recently discovered that Respondent is using the Domain Name to generate emails to its customers and vendors in an effort to impersonate an employee of Complainant and to attempt to make travel arrangements at Complainant's expense.
With respect to the first element of the Policy, Complainant alleges that the Domain Name wholly encompasses its KONECRANES mark merely adding a regional indicator "US-" before the word KONECRANES in the Domain Name. Complainant further asserts confusion because in the United States, Complainant utilizes the domains and , among others, each of which is virtually identical to the Domain Name.
With respect to the second element of the Policy, Complainant asserts that Respondent is not involved in the crane, hoist, material handling or lifting industry in any way. Instead, Complainant contends that Respondent is using the Domain Name to engage in a fraudulent scheme.
With respect to the third element of the Policy, Complainant reiterates that Respondent has engaged in a fraudulent email scheme using the Domain Name, which has harmed Complainant's reputation with its customers and tarnished its reputation as a secure and competent lifting technology company. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
Even though Respondent has defaulted, paragraph 4(a) of the Policy requires that, in order to succeed in this UDRP proceeding, Complainant must still prove its assertions with evidence demonstrating:
(i) the 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 Domain Name; and
(iii) the Domain Name has been registered and are being used in bad faith.
Because of Respondent's default, the Panel may accept as true the factual allegations stated within the Complaint, and may draw appropriate inferences therefrom. See St. Tropez Acquisition Co. Limited v. AnonymousSpeech LLC and Global House Inc.,WIPO Case No. D2009-1779; Bjorn Kassoe Andersen v. Direction International,WIPO Case No. D2007-0605; see also paragraph 5(f) of the Rules ("If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint"). Having considered the Complaint, the Policy, the Rules, the Supplemental Rules and applicable principles of law, the Panel's findings on each of the above cited elements are as follows. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires Complainant show that the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights. As an initial matter, Complainant has standing to bring this proceeding because it is a wholly owned subsidiary of Konecranes Plc, an affiliate of Konecranes Global Corporation and asserts that it has been authorized by the parent to bring this proceeding. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.4; Grupo Televisa, S.A., Televisa, S.A. de C.V., Estrategia Televisa, S.A. de C.V., Videoserpel, Ltd. v. Party Night Inc., a/k/a Peter Carrington,WIPO Case No. D2003-0796 ("Paragraph 4(a)(i) of the Policy requires, as one element to be proved, that the disputed domain name be identical or confusingly similar to a trademark or service mark in which Complainants have rights. These words do not require that Complainants be the owner of the mark and would include, for example, a licensee of the mark."); Kao Brands Company, John Frieda, John Frieda Professional Hair Care Inc. v. Evgeniy Sechin,WIPO Case No. D2010-2247 (As the wholly owned subsidiary of its parent company, Kao Kabushiki Kaisha (also t/a Kao Corporation), the complainant was considered to have rights in the trademarks owned by such parent company). Accordingly, the Panel finds that Complainant has sufficiently established it has standing and rights in the KONECRANES Mark. Furthermore, the Panel finds that Complainant's rights in the KONECRANES Mark predate the registration date of the Domain Name.
Here, the Domain Name contains the additional descriptor of "US-". It is well established, and the Panel agrees, that the addition of a descriptive word to a trademark in a domain name does not avoid a finding of confusing similarity. See Mastercard International Incorporated v. Dolancer Outsourcing Inc.,WIPO Case No. D2012-0619; Air France v. Kitchkulture,WIPO Case No. D2002-0158; DHL Operations B.V. and DHL International GmbH. v. Diversified Home Loans,WIPO Case No. D2010-0097. Furthermore, the Panel also agrees with the finding of previous WIPO UDRP panels that the use of a mark in its entirety together with a geographic term in a domain name creates a domain name that is confusingly similar to the mark. See, e.g., Playboy Enterprises International Inc. v. Joao Melancia,WIPO Case No. D2006-1106; AT&T Corp. v. WorldclassM,WIPO Case No. D2000-0553; Six Continents Hotels, Inc. v. CredoNIC.com / Domain for Sale,WIPO Case No. D2005-0755; Six Continents Hotels, Inc. v. Midas Search Limited,WIPO Case No. D2004-0986; Six Continents Hotels, Inc., Inter-Continental Hotels Corporation v. South East Asia Tours,WIPO Case No. D2004-0388; America Online, Inc. v. Dolphin@Heart,WIPO Case No. D2000-0713; Sysco Corporation v. Jose Castaneda,WIPO Case No. D2007-0197; Inter-IKEA Systems B.V. v. Evezon Co. Ltd.,WIPO Case No. D2000-0437.
Accordingly, the Panel finds that Complainant has met its burden of showing that the Domain Name is confusingly similar to the KONECRANE Mark in which Complainant has valid trademark rights. B. Rights or Legitimate Interests
Under the Policy, paragraph 4(a)(ii), Complainant has the burden of establishing that Respondent has no rights or legitimate interests in the Domain Name. However, because the nature of a registrant's rights or legitimate interests, if any, in its domain name lies most directly within the registrant's own knowledge, a complainant need only make a prima facie case on this element. See Education Testing Service v. TOEFL,WIPO Case No. D2000-0044; Grove Broadcasting Co. Ltd v. Telesystems Communications Limited,WIPO Case No. D2000-0703. The burden of production shifts then to the respondent to present evidence that it has some rights or legitimate interests in the domain name. See Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc.,WIPO Case No. D2010-1141; see also Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party,WIPO Case No. D2000-1415; Inter-Continental Hotels Corporation v. Khaled Ali Soussi,WIPO Case No. D2000-0252.
Complainant asserts that Respondent is not involved in the crane, hoist, material handling or lifting industry in any way. There is also no evidence in the WhoIs record that Respondent has been commonly known by the Domain Name. Although properly notified by the Center, Respondent failed to submit any response to establish some rights or a legitimate interest in the Domain Name. The silence of a respondent may support a finding that it has no rights or legitimate interests in respect of the domain name. See Alcoholics Anonymous World Services, Inc., v. Lauren Raymond,WIPO Case No. D2000-0007; Ronson Plc v. Unimetal Sanayi ve Tic.A.S., WIPO Case No. D2000-0011.
Moreover, the Panel finds that purpose of registering the Domain Name was to engage in an email scam or a phishing scheme, none of which is a bona fide offering of goods or services. Twitter, Inc. v. Moniker Privacy Services/ accueil des solutions inc,WIPO Case No. D2013-0062 ("This Panel accepts the Complainant's contention that the Respondent's use of the disputed domain name is not in connection with a bona fide offering of goods or services. It further finds that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name."); see also CMA CGM v. Diana Smith,WIPO Case No. D2015-1774 (finding that the respondent had no rights or legitimate interests in the disputed domain name holding, "such phishing scam cannot be considered a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Domain Name".)
Accordingly, Complainant made a prima facie showing of Respondent's lack of any rights or legitimate interests and Respondent has failed to come forward to rebut that showing. As provided for by paragraph 14 of the Rules, the panel may draw such inference from Respondent's default as it considers appropriate.
The Panel finds that Respondent does not have rights or legitimate interests in the Domain Name and that Complainant has met their burden under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, Complainant must show that Respondent registered and is using the Domain Name in bad faith. A non-exhaustive list of factors constituting bad faith registration and use is set out in paragraph 4(b) of the Policy.
Here, Respondent registered the Domain Name to perpetrate an email scam or phishing scheme. Complainant's core KONECRANES Mark was intentionally chosen when the Domain Name was registered to pray on the Complainant's customers and vendors that received the fraudulent emails. In light of the email scam, there could be no other legitimate explanation except that Respondent intentionally registered the Domain Name to cloak its scam and deceive recipients into believing the emails were from Complainant. Such activity constitutes a disruption of Complainant's business and also establishes bad faith registration and use. Securitas AB v. Whois Privacy Protection Service, Inc. / A. H.,WIPO Case No. D2013-0117 (finding bad faith based upon the similarity of the disputed domain name and the complainant's mark, the fact that the complainant is a well-known global security company and the fact that the disputed domain name is being used to perpetrate an email scam.)
In addition, the use of a deceptive domain name for an email scam has previously been found by panels to be sufficient to establish that a domain name has been registered and is being used in bad faith. See Samsung Electronics Co., Ltd. v. Albert Daniel Carter,WIPO Case No. D2010-1367; Securitas AB, supra,WIPO Case No. D2013-0117.
Moreover, in finding a domain name used only for an email scam was bad faith, the panel in Kramer Law Firm, P.A. Attorneys and Counselors at Law v. BOA Online, Mark Heuvel,WIPO Case No. D2016-0387, pointed out that numerous UDRP panels have found such impersonation to constitute bad faith, even if the relevant domain names are used only for email. See, e.g., Terex Corporation v. Williams Sid, Partners Associate,WIPO Case No. D2014-1742 ("Respondent was using the disputed domain name in conjunction with…an email address for sending scam invitations of employment with Complainant"); and Olayan Investments Company v. Anthono Maka, Alahaji, Koko, Direct investment future company, ofer bahar,WIPO Case No. D2011-0128 ("although the disputed domain names have not been used in connection with active web sites, they have been used in email addresses to send scam emails and to solicit a reply to an 'online location'").
Additionally, it is inconceivable that Respondent was not aware of Complainant's trademark rights in light of the distinctiveness of the KONECRANE Mark at the time the Domain Name was registered and the subsequent use of this Domain Name intentionally to deceive the public. The mark has no known descriptive meaning and Respondent must have picked the Domain Name to target Complainant's business and/or customers.
For this reason, the Panel holds that Complainant has met its burden of showing that Respondent registered and is using the Domain Name in bad faith. 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.
John C McElwaine
Sole Panelist
Date: July 4, 2018
Full & Egal Universal Law Academy