The Complainant is Davey Bickford of Hery, France, represented by Tmark Conseils, France.
The Respondent is Solu Shon of Lagos, Nigeria. 2. The Domain Name and Registrar
The disputed 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 June 8, 2018. On June 8, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 9, 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 the Respondent of the Complaint, and the proceedings commenced on June 13, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 3, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 4, 2018.
The Center appointed Tuukka Airaksinen as the sole panelist in this matter on July 10, 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 was founded in 1831 and has used the trademark DAVEY BICKFORD since then in connection with products and services in the field of electronic detonators and initiation systems and is a globally leading company in its segment. The trademark is a combination of the surnames of the Complainant’s founder William Bickford and his business partner Thomas Davey.
The Complainant is the owner of the International trademark DAVEY BICKFORD, which has been registered in various jurisdictions, such as in the European Union under number 1222740 on March 6, 2014.
The disputed domain name was registered on January 11, 2018 and does not resolve to an active website. 5. Parties’ Contentions A. Complainant
The disputed domain name incorporates the Complainant’s trademark DAVEY BICKFORD in its entirety and is identical with the Complainant’s trademark. The suffix “.net” should be disregarded and is not sufficient to remove the confusing similarity between the Complainant’s trademark and the disputed domain name.
The Complainant has not authorized or otherwise allowed the Respondent to use the Complainant’s trademarks in the disputed domain name. The Respondent is not making legitimate noncommercial or fair use of the disputed domain name and the Respondent is not known as DAVEY BICKFORD.
Given the use and registrations of the Complainant’s trademark and domain names and considering that it consists of a combination of two surnames, the Respondent must have been aware of the Complainant when registering the disputed domain name.
The disputed domain name was used to create a corresponding email address “[…]@”, which was used in an attempt to divert money transfer from the Complainant by impersonating the sender to be one of the Complainant’s employees. The disputed domain name was used immediately after its registration to send an email to the Complainant’s business partner prompting them to send a significant payment to a Thai company instead of the usual bank account. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In order to obtain the transfer of a domain name, a complainant must prove the three elements of paragraph 4(a) of the Policy, regardless of whether the respondent files a response to the complaint. The first element is that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. The second element a complainant must prove is that the respondent has no rights or legitimate interests in respect of the domain name. The third element a complainant must establish is that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires that the Complainant establish that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. Consequently, the Complainant must prove that it has rights to a trademark, and that the disputed domain name is identical or confusingly similar to this trademark.
The disputed domain name is identical to the Complainant’s trademark. The only difference is the suffix “net”. It is widely accepted among UDRP panels that the 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.
Accordingly, the Panel finds that the disputed domain name is identical to the Complainant’s respective trademark and hence the first element of the Policy has been fulfilled. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires that the Complainant establish that the Respondent has no rights or legitimate interests to the disputed domain name.
It is widely accepted among UDRP panels that once a complainant has made a prima facie showing indicating the absence of the respondent’s rights or legitimate interests in a disputed domain name the burden of production shifts to the respondent to come forward with evidence of such rights or legitimate interests. If the respondent fails to do so, the complainant is deemed to have satisfied the second element of the Policy. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270 and section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Complainant has credibly submitted that the Respondent is not a licensee of the Complainant, nor has it been otherwise allowed by the Complainant to use the Complainant’s trademark in a domain name or otherwise. The Complainant has also credibly submitted that the Respondent has no rights or legitimate interests to the disputed domain name and is not known by the name DAVEY BICKFORD.
Accordingly, the Panel finds that the Complainant has made a prima facie case that has not been rebutted by the Respondent. In light of the Panel’s findings below, the Panel finds that there are no other circumstances which provide the Respondent with any rights or legitimate interests in the disputed domain name. Therefore, the Panel finds that the second element of the Policy is fulfilled. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the Complainant establish that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy provides that the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that [the respondent has] registered or 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 respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) [the 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 [the respondent has] engaged in a pattern of such conduct; or
(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business or competitor; or
(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’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 respondent’s] website or location or of a product or service on [the respondent’s] website or location.”
Here the Respondent has used the disputed domain name as an email address in order to impersonate an actual account manager of the Complainant by using the account manager’s name in the email address. The Respondent has then used this fraudulent email address in an attempt to divert a significant money transfer from the Complainant’s business partner to another company, which can be assumed to have been associated with the Respondent.
Under the circumstances, the Respondent must have been well aware of the Complainant when registering the disputed domain name. The disputed domain name has then been used for clearly fraudulent purposes.
Hence, the Panel finds that the disputed domain name was registered and is being used in bad faith. Therefore, the Panel finds that the third element of the Policy is fulfilled. 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.
Tuukka Airaksinen
Sole Panelist
Date: July 24, 2018
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