The Complainant is Kraft Heinz Foods Company of Chicago, Illinois, United States of America (“United States”), represented internally.
The Respondent is Thomas Bedford, Thomas Bedford Ltd of Tembisa, South Africa. 2. The Domain Name and Registrar
The disputed domain name (“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 August 23, 2018. On August 24, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 25, 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 August 29, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 18, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 19, 2018.
The Center appointed Olga Zalomiy as the sole panelist in this matter on September 26, 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 a wholly-owned subsidiary of the Kraft Heinz Company, which is the fifth-largest food and beverage company in the world. The Complainant, through its affiliated companies, owns trademark registrations for the trademarks KRAFT and HEINZ around the world, such as United States Registration No. 554187 for KRAFT, registered on January 29, 1952, and United States Registration No. 31048 for HEINZ, registered on December 28, 1897. In addition, the Complainant is the owner of the domain name since March 25, 2015.
The Respondent registered the Domain Name on June 6, 2018. The Domain Name does not resolve to any website. The Respondent used the Domain Name for an email address that was very similar to the real email address of one of the Complainant’s employee “[…]@”. The Respondent engaged into a phishing expedition by sending emails impersonating the Complainant’s employee to the Complainant’s vendors. 5. Parties’ Contentions A. Complainant
The Complainant claims that it is a wholly-owned subsidiary of the Kraft Heinz Company, which is the fifth-largest food and beverage company in the world. The Complainant claims that, through its affiliated companies, it owns trademark registrations for the trademarks KRAFT and HEINZ around the world. The Complainant alleges that it owns a common law rights in the combined KRAFT HEINZ trademark. The Complainant claims that the Domain Name is identical or confusingly similar to the Complainant’s KRAFT and HEINZ trademarks because it incorporates both marks. The Complainant contends that the only difference between the Domain Name and the Complainant’s domain name is the substitution of the letters “rn” in the Domain Name in place of the “m” in the Complainant’s domain name. To support its allegations of the confusing similarity, the Complainant states that there is evidence of action confusion among Internet users.
The Complainant claims that the Respondent does not use the Domain Name in connection with a bona fide offering of goods or services. The Complainant alleges that the Respondent has no website to advertise any goods or services of his own. The Complainant states that the Domain Name returns an error message and does not direct to a webpage. The Complainant claims that instead of his own name, the Respondent used the name of a Complainant’s employee to send messages to third parties. The Complainant contends that the Respondent has not been commonly known by the Domain Name and has not acquired any trademark rights related to the Domain Name.
The Complainant claims that the Respondent registered and is using the Domain Name in bad faith. The Complainant asserts that the KRAFT and HEINZ trademarks are well-known worldwide. The Complainant contends that the Respondent was aware of the Complainant’s rights with respect to the KRAFT and HEINZ trademarks when registering the Domain Name and that there is no conceivable legitimate reason for the Respondent to register the Domain name. The Complainant argues that the Respondent used the Domain Name for the sole purpose of defrauding Internet users by diverting their business and cash for commercial gain because the Respondent 1) created likelihood of confusion with the Complainant’s mark as to the source of the Complainant’s products; 2) interacted with Complainant’s vendor under the guise of conducting business on behalf of the Complainant; and 3) stole the identity of at least one of the Complainant’s employees. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Pursuant to paragraph 4(a) of the UDRP, to succeed in this proceeding, the Complainant must prove each of the following elements with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the 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
Under the first UDRP element, the Complainant is required to prove that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The evidence on file shows that the Complainant, through its affiliated companies, owns trademark registrations for the trademarks KRAFT and HEINZ. Pursuant to section 1.4.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “[a] trademark owner’s affiliate such as a subsidiary of a parent or of a holding company, or an exclusive trademark licensee, is considered to have rights in a trademark under the UDRP for purposes of standing to file a complaint.” The Complainant, therefore, has rights in the HEINZ and the KRAFT trademarks for the purposes of this proceeding.
The Domain Name consists of the Complainant’s KRAFT and HEINZ trademarks, the word “cornpany” and the generic Top-Level Domain (“gTLD”) “.com”. It is well-established that “[w]here the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.”1 It is also well-established that the addition of the gTLD “.com” is disregarded under the confusing similarity test.2 Here, the KRAFT and HEINZ trademarks are recognizable within the Domain Name, so the addition of the word “cornpany” does not prevent a finding of confusing similarity between the Domain Name and the Complainant’s KRAFT and HEINZ trademarks.
Thus, the Panel finds the first element of the UDRP has been satisfied. B. Rights or Legitimate Interests
Under the second UDRP element, a complainant must make a prima facie case in respect of the lack of rights or legitimate interests of the respondent3 . Once the Complainant has made out the prima facie case, the respondent carries the burden of demonstrating it has rights or legitimate interests in the domain name.4 Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.5
Pursuant to UDRP paragraph 4(c), the following may demonstrate rights or legitimate interests in the Domain Name:
(i) before any notice of the dispute, the respondent’s 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) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is 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 Complainant claims that the Respondent is not commonly known by the Domain Name. Neither the Respondent’s name “Thomas Bedford”, nor his company name, Thomas Bedford Ltd, resembles the Domain Name in any manner – thus, there is no evidence that suggests that the Respondent is commonly known by the Domain Name.
There is no evidence that the Respondent has acquired any trademark rights related to the Domain Name.
Further, there is no evidence of the Respondent’s 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. Nor is there any evidence showing that the Respondent is making a legitimate noncommercial or fair use of the Domain Name. Instead, the evidence on record demonstrates the Respondent used the Domain Name for a phishing expedition when he impersonated a Complainant’s employee in emails to a Complainant’s vendor. Such use does not give rise to any rights or legitimate interests.
The Panel therefore finds that the Complainant has made out a prima facie case in respect to the Respondent’s lack of rights or legitimate interests in the Domain Name. Since the Respondent failed to rebut the Complainant’s case, the Panel holds that the second element of the UDRP has been satisfied. C. Registered and Used in Bad Faith
Under the third UDRP element, the Complainant is required to prove that the Domain Name was registered and is being used in bad faith.
The circumstances evidencing the registration and use in bad faith prescribed in paragraph 4 of the UDRP are not exhaustive; similar use of disputed domain names through email addresses impersonating the corresponding complainants have been found to constitute bad faith registration and use. See, e.g., Kramer Law Firm, P.A. Attorneys and Counselors at Law v. BOA Online, Mark Heuvel,WIPO Case No. D2016-0387 (“While this scam is not, as Complainant has noted, a ‘typical’ case of phishing, it is nevertheless clearly a way in which ‘Internet fraudsters impersonate a business’ – something that the U.S. Federal Trade Commission associates with phishing activities”); and Adams and Remers LLP v. Michael Hallier/Whois Agent, Whois Privacy Protection Service, Inc.,WIPO Case No. DME2015-0005 (“It is clearly a use intended to attract, for commercial gain, Internet users to the Complainant’s online address thereby creating confusion with the Complainant’s mark as to the service being offered at that location. Such use is clearly fraudulent and in bad faith”).
The evidence on record shows that third-party-disseminated emails requesting recipients to provide the sender with some business-related information, were sent from a “[…]@” email address. The email address was created using the Domain Name and was very similar to the real email address of one of the Complainant’s employee “[…]@”. The emails represent that they were sent by a Complainant’s employee and they included the signature block of the employee with a phone number in Saint Petersburg, Russian Federation, as well as the Complainant’s marks and its “www.” website address. The Panel finds that the present case represents a version of a business email compromise scam.
Thus, the Panel concludes that the Domain Name was registered and is being used in bad faith.
Therefore, the Panel finds that the third element of the UDRP has been met. 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 the Complainant.
Olga Zalomiy
Sole Panelist
Date: September 27, 2018
1 Section 1.8, WIPO Overview 3.0.
2 Section 1.11.1, WIPO Overview 3.0.
3 Section 2.1, WIPO Overview 3.0.
4 Id.
5 Id.
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