The Complainant is Vistra Group Holdings S.A. of Luxembourg, represented by Demys Limited, United Kingdom.
The Respondent is Registration Private, Domains By P, LLC of Scottsdale, Arizona, United States of America / Andre Abadjian of Suva, Fiji. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 8, 2018. On November 8, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 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 November 12, 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 amended Complaint on November 16, 2018.
The Center verified that the Complaint together with amended 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 November 22, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 12, 2018. The Respondent wrote to the Center to confirm that he registered the disputed domain name and inquiring what the case was about; the Center provided a reply, inter alia, information on how to file a response. The Respondent did not submit any formal response. Accordingly, the Center notified the Parties about the commencement of the panel appointment process on December 13, 2018.
The Center appointed Sir David Williams KNZM, QC as the sole panelist in this matter on December 18, 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 global corporate service provider. The Complainant provides a broad range of services and solutions and its capabilities span across international incorporations to include trust, fiduciary, private client services, and fund administration services. The Complainant’s trademark is VISTRA. The Complainant has multiple registrations for its trademark, VISTRA, dating from August 16, 2007, when it was first registered.
On May 11, 2018, the Respondent registered the disputed domain name, . The disputed domain name has been used as part of a scheme whereby a third party attempts to use a typographical variant of a corporate entity’s domain name in order to have payments made to it. Additionally, the disputed domain name resolves to the Registrar’s parking page and displays a number of pay per click (“PPC”) advertisements.
The Respondent has not made contact with the Complainant. The Respondent takes no formal part in these proceedings. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions are summarized at sections [8.]–[10.] of the Complaint:
(a) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant submits that VISTRA is its trademark and service mark for providing a broad range of services in 46 jurisdictions throughout the Americas, Europe, Middle East and Asia Pacific. The Complainant has multiple registrations for VISTRA. The Complainant alleges that the disputed domain name is confusingly similar because it “only differs from [it’s] registered mark by the replacement of the letter ‘t’ with the visually similar letter ‘l’”. The Complainant argues that its submission is reinforced by that the term “vislra” has “no other meaning than that which refers to the Complainant”. The Complainant submits that together this indicates that the Respondent “considered that the disputed domain name was sufficiently similar … to render the scam successfully leading to a payment being made on the Respondent’s fraudulent instructions”.
(b) The Respondent has no rights or legitimate interests in respect of the disputed domain name.
First, the Complainant submits that, there is no evidence that the Respondent is commonly known by the disputed domain name. Second, the similarity of the disputed domain name to the Complainant’s marks means that it could not have any conceivable use to the Respondent. Third, there is evidence that the disputed domain name has been used for an attempted business email compromise scam. Therefore, the use of the disputed domain name could not confer any legitimate interest on the Respondent.
(c) The disputed domain name was registered and is being used in bad faith.
The Complainant submits that registration of a domain name that is confusingly similar to its marks amounts to bad faith. In addition, the evidence demonstrating that the disputed domain name has been used as part of a business email compromise scam shows that its registration “must have been in bad faith”. The Complainant submits that the confusingly similar disputed domain name helps to “perpetuate the intended fraud”. Finally, the Complainant submits that the use of the disputed domain name with PPC advertising is not a good faith use. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must show three elements to succeed in its claim:
i. The domain name registered by the Respondent 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 by the Respondent in bad faith.
As a preliminary point, the Panel notes that the Respondent’s failure to participate does not automatically result in a decision in favour of the Complainant. As noted above, the Complainant must still satisfy all three elements under the Policy. However, if the Respondent fails to provide justification for its non-participation, the Panel is entitled to draw adverse inferences against the Respondent (Rule 14(b); Educational Tertiary Service v. TOEFL,WIPO Case No. D2000-0044). In particular, if the Respondent fails to submit a response, the Panel can accept the Complainant’s allegations as true (see Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009).
There are no exceptional circumstances justifying the Respondent’s failure to reply to the Complainant’s submissions. The Panel will therefore assess whether the Complainant has met the requirements under the Policy based on the facts as stated by the Complainant. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy contains two elements. First, the Complainant must have rights to the relevant trademark or service mark. Secondly, the disputed domain name must be “identical or confusingly similar” to the trademark or the service mark in which the Complainant has rights.
The first consideration is whether the Complainant has rights to the trademark VISTRA. The Complainant has multiple registrations for VISTRA around the world, including the following: European Union Trade Mark No. 005299177 (registered August 16, 2007), European Union Trade Mark No. 013604004 (registered September 5, 2015), United Kingdom Trade Mark No. 3093786 (May 22, 2015) and United States Patent and Trademark Office Reg. No. 5004194 (July 19, 2016).
The Panel is satisfied that the Complainant has rights to the trademark VISTRA.
“Confusing similarity” will often result where the Respondent’s domain name reproduces a principal component of the Complainant’s trademark (see EAuto, LLC v Triple S Auto Parts d/b/a Kung Fu Yea Enterprises Inc, WIPO Case No. D2000-0047; Magnum Piercing Inc v. the Mudjackers and Garwood S Wilson Sr, WIPO Case No. D2000-1525; Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty Ltd, WIPO Case No. D2001-0110; Revlon Consumer Products Corporation v. Laurent D. Morel, WIPO Case No. D2002-0215).
In this case, the disputed domain name differs in two respects from the Complainant’s trademark. First, the disputed domain name replaces the letter “t” in the Complainant’s trademark “vistra” with the letter ‘l’ to form “vislra”. Second, the disputed domain name contains the generic Top-Level Domain (“gTLD”) “.com”.
A visual comparison of the words is determinative. The Panel considers that “vistra” and “vislra” (in capitals, “VISTRA” and “VISLRA”) are confusingly similar from a visual perspective. This is because they are merely slight misspellings of each other. The Panel accepts the Complainant’s submission that the letter “l” is visually similar to the letter “t” such that an average Internet user who is familiar with the Complainant’s trademark would assume that there is some sort of connection between the two.
The Panel also accepts the Complainant’s submission that this likely confusion is further perpetuated by the fact that “vislra” does not refer to any specific entity or have any alternative meaning. The interchange of two letters therefore does not in the Panel’s view render the Respondent’s domain name distinct or different to the Complainant’s trademark. The disputed domain name is thus confusingly similar to the Complainant’s trademark.
Regarding the second difference, the addition of the gTLD “.com” is immaterial when determining whether the disputed domain name is identical or confusingly similar to the Complainant’s trademark for the purposes of paragraph 4(a)(i) of the Policy (Universal City Studios Inc. v. G.A.B Enterprises, WIPO Case No. D2000-0416). Similarly, the Panel is satisfied that the addition of the “.com” gTLD to the end of the domain name does not prevent likelihood of confusion nor is it distinctive since it is necessary for the registration of the domain name itself (LANCOME PARFUMS ET BEAUTE & CIE, L’OREAL v. 10 Selling,WIPO Case No. D2008-0226. “Lancome”).
The Panel finds that the disputed domain name is confusingly similar to the VISTRA trademark. The Complainant has met the first element of the Policy. B. Rights or Legitimate Interests
Without more, the mere registration of a domain name does not give rise to rights or legitimate interests in a domain name (see Gold Medal Travel Group Plc v. Damir Kruzicevic, WIPO Case No. D2007-1902). Paragraph 4(c) of the Policy clarifies some circumstances in which a respondent may show rights or legitimate interests in a domain name. The complainant bears the burden of proof in relation to the three elements of paragraph 4(a) of the Policy. However, once the Complainant has shown a prima facie case under 4(c) of the Policy, the practical burden of adducing evidence of rights or legitimate interests in a domain name shifts to the respondent (see Trade Me Limited v. Vertical Axis Inc., supra).
Paragraph 4(c)(i) of the Policy provides an example of rights or legitimate interests where there is a bona fide offering of goods or services, while paragraph 4(c)(ii) provides that a respondent will have rights or legitimate interests in the disputed domain name if they have commonly been known by that domain name. Paragraph 4(c)(iii) of the Policy provides that the respondent will have rights or legitimate interests if it uses the domain name noncommercially or fairly without intention for commercial gain.
The Panel accepts the evidence submitted by the Complainant that the disputed domain name has been used for the purpose of an attempted business email compromise scheme whereby a third party, pretending to be the Complainant, registers a confusingly similar domain name in an attempt to fraudulently direct transfers of money to itself. The Complainant has provided, at Annex 5 of the Complaint, evidence of such a scheme occurring. The evidence consists of a single email chain containing three separate emails.
The first email is addressed to an employee of the Complainant and has cc’d in an email address belonging to the disputed domain name, “[...]@”. The subject of the email is “Payment”. In the main body of the email, the sender writes “Please see attached invoice I need to pay for today for tobacco project”. In the second email, the Complainant’s employee replies with “Kindly advise when we can call you for the confirmation”. To this, the sender in the third email replies with “Could you please treat this as an exception as I am currently out of Zimbabwe and thus unavailable. Kindly let me have the swift once processed”.
It thus appears that the disputed domain name has been used in an attempt to defraud the Complainant by attempting to get it to make payments to an illegitimate third party. Therefore the Respondent’s use of the disputed domain name is not a bona fide offering of goods and services under paragraph 4(c)(i), or legitimate noncommercial use of the Domain Name for the purposes of paragraph 4(c)(iii). The Panel accepts the Complainant’s submission that this use of the disputed domain name thus confers no legitimate conceivable rights on the Respondent.
Additionally, the disputed domain name resolves to a parking page showing PPC advertisements of various domain manager and domain registration companies. Although some panels have recognized that some circumstances will render the use of commercial parking or landing pages permissible under the Policy, this does not in and of itself confer the rights or legitimate interests that arise from a “bona fide offering of goods and services” (see section 3.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”)).
The Panel also finds that there is no evidence suggesting that the Respondent was commonly known by the disputed domain name for the purpose of paragraph 4(c)(ii) of the Policy. As noted, the Panel accepts the Complainant’s submission that the term “vislra” refers to no other entity or meaning other than the Complainant’s trademark.
The Respondent has not challenged the Complainant’s assertions. As a result, the Complainant has made an unrebutted prima facie case that the Respondent does not have rights or legitimate interests in the Domain Name. The second criterion has been met. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy is framed in both present and past tense. Therefore, there are two elements to 4(a)(iii): the registration of the disputed domain name must have been undertaken in bad faith and the Respondent must have continued to use the disputed domain name in bad faith (Telstra Corporation Limited v. Nuclear Marshmellows, WIPO Case No. D2000-0003).
Paragraph 4(b) of the Policy delineates situations where the registration and use of a domain name will involve bad faith. Paragraph 4(b)(iv) is relevant for present purposes:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The first consideration is whether the Respondent registered the disputed domain name in bad faith. The evidence on record shows that a third-party email requesting the Complainant to make a payment to an unknown destination was sent from a “[…]@” email address. The email address was created using a domain name that is confusingly similar to the Complainant’s trademark “[…]@”. The email that was sent also included the signature block of the Complainant which contained a link to the Complainant’s privacy notice, giving off an impression of legitimacy.
The Panel finds that the present case represents a business email compromise scam and that there is enough evidence to show that the Respondent registered the disputed domain name in bad faith. The Panel also accepts the Complainant’s submission that this Complaint is analogous to Kraft Heinz Foods Company v. Thomas Bedford, Thomas Bedford Ltd, WIPO Case No. D2018-1922 “Kraft Heinz”. The Respondent has relied on the international reputation of the Complainant and has registered a mark that is confusingly similar to that of the Complainant’s, in an attempt to confuse victims to transferring money to it. In the words of Adams and Remers LLP v. Michael Hallier/Whois Agent, Whois Privacy Protection Service, Inc., WIPO Case No. DME2015-0005, cited in Kraft Heinz, “[i]t 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”). Thus, the Panel concludes that the disputed domain name was registered in bad faith.
The second consideration is whether the Respondent has continued to use the disputed domain name in bad faith. It is noted that the Respondent does not have a connection with the Complainant’s products or services and is not typically known by the disputed domain name. It is also noted that the disputed domain name was registered relatively recently, on May 11, 2018. The evidence of the Respondent’s conduct to date demonstrates that the Respondent has potential to disrupt the Complainant’s business by causing loss of ability to transact with consumers and, by extension, commercial detriment. Thus, the Panel concludes that the Respondent will continue to use the disputed domain name in bad faith.
In Educational Tertiary Service v. TOEFL, supra, the Panel noted that if the Respondent fails to provide a justification for its use of the domain name, the Panel “may reasonably infer that the Respondent neither intended to make nor has made any legitimate use of the Complainant’s trademark”. The Respondent has not offered an explanation as to why the disputed domain name was chosen. There is no apparent legitimate reason for the use of the disputed domain name. As a result, the inference may be drawn that the Respondent has used the disputed domain name for the purpose of capitalizing on the reputation of the Complainant.
The cumulative circumstances of the case lead the Panel to the conclusion that the Respondent has registered and used the disputed domain name in bad faith. The third criterion is 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 disputed domain name be transferred to the Complainant.
Sir David A R Williams KNZM, QC
Sole Panelist
Date: December 27, 2018
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