Complainant is Afton Chemical Corporation of Richmond, Virginia, United States of America (the “United States”), represented by Day Pitney LLP, United States.
Respondent is Whois Agent, Whois Privacy Protection Service, Inc. of Kirkland, Washington, United States / Name Redacted 1 . 2. The Domain Name and Registrar
The disputed domain name is registered with eNom, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 11, 2018. On December 12, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 12, 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 Complainant on December 13, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on December 14, 2018.
The Center verified that the Complaint together with the 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 Respondent of the Complaint, and the proceedings commenced on December 18, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 7, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent of Respondent’s default on January 8, 2019.
The Center appointed Lawrence K. Nodine as the sole panelist in this matter on January 14, 2019. 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
Complainant is a global chemical developer and manufacturer of additives for fuel, oil, and lubricants. Complainant has offices in 18 countries, including in various countries in North America, South America, Asia, and Europe. Complainant owns numerous trademark registrations for AFTON CHEMICAL in the United States, including, for example, Registration No. 3,059,527, registered on February 14, 2006 and Registration No. 3,121,557, registered on July 25, 2006. Since 2004, Complainant has used AFTON CHEMICAL in connection with its goods and services.
Respondent registered the disputed domain name on December 4, 2018. The disputed domain name does not resolve to an active website.
On the day Respondent registered the disputed domain name, a third party reportedly received an email from an address incorporating the disputed domain name ([]@). Purportedly from an employee of the Complainant the subject of the email contained an invoice number and a “PO number.” The email instructed the recipient to “stop the payment process immediately” because “[o]ur bank details are changed.” The signature block read [employee’s first name] and included references to “Afton Chemical Limited” and Complainant’s parent entity, NewMarket Corporation. Complainant employs an individual as indicated in the email. 5. Parties’ Contentions A. Complainant
Complainant asserts that it has established rights in the mark AFTON CHEMICAL and that the disputed domain name is confusingly similar to its AFTON CHEMICAL mark, merely replacing the second “A” in Complainant’s mark with an “L.”
Complainant also asserts that Respondent does not own any trademark or service mark registrations for AFTON, AFTON CHEMICAL, “Afton Chemicll”, or any variations thereof and that Complainant has not authorized Respondent to use Complainant’s mark.
As to Respondent’s bad faith, Complainant contends that Respondent is not using the disputed domain name for any purpose other than to facilitate a fraud scheme by email. According to Complainant, Respondent registered and is using the disputed domain name with the intent to impersonate Complainant to solicit payment from Complainant’s business partners and consumers. Complainant further contends that, at the time the disputed domain name was registered, Respondent appears to have provided a false name to correspond to the name of one of Complainant’s employees. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Complainant’s trademark registrations established that it has rights in the AFTON CHEMICAL trademark. The disputed domain name is confusingly similar to the AFTON CHEMICAL mark. Replacing one letter in the mark does nothing to dispel the potential for confusion.
Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Complainant has presented a prima facie case for Respondent’s lack of rights or legitimate interests in the disputed domain name, which Respondent has failed to rebut. Indeed, UDRP Panels have categorically found that the use of the disputed domain name for phishing “can never confer rights or legitimate interests on a respondent.”, WIPO Overview of WIPO Panel Views on Selected UDPR Questions, Third Edition (“WIPO Overview 3.0”), section 2.13.1. Here too, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
The Panel finds that Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Respondent registered and has used the disputed domain name in bad faith. The evidence establishes Respondent’s awareness of Complainant and its AFTON CHEMICAL mark at the time Respondent registered the disputed domain name. This awareness is evident from the December 4, 2018 email. Sent on the very day the disputed domain name was registered and incorporating the disputed domain name in the address, the email claimed to be from “Afton Chemical” through one of Complainant’s employees.
The evidence supports the inference that Respondent sought to use the disputed domain name to create a false association with Complainant to promote a phishing scam. The entire reproduction of Complainant’s mark with the targeted replacement of a single letter in the disputed domain name serves to lure email recipients to respond to Respondent’s communications in the mistaken belief they are communicating with Complainant. Indeed, Respondent did not stop at typosquatting and went further to suggest that the emails associated with the disputed domain name were from Complainant. For example, both the “From” line and the signature block, which includes the addresses of two of Complainant’s offices, falsely suggest that the email is from Complainant.
Phishing is bad faith use under the Policy. The examples listed in paragraph 4(b) of the Policy are “without limitation.” “[T]he use of an email address associated with the disputed domain name, to send a phishing email for the purposes of dishonest activity is in itself evidence that the disputed domain name was registered and is being used in bad faith.” BHP Billiton Innovation Pty Ltd v. Domains By Proxy LLC / Douglass Johnson,WIPO Case No. D2016-0364.
Additionally, Respondent has failed to rebut Complainant’s assertion that Respondent provided a false name to the Registrar. The fact that Respondent used the inverse name of one of Complainant’s employees, to register the disputed domain name further supports a finding of bad faith registration.
The Panel finds that the disputed domain name was registered and used 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 disputed domain name, be transferred to Complainant.
Lawrence K. Nodine
Sole Panelist
Date: January 28, 2019
1 As Respondent may have been the victim of identity theft, the Panel has decided to redact Respondent’s name from the caption and body of this Decision. However, the Panel has attached as Annex 1 to this Decision an instruction to the Registrar which includes the name of Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar, and has indicated that Annex 1 is not to be published due to the circumstances of this case. See Banco Bradesco S.A. v. FAST-12785241 Attn. B / Name Redacted,WIPO Case No. D2009-1788.
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