The Complainant is Umicore of Brussels, Belgium, represented by Gevers Legal NV, Belgium.
The Respondent is Umi Core of Sucy-en-Brie, France. The Co-Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America (“United States”). 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 February 14, 2019. On February 15, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 15, 2019, 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 February 20, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 12, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 13, 2019.
The Center appointed Cherise Valles as the sole panelist in this matter on March 22, 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
The Complainant is a global materials technology and recycling group, with more than 10,000 employees and a turnover of EUR 10,4 billion. Much of the Complainant’s research and development work is focused on clean technologies. It has offices across Europe, North America, Asia and Africa.
The Complainant owns a number of trademarks in jurisdictions around the world for the term UMICORE including the following:
- United States trademark No. 2996277 for UMICORE, registered on September 20, 2005, in classes 1, 2, 6, 9 14, 40 and 42;
- United States trademark No. 3980169 for UMICORE, registered on June 21, 2011, in classes 7 and 11; and
- International trademark No. 1400844 for UMICORE, registered on November 27, 2017, in classes 1, 2, 6, 7, 9, 14 and 40.
The Complainant trades under the name UMICORE, which is used in its communications and on its website. The Complainant uses the name UMICORE (including as the name of its subsidiaries) in various countries worldwide.
The disputed domain name was registered on December 24, 2018. The Respondent has used the disputed domain name to create several email addresses of the form “[…]@” and send fraudulent emails to customers, purporting to come from the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant asserts that each of the elements enumerated in paragraph 4(a) of the Policy and the corresponding provisions in the Rules have been satisfied. In particular, the Complainant asserts that:
The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
- The disputed domain name is identical to the Complainant’s registered trademark, UMICORE, in light of the fact that it wholly incorporates the Complainant’s mark.
The Respondent lacks rights or legitimate interests in the disputed domain name.
- The Complainant states that the Respondent should be considered as having no rights or legitimate interests in the disputed domain name. The Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name that included its trademarks.
The disputed domain name has been registered and is being used in bad faith.
- The Complainant asserts that the disputed domain name was registered and is being used in bad faith. The disputed domain name was used to impersonate the Complainant with the intention of attempting to defraud the Complainant’s customers and providers.
The Complainant requests the Panel to issue a decision finding that the disputed domain name be transferred to the Complainant, in accordance with paragraph 4(i) of the Policy. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Policy provides specific remedies to trademark owners against registrants of domain names where the owner of the mark (a complainant) establishes each of the following elements:
(i) the domain name is identical or confusingly similar to a trademark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name was registered and is being used in bad faith.
The Complainant has the burden of proof in establishing each of these elements.
The Respondent has failed to file a Response in this proceeding. The Panel may draw appropriate inferences from the available evidence submitted by the Complainant. A. Identical or Confusingly Similar
To prove this element, the Complainant must have trademark rights and the disputed domain name must be identical or confusingly similar to the Complainant’s trademark.
The Complainant is the owner of multiple registrations in jurisdictions throughout the world for the trademark UMICORE, as indicated in Section 4 above.
The disputed domain name consists of the Complainant’s UMICORE trademark and the generic term “group”. Previous UDRP panels have found that the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for the purposes of the Policy (see, e.g., Oki Data Americas Inc. v ASD, Inc.,WIPO Case No. D2001-0903).
The addition of the generic term “group” to the Complainant’s trademark is insufficient to avoid any likelihood of confusion between the disputed domain name and the Complainant. Previous UDRP panels have established that adding a generic and descriptive term to a complainant’s mark does not influence the similarity between a trademark and a domain name. Previous UDRP panels have also held that the Top-Level Domain “.net” is not to be taken into account when assessing whether a domain name is identical or confusingly similar to a trademark.
The disputed domain name shows a clear visual, phonetic and conceptual resemblance to the Complainant’s UMICORE trademark, and could confuse Internet users into thinking that the disputed domain name is associated with the Complainant or its trademarks.
In the light of the foregoing, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered mark and that paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
The burden of proof is on the Complainant to establish that the Respondent lacks rights or legitimate interests in the disputed domain name. Under the UDRP, if a prima facie case is established by the Complainant, then the burden of production of evidence shifts to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy enumerates three non-exclusive ways in which a respondent may demonstrate rights or legitimate interests in a domain name (with “you” referring to the respondent):
“[a]ny of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your 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) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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 Respondent did not submit a response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws adverse inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b).
Previous UDRP panels have established that in order to shift the burden of production to the Respondent, it is sufficient for the Complainant to make a prima facie showing that the Respondent has no right or legitimate interest in the disputed domain names. See, e.g., Croatia Airlines d.d. v.Modern Empire Internet Ltd, WIPO Case No. D2003-0455. The Respondent has not satisfied this burden.
The Respondent is not a licensee of the Complainant, nor has it been otherwise allowed by the Complainant to make any use of the UMICORE trademark, in a domain name or otherwise. There is no commercial relationship between the Complainant and the Respondent which would entitle the Respondent to use or register the disputed domain name. Moreover, the Respondent does not own any valid trademark or trade name rights in the term UMICORE.
The Respondent has used the disputed domain name to impersonate the Complainant, with the intention of defrauding the Complainant’s customers. Several emails were sent as originating from the misleading email addresses “info@” and “sales@”, purporting to be from the Complainant’s CEO. In these emails the Respondent purported to be interested in buying goods from the email recipients and requested sensitive data from the recipients. Previous UDRP panels have held that the use of a domain name for illegal activity, including impersonation and passing off, or other types of fraud, can never confer rights or legitimate interests on a respondent.
The Respondent registered the disputed domain name through a company offering privacy services, which further suggests in the present circumstances that the Respondent lacks rights or legitimate interests in the disputed domain name.
Previous UDRP panels have held that legitimate or bona fide interests cannot exist in a domain name where there is deliberate illegitimate use of another party’s rights, or when the domain name is used to divert Internet users in bad faith through confusion. See, e.g., The PNC Financial Services Group, Inc and PNC Bank, N.A. v Azra Khan,WIPO Case No. D2002-0701.
In the light of the foregoing, the Panel finds that the Complainant has established an unrebutted prima facie case and concludes that paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;
(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;
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 the respondent’s website or location or of a product or service on its website or location.
Previous UDRP panels have held that the use of a domain name for the purposes of, inter alia, phishing and identity theft, constitutes bad faith.
The Respondent cannot claim not to have had knowledge of the Complainant’s UMICORE trademark at the time of registration of the disputed domain name given that the Respondent contacted genuine customers of the Complainant (whose details the Respondent presumably obtained by searching a list of the Complainant’s customers). This further suggests that the Respondent’s sole intention in registering the disputed domain name was to take unfair advantage of the Complainant’s UMICORE trademarks and reputation, and suggests registration and use in bad faith.
Finally, the Respondent’s use of proxy registration services, as well as a false name and address when registering the disputed domain name, is evidence of bad faith registration.
Accordingly, the Panel concludes that the Complainant has satisfied its burden of showing bad faith registration and use of the disputed domain name under paragraph 4(a)(iii) of the Policy. 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.
Cherise Valles
Sole Panelist
Date: March 29, 2019
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