The Complainant is Lucas Bols Amsterdam B.V. of Amsterdam, Netherlands, represented by NLO Shieldmark B. V., Netherlands.
The Respondent is Domains by Proxy, LLC of Scottsdale, Arizona, United States of America / Name Redacted. 2. The Domain Name and Registrar
The disputed domain name is registered with Wild West Domains, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 5, 2019. On April 5, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 5, 2019, the Registrar transmitted by email to the Center its verification response. Due to the lack of full contact details for the Registrant on the verification response, The Center requested a clarification from the Registrar on April 8, 2019. On April 8, 2019, the Registrar transmitted by email to the Center its clarification 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 April 9, 2019, 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 amendment to the Complaint on April 12, 2019.
The Center verified that the Complaint together with the amendment to 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 April 16, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 6, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 7, 2019.
The Center appointed Tuukka Airaksinen as the sole panelist in this matter on May 13, 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, Lucal Bols Amsterdam B.V., being a part of the Dutch group of companies, Lucas Bols which was founded in 1575, is the world’s oldest distilled spirits brand. The Complainant is the owner of the trademark BOLS, registered inter alia in the European Union under No. 855501 on March 21, 2005. The Complainant’s other trademark registrations for BOLS were registered internationally under No. 315024 on June, 15, 1966 and in United States of America under No. 72213751 on October 3, 1965.
The disputed domain name was registered on March 20, 2019 and allegedly is being used for fraudulent email scheme purposes. 5. Parties’ Contentions A. Complainant
In addition to the trademark BOLS, the Complainant is also the proprietor of the unregistered trademark LUCAS BOLS, which has been used since 1575.
The disputed domain name is confusingly similar to the registered trademark BOLS and identical with the unregistered trademark LUCAS BOLS.
The respondent has no legitimate interest in respect of the disputed domain name and there is no evidence of the Respondent’s use of, or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. There is no relationship between the Complainant and the Respondent.
The Complainant uses the domain name for corporate emails and has recently been confronted concerning the disputed domain name . An email from the disputed domain name using the actual name of an employee of the Complainant was sent including information of alleged changes to the Complainant’s bank account, trying to divert payments of the Complainant’s distributors to a fake 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 the Complainant to 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 Complainant has submitted proof that it is the proprietor of the registered trademark BOLS and the unregistered trademark LUCAS BOLS, used in commerce since 1575. The Panel considers that the Complainant has submitted sufficient proof to show that the mark LUCAS BOLS is indeed an unregistered trademark.
The disputed domain name is identical to the unregistered trademark LUCAS BOLS. The Panel also considers that the disputed domain name is confusingly similar to the registered trademark BOLS, because the Complainant’s trademark is included in the disputed domain name in its entirety, combined with the word “lucas”, which, taken as a whole, obviously refers to the Complainant’s company name and unregistered trademark.
Accordingly, the Panel finds that the disputed domain name is confusingly similar 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 the Complainant to 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 proof 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 neither affiliated with the Complainant in any way nor has he been authorized by the Complainant to use and register the disputed domain name, that the Respondent has no prior rights or legitimate interest in the disputed domain name, and that the Respondent has not made and is not making any legitimate noncommercial or fair use of the disputed domain name and is not commonly known by the disputed domain name in accordance with paragraph 4(c)(ii) of the Policy.
Accordingly, the Panel finds that the Complainant has made a prima facie case that has not been rebutted by the Respondent. Considering the Panel’s findings below, the Panel finds that there are no other circumstances that 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 the Complainant to 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.”.
The disputed domain name has been used in an attempt to fraudulently divert financial transactions to a bank account unrelated with the Complainant. As the Complainant points out, this is known as “spear phishing” and is clearly fraudulent behavior.
When registering the disputed domain name, the Respondent must have been aware of the Complainant as it has later targeted the distributors of the Complainant using the disputed domain name. The fact that the disputed domain name has been used for fraudulent purposes means that it was registered to attract, for commercial gain, to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark.
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: May 27, 2019
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