Complainant is Applied Materials Inc., United States of America (“United States”), represented by CSC Digital Brand Services Group AB, Sweden.
Respondent is Contact Privacy Inc. Customer 0152257585, Canada / Name Redacted1. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 15, 2019. On May 15, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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 May 22, 2019, 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 May 27, 2019.
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 May 28, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 17, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 18, 2019.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on June 27, 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 the owner of registrations for the word trademark and service mark (hereinafter “trademark”) APPLIED MATERIALS on the Principal Register of the United States Patent and Trademark Office (“USPTO”), registration number 1943850, registration dated December 26, 1995, in International Class (“IC”) 9, covering semiconductor wafer processing equipment and components, as further specified, and registration number 1980572, registration dated June 18, 1996, in IC 37, covering repair and maintenance of semiconductor wafer processing equipment and components, as further specified. Complainant has also provided evidence of ownership of a word and design trademark registration incorporating APPLIED MATERIALS at the USPTO, and of registration of the APPLIED MATERIALS trademark in jurisdictions outside the United States, including Canada and the United Kingdom.
Complainant is a publicly-traded company with securities listed on the NASDAQ exchange (ticker symbol: AMAT) in the United States, and its securities are currently a component of the S&P 500 index. As of the date of this decision, the company had a market capitalization in excess of USD 40 billion. It is a leading manufacturer and supplier of products and services to the global semiconductor industry. Complainant operates a commercial website at .
The Panel takes administrative notice that APPLIED MATERIALS is a well-known company and brand in the semiconductor industry.
According to the Registrar’s verification, Respondent is registrant of the disputed domain name. According to that verification, Respondent acquired the disputed domain name on July 30, 2018. According to a Domain Tools WhoIs record furnished by Complainant, the disputed domain name was created on the same date it was acquired by Respondent.
The disputed domain name is not associated with an active website.
Complainant has provided evidence of emails sent to its customers from an address with the domain extension “@”, and with a username of Complainant’s employee (i.e., the procurement manager), which is redacted from this decision. Those emails sought information from Complainant’s customers regarding the potential supply of products to Complainant. Complainant’s customers took notice of the atypical form of email address incorporating the disputed domain name and forwarded those emails to Complainant suggesting that Complainant investigate potential fraudulent activity by the sender. In addition, Complainant’s employee – whose name had been misappropriated by Respondent for use in a substantial number of emailings to Complainant’s customers – received a significant number of telephone inquiries from Complainant’s customers questioning the emails purportedly transmitted by him.
Complainant transmitted cease-and-desist emails to the Registrar/privacy shield provider requesting assistance in addressing the apparent abuse of its trademark in the disputed domain name, but was unsuccessful in resolving this matter.
The registration agreement between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, one of which is the Center, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)). 5. Parties’ Contentions A. Complainant
Complainant contends that it owns rights in the trademark APPLIED MATERIALS, and that the disputed domain name is confusingly similar to that trademark.
Complainant argues that Respondent lacks rights or legitimate interests in the disputed domain name because: (1) Respondent is not sponsored by or affiliated with Complainant and has not given Respondent permission to use its trademark in the disputed domain name; (2) Respondent is not commonly known by the disputed domain name; (3) Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name, and; (4) Respondent registered the disputed domain name long after Complainant acquired rights in its trademark.
Complainant alleges that Respondent registered and is using the disputed domain name in bad faith because: (1) Complainant’s trademark is well-known, and Complainant acquired its trademark rights long before Respondent registered the disputed domain name; (2) the disputed domain name is deliberately designed to confuse email recipients; (3) Respondent has used the disputed domain name to deceptively solicit information from customers of Complainant by impersonating Complainant’s employee, presumably with the ultimate goal of obtaining sensitive financial data in the way of billing and payment information; (4) the disputed domain name is not associated with an active website; (5) there is no plausible good faith reason for Respondent to have registered the disputed domain name; (6) Respondent employed a privacy shield; (7) Respondent used false information in its domain name registration, and; (7) Respondent did not respond to Complainant’s cease-and-desist demands.
Complainant has requested that the Panel redact from its decision and not identify as a respondent the individual employee whose name was misappropriated by Respondent for use in its deceptive emails so as to avoid potential confusion with and/or reputational injury to that employee.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceeding that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center formally notified the Complaint to Respondent at the email and physical address provided in its record of registration. It appears that express courier physical delivery could not be completed because of false and/or incomplete address information provided by Respondent, although it was delivered to the privacy shield’s address. No emails could be transmitted to the email address provided by Respondent, which also appeared to be false and/or incomplete. The Center took those steps prescribed by the Policy and the Rules to provide notice to Respondent, and those steps are presumed to satisfy notice requirements.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use and to obtain relief. These elements are that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief. A. Identical or Confusingly Similar
Complainant has provided substantial evidence of rights in the trademark APPLIED MATERIALS including by registration at the USPTO and through use in commerce. See Factual Background, supra. Respondent has not challenged Complainant’s rights in the trademark. The Panel determines that Complainant has established rights in the APPLIED MATERIALS trademark.
The disputed domain name directly incorporates Complainant’s trademark and appends the term “inc”. The term “inc” refers to a form of corporate entity commonly used in business. Addition of that term to Complainant’s trademark in the disputed domain name does not prevent a finding of confusing similarity between Complainant’s trademark and the disputed domain name. The Panel determines that the disputed domain name is confusingly similar to Complainant’s trademark within the meaning of the Policy.
The Panel determines that Complainant has established rights in the trademark APPLIED Materials and that the disputed domain name is confusingly similar to that trademark. B. Rights or Legitimate Interests
Complainant’s allegations to support Respondent’s lack of rights or legitimate interests in the disputed domain name are outlined above in section 5.A., and the Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name.
Respondent has not replied to the Complaint and has not attempted to rebut Complainant’s prima facie showing of lack of rights or legitimate interests.
Complainant has provided substantial evidence that Respondent has used the disputed domain name for purposes of misrepresentation of identity and attempting to defraud Internet/email users. Such evidence is unrebutted.
The Panel determines that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name within the meaning of paragraph 4(c) the Policy. C. Registered and Used in Bad Faith
Complainant has provided substantial evidence that Respondent registered and is using the disputed domain name for purposes of misrepresentation of identity and attempting to defraud Internet/email users. Such evidence is unrebutted.
Respondent has used the disputed domain name intentionally for purposes of commercial gain to establish Internet user confusion regarding Complainant as the source of email communications intending to defraud Internet users. Respondent was manifestly aware of Complainant’s rights in its trademark when it undertook this action.
The Panel determines that Respondent registered and is using the disputed domain name in bad faith within the meaning of paragraph 4(b) of the Policy.
Under the circumstances presented here the Panel considers it appropriate to redact from this decision, including from the decision caption, the name of the individual employee whose name was misappropriated by Respondent for use in its scheme to defraud. 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.
For purposes of properly executing this order, the Panel also directs the Registrar’s attention to Annex 1 hereto that identifies the individual listed as registrant of the disputed domain name in the formal record of registration, and orders that the disputed domain name be transferred from that individual to Complainant.
The Panel directs the Center that Annex 1 shall not be published along with this Decision.
Frederick M. Abbott
Sole Panelist
Date: July 10, 2019
1 Respondent appears to have used the name of an employee of Complainant when registering the disputed domain name. In light of the potential identity theft, the Panel has redacted Respondent’s name from this decision. However, the Panel has attached as Annex 1 to this decision an instruction to the Registrar regarding transfer of the disputed domain name, which includes the name of Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this decision shall not be published due to the exceptional 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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