Complainant is AdvanSix Resins & Chemicals, LLC, United States of America (“United States”), represented by Faegre Baker Daniels LLP, United States.
Respondent is Contact Privacy Inc. Customer 1244657330, Canada / Benjamin Thomasson, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with Google LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 5, 2019. On July 5, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 5, 2019, 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 July 8, 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 July 10, 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 July 11, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 31, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 5, 2019.
The Center appointed Lorelei Ritchie as the sole panelist in this matter on August 15, 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 United States company. Complainant and its predecessors have been in the chemicals industry for over 100 years. Beginning in 2016, Complainant has used the mark ADVANSIX as a house mark for its chemical, nylon, and resin products.
Complainant has several registered trademarks globally, including in the United States, where Respondent lists his address of record. These include United States Registration No. 5,321,829 (registered 2017); United States Registration No. 5,551,276 (registered 2018); and European Union Intellectual Property Office Registration No. 015417363 (registered 2016). Complainant also has trademark registrations for ADVANSIX in China, Korea, Mexico, and Malaysia, among others.
Complainant owns the registration for several domain names incorporating its marks. These include, among others, and . Complainant uses the domain names and associated websites to inform customers about its products and services.
The disputed domain name was registered on June 12, 2019.
Respondent has apparently not used the disputed domain name to link to an active web site. However, Respondent has used email addresses associated with the domain name as part of a scheme to contact customers of Complainant, and to divert them into making payments to an account controlled by Respondent. Respondent has no license from, or other affiliation with, Complainant, nor any permission to use Complainant’s marks in connection with its activities. 5. Parties’ Contentions A. Complainant
Complainant contends that (i) the disputed domain name is identical or confusingly similar to Complainant’s trademark; (ii) Respondent has no rights or legitimate interests in the disputed domain name; and (iii) Respondent registered and is using the disputed domain name in bad faith. In particular, Complainant contends that it has trademark registrations for ADVANSIX, as well as domain name registrations for variations on this term. Complainant contends that Respondent has merely used the disputed domain name, which contains an obvious misspelling of Complainant’s mark, to set up email accounts associated with the URL in a “phishing” scheme meant to lure in and confuse customers of Complainant by diverting payments into an account controlled by Respondent. Complainant further contends that Respondent has no rights or legitimate interests in the registration or use of the disputed domain name. Rather, Complainant contends that Respondent has acted in bad faith in setting up these email accounts, when Respondent clearly knew of Complainant’s rights. B. Respondent
Respondent did not file a reply to Complainant’s contentions in this proceeding. 6. Discussion and Findings A. Identical or Confusingly Similar
This Panel must first determine whether the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. The Panel finds that it is.
The disputed domain name contains an obvious misspelling of Complainant’s ADVANSIX mark. This indicates a practice commonly known as “typosquatting,” where a domain name registrant deliberately registers common misspellings of a well-known mark in order to divert consumer traffic. Other UDRP panels have routinely found typosquatted domain names like this to be “confusingly similar” for purposes of a finding under the UDRP. See E, Inc. v. Yingkun Guo,WIPO Case No. D2006-0694 (); Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol,WIPO Case No. D2001-0489 (, , ); see also Credit Karma, Inc. v. Domain Admin, WhoIs Privacy Corp.,WIPO Case No. D2017-0194 ().
The Panel therefore finds that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Policy provides some guidance to respondents on how to demonstrate rights or legitimate interests in the domain name at issue in a UDRP dispute. For example, paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that Respondent has been “commonly known by the domain name”; or (iii) “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.”
Respondent did not submit a reply to the Complaint, however. Rather, as mentioned in Section 4 of this Panel’s decision, Respondent has used email addresses associated with the disputed domain name as part of a scheme to contact customers of Complainant, and to divert them into making payments to an account controlled by Respondent.
Accordingly, the Panel finds that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in the disputed domain name, which Respondent has not rebutted, thereby satisfying paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
There are several ways that a complainant can demonstrate that a domain name was registered and used in bad faith. For example, paragraph 4(b)(iv) of the Policy states that bad faith can be shown where “by using the domain name [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [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 [respondent’s] website or location or of a product or service on [the] website or location”. As noted in Section 4 of this Panel’s decision, Respondent has used email addresses associated with the disputed domain name as part of a scheme to contact customers of Complainant, and to divert them into making payments to an account controlled by Respondent.
Hence, Respondent is trading on the goodwill of Complainant’s trademarks to attract Internet users, presumably for Respondent’s own commercial gain. In this regard, we note that numerous UDRP panels have stated that passive holding of a domain name does not shield a respondent from a finding of bad faith. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, section 3.3, which states:
“[f]rom the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or ‘coming soon’ page) would not prevent a finding of bad faith under the doctrine of passive holding.”
Rather, a panel must examine the “totality of the circumstances”. Given the nature of the disputed domain name, and the tactics employed by Respondent in targeting customers of Complainant and attempting to divert their payments to Respondent via emails using a URL associated with the disputed domain name, the Panel finds strong evidence that Respondent has registered and used the disputed domain name with knowledge of Complainant’s prior trademark rights, thereby evidencing bad faith.
Therefore, this Panel finds for purposes of this proceeding that Respondent has registered and used the disputed domain name in bad faith in accordance with paragraph 4(a)(iii) of the Policy. 7. Decision
For all of 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.
Lorelei Ritchie
Sole Panelist
Dated: August 21, 2019
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