The Complainant is Smiths Group PLC, United Kingdom, represented by Bird & Bird LLP, United Kingdom.
The Respondent is WhoisGuard Protected, WhoisGuard Inc., Panama / miri Maza, United Kingdom. 2. The Domain Name and Registrar
The disputed domain name is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 5, 2019. On August 6, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 the Complainant on August 7, 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 amended Complaint on August 8, 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 the Respondent of the Complaint, and the proceedings commenced on August 12, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 1, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 2, 2019.
The Center appointed Antony Gold as the sole panelist in this matter on September 3, 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 diversified engineering business which conducts business in over 50 countries and has a number of operating divisions. These include a subsidiary company, Smiths Interconnect Group Limited, which manufactures an array of electronic and radio frequency components for supply into several industry sectors. In 2018, the Smiths Interconnect business generated revenue of approximately GBP 300 million.
Smiths Interconnect Group Limited trades as “Smiths Interconnect” and is the owner of a trade mark, SMITHS INTERCONNECT, which is registered in a number of jurisdictions. The registrations include, by way of example, European Union Trade Mark No. 016186331 (word mark) registered on December 18, 2017 in classes 9, 40 and 42. The Complainant is the owner of the domain name , first registered by it in 2001. This resolves to the Complainant’s primary website, which presently receives around 30,000 visitors per month.
The disputed domain name was registered by the Respondent on May 9, 2019. It does not presently resolve to an active website.
The Complainant has provided a number of emails sent to and from one of its customers, dated between November 2018 and June 2019, which relate to orders placed, or to be placed, by the customer with the Complainant. At all times, the party communicating with the Complainant’s customer appeared to be the Complainant. However, in or around May 2019, the Respondent took over communications and, masquerading as the Complainant, sought payment in respect of the customer’s orders. The only indication that the switch had occurred is that the email addresses being used changed from those used by the Complainant (that is “[name]@”) to those used by the Respondent (that is “[name]@”).
The Complainant’s customer, having been under the erroneous impression that it was still dealing with the Complainant, has paid the Respondent the monies which it owed the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant says that the disputed domain name is confusingly similar to a trade mark in which it has rights. It draws attention to the trade marks for SMITHS INTERCONNECT, full details of one of these marks having been set out above. The generic Top Level Domain (“gTLD”) “.com” is ignored for the purpose of the assessment of confusing similarity. The disputed domain name is almost identical to the SMITHS INTERCONNECT trade mark, the only difference being the replacement of the second “s” with a “z”. This is a common alternative spelling for words which end with “s”. Moreover, this difference is hidden within the middle of the disputed domain name and so is very difficult to detect on a summary review.
The Complainant asserts also that the Respondent has no rights or legitimate interests with respect to the disputed domain name. The Respondent sent two fraudulent emails, on May 9, 2019 and June 11, 2019, demanding and chasing payment for monies allegedly outstanding from one of the Complainant’s customers. These emails follow on from legitimate emails sent by the Complainant, establishing that the Respondent has illegally accessed the Complainant’s emails. The fraud has been perpetrated by creating email addresses which combine the names of real employees of the Complainant with “@”. The use of these email addresses has enabled the Respondent successfully to carry out a financial fraud and is clear evidence that the Respondent is not using the disputed domain name for any legitimate purpose.
Moreover, the Respondent has never been known by the disputed domain name, does not hold any trade mark or other intellectual property rights in the SMITHS INTERCONNECT trade mark and has never been authorized to use this trade mark. The fact that the Respondent is not using the disputed domain name for any bona fide purpose is further evidenced by the fact that the disputed domain name does not resolve to an active website. There is no evidence, to the Complainant’s knowledge, that the disputed domain name has ever been used in connection with a genuine offering of goods and services or for a legitimate noncommercial use.
Lastly, the Complainant says that the disputed domain name was registered and is being used in bad faith. The Respondent has used the disputed domain name and email addresses associated with it in order to commit fraud by inducing customers of the Complainant to pay it money. Previous UDRP panels have found that use of a domain name in an email address in such manner is clear evidence of registration and use in bad faith. In Tetra Laval Holdings & Finance S.A. v. Harry Bradley, Harry B. Holdings Ltd.,WIPO Case No. D2016-0616, the panel observed that, if supporting a phishing scheme is regarded as an example of use in bad faith, then the use of a domain name in an email address in an attempt to perpetrate a fraud should be regarded similarly. In the current case, a fraud was successfully committed, which is even greater reason to find bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Dealing, first, with the Respondent’s failure to file a response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission as it considers appropriate.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order to succeed in its Complaint:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the 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. A. Identical or Confusingly Similar
The Complainant has provided a schedule of the trade marks for SMITHS INTERCONNECT, including the mark in respect of which full details are set out above. These establish the Complainant’s rights in this mark.
For the purpose of considering whether the disputed domain name is identical or similar to the SMITHS INTERCONNECT trade mark, the generic Top-Level Domain (“gTLD”) “.com” is disregarded as this is a technical requirement of registration. The only difference between the mark and the disputed domain name is the substitution of the second “s” in “SMITHS” with a “z”. This is a very minor variance, particularly as “z” is aurally similar to an “s” in many words and is sometimes used in substitution for it. See also section 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”): “[a] domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element.”
The Panel accordingly finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out circumstances, without limitation, by which a respondent might demonstrate that it has rights or legitimate interests in a domain name. These are, summarised very briefly: (i) if the respondent has been using the domain name in connection with a bona fide offering of goods and services; (ii) if the respondent has been commonly known by the domain name; or (iii) if the respondent has been making a legitimate noncommercial or fair use of the domain name.
So far as the first circumstance is concerned, section 2.13.1 of the WIPO Overview 3.0 explains that “[p]anels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent”. Whilst the evidence submitted by the Complainant does not include documents evidencing the actual payment of monies to the Respondent, it does show that the Respondent masqueraded as the Complainant with a view to inducing the Complainant’s customer to pay monies to it. This is sufficient to establish that the use to which the Respondent has put the disputed domain name is unlawful and could not possibly be considered a bona fide offering of goods and services.
The second and third circumstances outlined above can be dealt with briefly; there is no evidence that the Respondent has been commonly known by the disputed domain name and the use which has been made of it is clearly commercial in character.
As explained at section 2.1 of the WIPO Overview 3.0, once a complainant has made out a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent to show that it does have such rights or legitimate interests. In the absence of any response from the Respondent to the Complaint, it has failed to satisfy this burden.
The Panel accordingly finds that the Respondent has no rights or interests with respect to the disputed domain name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out, without limitation, circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The circumstances set out in paragraph 4(b)(iv) of the Policy are if a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website.
The Respondent is not actually using a website to create confusion between it and the Complainant; rather, it is causing confusion to customers of the Complainant, for the purposes of securing illicit financial gain, through the use of email addresses which it is able to create by virtue of its registration of the disputed domain name. The effect of its conduct is essentially the same as that created by a website which is intended to mislead or defraud Internet users. In this respect, see section 3.4 of the WIPO Overview 3.0: “[p]anels have held that the use of a domain name for purposes other than to host a website may constitute bad faith. Such purposes include sending email, phishing, identity theft, or malware distribution”. Note that the circumstances at paragraph 4(b) of the Policy are expressed to be without limitation, and conduct by a respondent which is essentially the same in its intention and effect as that set out in paragraph 4(b)(iv) should be considered in a broadly similar way.
The use by the Respondent of a privacy service to mask the identity of the underlying registrant is, in the circumstances of this Complaint, a further indication of bad faith; see section 6 of the WIPO Overview 3.0.
For these reasons, the Panel finds that the Respondent has registered and is using the disputed domain name 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 the Complainant.
Antony Gold
Sole Panelist
Date: September 16, 2019
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