The Complainant is Acer Incorporated, China, represented by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson, United States of America (“United States”).
The Respondent is Caroline Castle, Santa, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with N, Inc. (N LLC) (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 15, 2019. On August 16, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 19, 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 August 23, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 12, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 13, 2019.
The Center appointed Marilena Comanescu as the sole panelist in this matter on September 20, 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.
The language of the proceeding is English. 4. Factual Background
The Complainant, headquartered in China, is a major global manufacturer and seller of computers and other electronic consumer goods. For three decades, the Complainant has extensively used, advertised and promoted its products through the world under the trademark ACER.
The Complainant owns several trademark registrations for or including the word ACER worldwide, such as:
- the United States trademark ACER, registration number 1475746, filed on May 19, 1987 and registered on February 9, 1988, for goods in IC 9; and
- the European Union trademark ACER, registration number 000653691, filed on October 7, 1997 and registered on September 27, 1999, for goods in IC 9.
The disputed domain name was registered on August 13, 2019 and, according to the evidence provided in the Complaint and not rebutted by the Respondent, it was used in connection with phishing emails to Complainant’s employees, asking to make payment or other financial arrangements with the Respondent and specifically sought to impersonate one of the Complainant’s directors. No website content is displayed on the corresponding website at the disputed domain name. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to its well-known trademark ACER, the Respondent has no rights or legitimate interests in the disputed domain name, and the Respondent registered and is using the disputed domain name in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In view of the Respondent’s default, the discussion and findings will be based upon the contentions in the Complaint and any reasonable position that can be attributable to the Respondent. Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the following circumstances are met:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Panel will further analyze the potential concurrence of the above circumstances. A. Identical or Confusingly Similar
The Complainants hold rights in the ACER trademark.
The disputed domain name incorporates the Complainant’s trademark ACER entirely with an additional word “tw”, similar to the acronym for Taiwan (i.e. China). However, such minor alteration does not prevent a finding of confusing similarity as the Complainant’s trademark is clearly recognizable within the disputed domain name.
Numerous UDRP panels have considered that the addition of other terms (whether geographical, descriptive, pejorative, meaningless or otherwise) to trademarks in a domain name is not sufficient to escape a finding of confusing similarity. See section 1.8 of theWIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Further, it is well established in decisions under the UDRP that the generic Top-Level Domain (“gTLD”) (e.g., “.net”, “.info”, “.com”, “.org”) may typically be disregarded for the purposes of consideration of confusing similarity between a trademark and a domain name.
Given the above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark ACER, pursuant to the Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
The Complainant asserts that the Respondent does not hold any trademark rights, license or authorization whatsoever to use its trademark ACER, that the Respondent is not commonly known by the disputed domain name and that the Respondent has not used the disputed domain name in connection with a legitimate noncommercial or fair use or a bona fide offering of goods and services.
Under the Policy, “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”. See section 2.1 of theWIPO Overview 3.0.
The Respondent has not replied to the Complainant’s contentions and has not come forward with relevant evidence to rebut the Complainant’s prima facie case.
There is nothing in the record suggesting that the Respondent has ever been commonly known by the disputed domain name.
To the contrary, the Respondent has used the disputed domain name in connection with email communications for fraudulent purposes in an attempt to obtain payments, impersonating the Complainant’s representative. This is definitely not an activity falling under the circumstances listed by paragraph 4(c) of the UDRP as demonstrating the Respondent’s rights or legitimate interests in the disputed domain name, nor an activity from which rights or legitimate interests could arise.
Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, pursuant to the Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith
The Complainant holds registered trademark rights for more than three decades and its mark ACER has gained substantial goodwill and become well-known in its relevant market due to extensive use and advertising.
The disputed domain name was created in 2019 and it incorporates the Complainant’s mark with an additional dictionary term “tw”, that can be a geographical acronym for Taiwan.
For the above, the Panel finds that the disputed domain name was registered in bad faith, knowing the Complainant and targeting its trademark.
At the time of filing the Complaint, the disputed domain name did not resolve to an active website. According to the evidence provided in the Complaint and unrefuted by the Respondent, prior to the present proceeding, the Respondent was using the disputed domain name to send email communications for phishing and other fraudulent purposes in an attempt to obtain confidential information and payments from Complainant’s employees, impersonating one of the Complainant’s directors. This is a classic phishing scheme and establishes bad faith use and registration.
UDRP panels have consistently held that the use of a domain name other than to host a website may constitute bad faith. Such purposes include sending email, phishing, or identity theft. Many of such cases, as well as the present case, involve the respondent’s use of the disputed domain name to send deceptive emails to solicit payment of fraudulent invoices or to obtain sensitive or confidential information from complainant’s actual or prospective clients, or employees. See section 3.4 of theWIPO Overview 3.0.
For all the above reasons, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith, pursuant to the Policy, paragraph 4(a)(iii). 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.
Marilena Comanescu
Sole Panelist
Date: October 1, 2019
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