The Complainant is Stemcor Holdings 2 Limited, United Kingdom, represented by Boult Wade Tennant, United Kingdom.
The Respondent is Contact Privacy Inc. Customer 1245631495, Canada / Joe Melo, United States of America.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 20, 2019. On November 20, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 21, 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 the Complainant on December 2, 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 December 5, 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 December 6, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 26, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 27, 2019.
The Center appointed Cherise Valles as the sole panelist in this matter on January 9, 2020. 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 BackgroundThe Complainant is a leading independent steel trading and distribution company, established in 1951. The Complainant acts as an intermediary between buyers and sellers of steel and raw materials, and also provides additional service including logistics, price risk management and inventory management.
The Complainant owns a number of trademarks in jurisdictions around the world for the term STEMCOR, including the following:
- United States trademark No. 5742519 for STEMCOR, registered on May 7, 2019, in classes 35 and 39;
- United States trademark No. 5742518 for the STEMCOR logo, registered on May 7, 2019, in classes 35 and 39;
- European Union Trademark No. 001001755 for STEMCOR, registered on April 30, 2009 in classes 6 and 36;
- United Kingdom trademark No. 2511201 for STEMCOR, registered on June 26, 2009, in classes 6 and 36; and
- Australian trademark No. 1302445 for STEMCOR, registered on April 30, 2009, in classes 6 and 36.
The Complainant also owns the domain name
The disputed domain name was registered on October 10, 2019. The Respondent has used the disputed domain name to create, amongst others, the email address “[...]@stemccor.com”, impersonating an actual employee of the Complainant with the email address “[...]@stemcor.com”, and to send fraudulent emails to the Complainant’s customers purporting to come from the Complainant and requesting bank details.
5. Parties’ Contentions A. ComplainantThe Complainant asserts that each of the elements enumerated in paragraph 4(a) of the Policy and the corresponding provisions in the Rules have been satisfied. In particular, the Complainant asserts that:
The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
- The disputed domain name is confusingly similar to the Complainant’s registered trademark, STEMCOR, in light of the fact that it is virtually identical to the Complainant’s mark and there is a deliberate misspelling of the Complainant’s trademark.
The Respondent lacks rights or legitimate interests in the disputed domain name.
- The Complainant states that the Respondent should be considered as having no rights or legitimate interests in the disputed domain name. The Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name that included its trademarks.
The disputed domain name has been registered and is being used in bad faith.
- The Complainant asserts that the disputed domain name was registered and is being used in bad faith. The mere fact of registration of a domain name that is confusingly similar or identical to a famous trademark by an entity that has no relationship to that mark is itself evidence of bad faith registration and use.
The Complainant requests the Panel to issue a decision finding that the disputed domain name be transferred to the Complainant, in accordance with paragraph 4(i) of the Policy.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsThe Policy provides specific remedies to trademark owners against registrants of domain names where the owner of the mark (a complainant) establishes each of the following elements:
(i) the domain name is identical or confusingly similar to a trademark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name was registered and is being used in bad faith.
The Complainant has the burden of proof in establishing each of these elements.
The Respondent has failed to file a Response in this proceeding. The Panel may draw appropriate inferences from the available evidence submitted by the Complainant.
A. Identical or Confusingly SimilarTo prove this element, the Complainant must have trademark rights and the disputed domain name must be identical or confusingly similar to the Complainant’s trademark.
The Complainant is the sole and exclusive owner of multiple registrations worldwide for the term STEMCOR, as indicated in Section 4 above. The disputed domain name is confusingly similar to the Complainant’s trademarks, since the only difference is the additional “c” in the word STEMCOR in the disputed domain name. The term “stemccor” in the disputed domain name is phonetically identical and confusingly similar to the Complainant’s STEMCOR trademarks, such that the additional “c” would likely be overlooked and mistaken for the Complainant’s legitimate website
Previous UDRP panels have held that where a repeated consonant in a disputed domain name (which repeated consonant is not found in a complainant’s trademark) does not significantly affect the appearance or the pronunciation of a disputed domain name, such conduct constitutes “typosquatting”.
Previous UDRP panels have held that the Top-Level Domain “.com” is not to be taken into account when assessing whether a domain name is identical or confusingly similar to a trademark.
In the light of the foregoing, the Panel finds that the disputed domain name
Paragraph 4(c) of the Policy enumerates three non-exclusive ways in which a respondent may demonstrate rights or legitimate interests in a domain name (with “you” referring to the respondent):
“[a]ny of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a 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.”
The Respondent did not submit a Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws adverse inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b).
Previous UDRP panels have established that in order to shift the burden of production to the respondent, it is sufficient for the complainant to make a prima facie showing that the respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not satisfied this burden. In the absence of a Response or assertion that any such right or legitimate interest exists, this must lead to a presumption that the Respondent is unable to show that such a right or legitimate interest exists.
There has never been any relationship between the Complainant and the Respondent. The Respondent is not licensed, or otherwise authorized, be it directly or indirectly, to register or use, the Complainant’s trademarks in any manner whatsoever, including in, or as part of, the disputed domain name. The Respondent does not own any valid trademark or trade name rights in the terms STEMCOR or “Stemccor” and to the best of the Complainant’s knowledge, the Respondent is not commonly known by the name STEMCOR or “Stemccor”.
The Respondent cannot claim to have been unaware of the Complainant’s rights in its STEMCOR trademarks, or to have a legitimate interest in the disputed domain name. The disputed domain name is virtually identical to the Complainant’s STEMCOR trademarks and, as outlined in Section C below, the Respondent used the disputed domain name as part of a phishing attempt on the date the disputed domain name was registered.
In the light of the foregoing, the Panel finds that the Complainant has established an unrebutted prima facie case and concludes that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;
(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;
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line 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 its website or location.
The Respondent used the disputed domain name to impersonate an employee of the Complainant and to insert themselves into email correspondence between the Complainant and one of the Complainant’s customers as part of a phishing attempt, during which the Respondent sought to redirect a payment due to the Complainant to itself. Such action constitutes intentional use of the disputed domain name to create a likelihood of confusion with the Complainant’s actual STEMCOR trademarks for commercial gain. The intention of the Respondent in registering and using the disputed domain name was to impersonate the Complainant and to solicit fraudulent payment from its customer(s) (indeed the phishing attempt took place on the date of registration of the disputed domain name).
Previous UDRP panels have held that the use of a disputed domain name for purposes other than to host a website (including to send deceptive emails or to solicit payment of fraudulent invoices by the Complainant’s customers, both of which the Respondent did in its emails impersonating an employee of the Complainant) may constitute bad faith use and registration. See, e.g., Accor v. SANGHO HEO/Contact Privacy Inc.,
WIPO Case No. D2014-1471.
Previous UDRP panels have also concluded that the use of an email address associated with a disputed domain name to send a phishing email in the course of dishonest activity is in itself evidence that the disputed domain name was registered and is being used in bad faith. See BHP Billiton Innovation Pty Ltd v. Domains by Proxy LLC/Douglass Johnson,
WIPO Case No. D2016-0364.
Accordingly, the Panel concludes that the Complainant has satisfied its burden of showing bad faith registration and use of the disputed domain name under paragraph 4(a)(iii) of the Policy.
7. DecisionFor 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
Cherise Valles
Sole Panelist
Date: January 22, 2020