The Complainant is Nordic Waterproofing AB, Sweden, represented by Ports Group AB, Sweden.
The Respondent is Contact Privacy Inc. Customer 1245905149, Canada / Name Redacted 1 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 28, 2020. On January 28, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 29, 2020, 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 January 31, 2020 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 amendment to the Complaint on February 4, 2020. The Center verified that the Complaint together with the amendment to 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 February 7, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 27, 2020. On February 18 and March 4, 2020, a third party contacted the Center regarding its identity in relation to the present proceedings. The Center acknowledged receipt of the email communication noting the third party concerns regarding the domain name. No formal Response was filed with the Center. Accordingly, on March 4, 2020, the Center informed the Parties that it will proceed to appoint a panel. The Center appointed Felipe Claro as the sole panelist in this matter on March 23, 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 Background The Complainant, Nordic Waterproofing AB, is a limited company incorporated in Höganäs, Sweden. The Complainant is a part of the Nordic Waterproofing Group, which is one of Europe’s leading producers and suppliers of waterproofing products and services for buildings and infrastructure. With more than 1,000 employees worldwide, the company has evolved and grown into an international corporation with production facilities located in Denmark, Finland, Norway and Sweden and with sales organizations in the Benelux, the United Kingdom, Norway, Poland and Germany. The Complainant uses the mark MATAKI to identify its products and its website. The Complainant is the holder of several trademarks worldwide and among them the following: - European Union Trade Mark no. 013428719, MATAKI, registered on May 26, 2015. Classes 17, 19, and 37. The Complainant owns several domain names through their parent company, Nordic Waterproofing Group, reflecting the mark MATAKI, which are used to promote its goods and services. The Respondent registered the disputed domain name on November 18, 2019. The disputed domain name does not resolve to an active website. However, it has been used to send emails from an email address “[...]@matakl.com” in order to perpetrate a fraud on one of the Complainant’s customers, trying to obtain payment of false invoices. 5. Parties’ Contentions A. Complainant The Complainant is the holder of several MATAKI trademarks worldwide. The disputed domain name and the Complainant’s trademarks MATAKI coincide in the string of letters “m-a-t-a-k”. The only difference is the sixth and last letter, namely “i” in the Complainant’s trademarks and “l” in the domain name under dispute, which gives a confusingly similar perception to the customers. The Respondent does not have any rights to the trademarks MATAKI or MATAKL, and the Complainant has several registered rights including the wording “mataki”. The Respondent’s motivation in relation to the registration and use of the confusingly similar domain name was to capitalize and take advantage from the Complainant’s trademark rights, with the aim to unlawfully profit through the domain name use. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings In view of the lack of a suitable response filed by the Respondent as required under paragraph 5 of the Rules, under paragraphs 5(e), 14(a) and 15(a) of the Rules, the Panel is directed to decide this administrative proceeding based on the Complainant’s undisputed representations. In that regard, the Panel makes the following specific findings. A. Identical or Confusingly Similar The disputed domain name Considering the above, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests The Respondent does not have any rights to the trademark MATAKI. The Respondent is not a licensee of the Complainant and the Complainant has not given the Respondent any permission to register the trademark MATAKI or similar as a domain name, nor is there any evidence that the Respondent has been commonly known by the disputed domain name Considering the above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith The Complainant’s trademarks MATAKI were registered well before the Respondent became the owner of the disputed domain name. The Complainant has been using the MATAKI trademark for over 85 years and has been the registered owner of the trademark MATAKI for 26 years. It has been using the trademark long before the disputed domain name was registered. The Respondent was or should have been aware of the Complainant’s trademarks and business when registering the disputed domain name. For the reasons indicated in the next paragraph, the Panel is of the view that the Respondent registered the disputed domain name in full knowledge of the Complainant’s trademark rights and, on balance, with the intention of taking advantage of such rights. The Panel therefore finds that the Respondent registered the disputed domain name in bad faith, “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH v. Godaddy.com,WIPO Case No. D2017-0246. The Respondent, without the Complainant’s knowledge or consent, has used the disputed domain name to impersonate an employee of the Complainant through the email “[...]@matakl.com” in order to perpetrate a fraud on one of its customers, trying to obtain payment of false invoices. The illegitimate email asked the customer to verify whether two specific invoices had been paid or not. The Respondent’s fraudulent behavior, and imitation of the Complainant’s business information, were further enhanced by the fact that the email contained the mark MATAKI as well as detailed and genuine business information, contact information and addresses of the Complainant and its employee. As indicated above, this is a clear case of bad faith. It is clear for all the above that the Respondent’s motivation in relation to the registration and use of the confusingly similar disputed domain name was to capitalize and take advantage of the Complainant’s trademark rights, with the aim to unlawfully profit through this use. In light of the Respondent’s fraudulent activities, as described above, a cease and desist letter was sent to the Respondent. The Respondent did not reply to the cease and desist letter and to the following reminders sent by the Complainant. The fact that the Respondent never answered the Complainants communications, and registered the disputed domain name with a privacy shield service and false contact details, impersonating a third party, are additional indicators that the Respondent acted in bad faith. In fact, the Respondent’s use of a privacy service provider to register the disputed domain name, leads to further attest bad faith (section 3.6 of the WIPO Overview 3.0). Considering the above, the Panel finds that the Respondent 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 Felipe Claro 1 As it appears, the Respondent has used the identity of a third party when registering the disputed domain name. In light of the potential identity theft, the Panel has redacted the 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 the 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. Bradescourgente.net / Name Redacted,WIPO Case No. D2009-1788.
- Norwegian trademark no. 280869, MATAKI, registered on March 12, 2015. Classes 17, 19, and 37.
- Swedish trademark no. 317872, MATAKI, registered on October 4, 1996. Classes 17, 19, and 37; and 263077, MATAKITEST, registered on December 23, 1994. Class 9.
Sole Panelist
Date: April 20, 2020
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