The Complainant is Halliburton Energy Services, Inc., United States of America (“U.S.”), represented by Polsinelli PC, U.S.
The Respondent is Cimpress Schweiz GmbH, Switzerland. 2. The Domain Name and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 31, 2020. On February 3, 2020, 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 February 5, 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 amended Complaint on February 9, 2020. 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 February 11, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 2, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 3, 2020. The Center appointed Christian Schalk as the sole panelist in this matter on March 12, 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 was founded in 1919 and is for decades a leading company in the global energy sector. Today it has more than 60,000 employees and provides products and services to the energy industry in approximately 80 countries. The Complainant’s annual revenues in 2017 were USD 20.6 billion and USD 23.9 billion in 2018. The Complainant owns trademark rights in the word mark HALIBURTON in many countries of the world, among others the following trademark rights: - U.S. trademark registration No. 2575819, registration date June 4, 2002, covering services in International classes 37, 40, and 42; - U.S. trademark registration No. 2575840, registration date June 4, 2002, covering goods in International classes 1, 6, 7, 9, and 16; - German trademark registration No. 895308, registration date July 12, 1972, covering goods in International classes 1, 2, 6, 7, 8, 9, 11, 12, 13, 19, and 21; - French trademark registration No. 1487045, registration date September 6, 1988, covering goods in International classes 1, 4, 6, 7, 8, 9, 11, 12, 19, 35, 36, 37, 38, 39, 40, 41, and 42. The Respondent registered the disputed domain name on July 31, 2019. According to the documents, which the Complainant presented before the Panel, the Respondent used the disputed domain name on August 5, 2019 in the email address “[...]@hallbiurton.com” to impersonate a high-ranking executive of the Complainant. The Respondent sent this email to an employee of the Complainant stating that said executive needed them to perform a task. The disputed domain name does currently not resolve to an active website. 5. Parties’ Contentions A. Complainant The Complainant alleges that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Complainant states in this context that the disputed domain name is confusingly similar to the Complainant’s well-known HALLIBURTON trademark because it contains a single slight, but intentional variation this trademark. The Complainant cites in this context among others River Light V, LP., Tory Burch LLC v. Kung Chen Chang, PRIVATE,WIPO Case No. D2018-0046 and Edmunds.com, Inc. v. Triple E Holdings Limited,WIPO Case No. D2006-1095 to support its arguments. The Complainant alleges further that the Respondent has neither rights nor legitimate interests in the disputed domain name. The Complainant argues in this context that the Respondent is not using the disputed domain name for a bona fide offering of goods and services. The Complainant states that by registering a domain name confusingly similar to the Complainant’s well-known HALLIBURTON trademark including a typographical error, the Respondent acquired the disputed domain name for the sole purpose of exploiting the Complainant’s rights, title, interest, and goodwill in the HALLIBURTON trademark through perpetration of an identity theft involving fraudulent email addresses. The Complainant refers in this context to WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.13 and cites further TVS Motor Company Limited v. Vistaprint Technologies Limited,WIPO Case No. DCO2014-0007. The Complainant concludes therefore, that for these reasons the Respondent’s behavior cannot constitute a legitimate noncommercial or fair use of the disputed domain name. The Complainant is also convinced that the Respondent has not been commonly known by the disputed domain name. The Complainant states in this context that the Respondent’s true identity is Cimpress Schweiz GmbH which shows that the disputed domain name is not derived from the Respondent’s name. The Complainant believes that the only use the Respondent has for the disputed domain name is to masquerade as a senior employee of the Complainant in furtherance of a fraudulent email and identity theft scheme. Therefore, the Complainant concludes that the Respondent’s mala fide use precludes any claim by the Respondent to have been commonly known by the disputed domain name. The Complainant adds further that the Respondent’s use of a privacy or proxy service which is known to block or intentionally delay the disclosure of the identity of the actual underlying registrant, is also an indication of bad faith and refers to WIPO Overview 3.0, section 3.6 and the cases cited therein to support this argument. Furthermore the Complainant alleges that the disputed domain name was registered in bad faith and is being used in bad faith. The Complainant is convinced that the Respondent was well aware of the Complainant and had the Complainant’s HALLIBURTON trademark in mind when registering the disputed domain name. The sole motivation of this behavior was to capitalize on or otherwise take advantage of the Complainant’s trademark rights, in furtherance of a scheme of identity theft and fraud sought to be perpetrated on the Complainant. The Complainant refers in this context to Admiral Group Plc and EUI Limited v. Cimpress Schweiz, Cimpress Schweiz GmbH,WIPO Case No. DCO2017-0043 and TVS Motor Company Limited v. Vistaprint Technologies Limited,WIPO Case No. DCO2014-0007. The Complainant continues that the Respondent’s registration of the disputed domain name constitutes an obvious case of typosquatting where a trademark is misspelled by the reverse of two letters and that such typosquatting has been shown to be evidence of bad faith in and of itself. The Complainant cites in this context Classmates Online, Inc. v. John Zuccarini, individually and dba RaveClub Berlin,WIPO Case No. D2002-0635; Playboy Enterprises International Inc. v SAND WebNames – For Sale,WIPO Case No. D2001-0094; Longs Drugs Stores California, Inc. v. Shep Dog,WIPO Case No. D2004-1069 and Wall-Mart Stores Inc. v. Longo,WIPO Case No. D2004-0816 where the UDRP panels have found the abusive practice of typosquatting compelling evidence of bad faith registration and use. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Panel finds that the Complainant has established trademark rights in the term HALLIBURTON which has been registered by trademark offices of many countries of the world. The disputed domain name is also confusingly similar to the Complainant’s trademark rights in HALLIBURTON. The Complainant HALLIBURTON trademark and the disputed domain name have the same number of letters. The only difference is that the letters “b” and “i” have been exchanged, “Hallbiurton” instead of “Halliburton”. There is a consensus view among UDRP panels that a domain name which contains a common or obvious misspelling of a trademark normally will be found confusingly similar to such trademark, where the misspelled trademark remains the dominant or principal component of the domain name (see WIPO Overview 3.0, section 1.9). In the Panel’s view, this a clear case of “typosquatting” because the Respondent takes advantage of possible misspellings by Internet users who are unaware of the fact that they have typed the Complainant’s trademark incorrectly in the Internet browser. It is the same with persons receiving emails from the Respondent where the disputed domain name forms part of the email address. The recipients of such emails could easily oversee the little typo in the disputed domain name and believe that the sender is the Complainant while this is not the case (see, for instance, Sanofi v. Domains By Proxy, LLC / Domain admin,WIPO Case No. D2013-0368; Edmunds.com, Inc. v. Triple E Holdings Limited,WIPO Case No. D2006-1095. In addition, the generic Top-Level Domain (“gTLD”) “.com” in the disputed domain name does not affect the determination that the disputed domain name is identical or confusingly similar to the Complainant’s trademark HALLIBURTON in which the Complainant has rights (see also Compagnie Générale des Etablissements Michelin v. Trendimg,WIPO Case No. D2010-0484; Köstrizer Schwarzbierbrauerei v. Macros-Telekom Corp.,WIPO Case No. D2001-0936; and Laboratoire Pharmafarm (SAS) v. M. Sivaramakrishan,WIPO Case No. D2001-0615, and cases cited therein). It is well-established that gTLDs such as “.com” are generally disregarded when determining if there is identity or confusing similarity. For all these reasons, the Panel finds that the Complainant has fulfilled the first element under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests Based on the submissions and materials filed in this case, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name. It is the consensus view of UDRP panels that once the complainant has made out a prima facie showing on this element, the burden of production shifts to the respondent (see section 2.1 of the WIPO Overview 3.0); Ustream.TV, Inc. v. Vertical Axis, Inc,WIPO Case No. D2008-0598; mVisible Technologies, Inc v. Navigation Catalyst Systems, Inc.,WIPO Case No. D2007-1141; and Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415. The Respondent has not provided any evidence of circumstances specified in paragraph 4(c) of the Policy or of any other circumstances giving rise to a right to or legitimate interest in the disputed domain name. Specifically, the Panel finds no evidence that the Respondent has been or is commonly known by the disputed domain name. The Respondent is neither affiliated with the Complainant nor has a license to use its trademark. The Respondent has also not provided the Panel with any substantial explanations as to the Respondent’s rights or legitimate interests in the disputed domain name. The disputed domain name formed part of an email address, which the Respondent has apparently used for an identity theft. The Respondent used this email account to contact an employee of the Complainant where allegedly the Complainant’s executive asked him to perform a task. The recipient of this email should believe that he received an email from his superior while this was in fact not the case. Such behaviour can never constitute a bona fide or legitimate use of the disputed domain name (see WIPO Overview 3.0, section 2.13). Therefore, the Panel is convinced that the only reason for the Respondent to register the disputed domain name was, on balance, to capitalize on the Complainant’s goodwill and to use it for bad faith purposes. In addition, searches for the term HALLIBURTON in a search engine such as Google revealed the Complainant’s services in a prominent manner. The Panel is therefore convinced that the Respondent was aware of the Complainant when it registered the disputed domain name and the Panel can find no plausible circumstances in which the Respondent could legitimately use the disputed domain name (see also Microsoft Corporation v. Superkay Worldwide, Inc.,WIPO Case No. D2004-0071). For all these reasons, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name and therefore, the requirement of paragraph 4(a)(ii) of the Policy is met. C. Registered and Used in Bad Faith The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. The Policy, paragraph 4(b) sets forth four non-exclusive circumstances, which evidence bad faith registration and use of a domain name: (i) circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; or (ii) the Respondent has registered the disputed 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; or (iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 its website or location or of a product or service on its website or location. The Panel finds that the Respondent must have been aware of the Complainant’s trademark and its products and services when it registered the disputed domain name. The Complainant has a strong presence in the Internet. Had the Respondent carried out even a basic search in search engines such as Google or Bing, he would have found a number of references to the Complainant in a prominent manner on the first pages of the respective search engine’s report. Therefore, the Panel is convinced that the Respondent was aware of the Complainant when he registered the disputed domain name. The Panel finds further, that the Respondent is also using the disputed domain name in bad faith. The Respondent used the disputed domain name as part of an email address from which he sent an email to an employee of the Complainant. In this context he abused the name of the Complainant’s executive as sender of this email. Given the fact that disputed domain name as part of the email address looked almost identical from a visual point of view, there was serious risk that the recipient of this email could oversee this little difference when receiving many emails during daily routine in the office. The purpose of this email could have been, for instance, to obtain illegally certain internal information of the Complainant, such as sensitive financial data, and use it for the Respondent’s commercial purposes. Therefore, the Panel is convinced that the Respondent registered and used the disputed domain name to capitalize on or otherwise take unfair advantage of the Complainant’s trademark rights, in furtherance of a scheme of identity theft and fraud sought to be perpetrated on the Complainant. There is a further element which is relevant in the resolution of this dispute. Searches of the Panel revealed more than 20 cases where the Respondent was involved and where the panels of the cases found bad faith. In most of the cases, the Respondent showed the same behavior, namely registering slight variations of third party trademarks which look like typos of these trademarks, for instance, Accenture Global Services Limited v. Cimpress Schweiz GmbH,WIPO Case No. D2019-2307 with regard to the domain name Hence, the Panel is convinced that the Respondent has shown a pattern of registering domain names incorporating the marks of third parties and therefore, the Respondent has a history of registering and using domain names in bad faith. Given all the facts and circumstances of this case, the Panel finds that the disputed domain name was registered and is being used 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 Christian Schalk
Sole Panelist
Date: March 28, 2020
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