The Complainant is Wärtsilä Technology Oy Ab, Finland, represented by SafeNames Ltd., United Kingdom.
The Respondent is Hassan Sama, United States of America (“United States”). 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 31, 2020. On March 31, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 1, 2020, 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 April 7, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 27, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 30, 2020. The Center appointed Miguel B. O’Farrell as the sole panelist in this matter on May 7, 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 is a Finnish corporation which operates in the field of smart technologies and complete life cycle solutions for the marine and energy markets. The Complainant, its affiliates, subsidiaries and associated companies own trademarks for the WÄRTSILÄ/WARTSILA mark in different jurisdictions. Several of the Complainant’s trademark registrations are listed below: WÄRTSILÄ, International, No.1005789 registered on May 22, 2009, in classes 7, 9, 11, 12, 35, 37, 41, 42, designating multiple jurisdictions, including the United States, where the Respondent resides; WÄRTSILÄ, United States, No.2078313 registered on July 15, 1997, in class 7; WÄRTSILÄ, European Union, No.000838466 registered on February 21, 2000, in classes 7, 12, 37; WÄRTSILÄ, European Union, No. 008304149 registered on November 25, 2009, in classes 7, 9, 11, 12, 35, 37, 41, 42; and WARTSILA, European Union, No. 011765294 registered on September 18, 2013, in classes13 7, 9, 11, 12, 35, 37, 41, 42. From its main website at “www.wartsila.com” the Complainant advertises its products and services, in addition to promoting its WÄRTSILÄ/WARTSILA mark globally. The Complainant holds a portfolio of many active domain name registrations incorporating the Complainant’s mark with country code Top-Level Domain (“ccTLD”) extensions as well as registrations with generic Top-Level Domain (“gTLD”) extensions, such as The disputed domain name The Complainant submits that it has developed substantial goodwill and recognition over its 180-year history, operating in over 200 locations across more than 80 countries, with approximately 19,000 employees. Its earliest above-mentioned trademark registrations predate the registration of the disputed domain name by over 20 years. In summary, the Complainant claims that the disputed domain name is confusingly similar with the trademark in which the Complainant has rights; that the Respondent has no rights or legitimate interests in respect of the disputed domain name, which was registered and is being used in bad faith. More specifically, the Respondent has not been licensed by the Complainant to use domain names featuring the WARTSILA trademark and that none of the circumstances of paragraph 4(c) of the Policy (under which the Respondent may demonstrate legitimate interests in the disputed domain name) apply in this case. The Respondent has engaged in the severest form of phishing (often referred to as “spear fishing”) by specifically addressing and tailoring its communications to the Complainant’s clients. The Complainant further submits that it sent a takedown request to the registrar on March 12, 2020, as a result of which the disputed domain name was suspended by the registrar approximately 80 minutes later. The Respondent has used the disputed domain name to encourage the Complainant’s clients to pay an invoice to a bank account presumably controlled by the Respondent. Therefore, there is no doubt that the Respondent has incurred in deceptive practices with a view to making a commercial gain. The Complainant submits that the Respondent has previously engaged in a pattern of trademark-abusive domain names registrations preventing other registrants from reflecting their marks and is the owner of typographical error variations of various brands, for instance Finally, the Complainant requests that the Panel order the transfer of the disputed domain name to the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the disputed domain name, the Complainant must prove each of the following, namely that: (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 respect of the disputed domain name; and (iii) the disputed domain name was registered and is being used in bad faith. A. Identical or Confusingly Similar The Panel is satisfied that the Complainant has proved that it has rights in the trademark WÄRTSILÄ/WARTSILA. As set forth in section 1.7 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) the standing test for confusing similarity involves a reasoned but relatively straightforward comparison between the trademark and the disputed domain name to determine whether the domain name is confusingly similar with the trademark. The test involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name. The Panel considers that the disputed domain name The Panel considers that such differences are the result of a fine typosquatting and certainly do not suffice to avoid a finding of confusing similarity between the disputed domain name and the Complainant’s trademark. For the purposes of assessing identity or confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the Top-Level Domain (“TLD”) as it is viewed as a standard registration requirement (section 1.11.1 of WIPO Overview 3.0). Thus, for the test for confusing similarity of this first prong the Panel shall disregard the “.com” included in the disputed domain name. The Panel finds that the disputed domain name is confusingly similar with the trademark WARTSILA in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled. B. Rights or Legitimate Interests Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following: (i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or (iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers. Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established, as it is put in section 2.1 of WIPO Overview 3.0, that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such prima facie case is made, the burden of production 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. As sustained by the Complainant, there is no evidence in the present case that the Respondent has been commonly known by the disputed domain name, enabling it to establish rights or legitimate interests in the disputed domain name Furthermore, there is no evidence in the file to prove any of the circumstances mentioned in paragraph 4(c) of the Policy, nor any other to prove that the Respondent has legitimate interests or that it has established rights in the disputed domain name. Likewise, and as further discussed under section 6.C of this decision, it does not seem that the Respondent is making any legitimate noncommercial or fair use of the disputed domain name – which is confusingly similar with the Complainant’s above-mentioned trademarks – but rather that it intends to use the disputed domain name for the purpose of deriving unfair monitory advantage by confusing Internet users and leading them to believe that the site to which the disputed domain name relates is the official site of the Complainant. The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the disputed domain name (Telstra Corp. Ltd. V. Nuclear Marshmallows,WIPO Case No. D2000-0003). The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name and that the requirements of paragraph 4(a)(ii) of the Policy have been fulfilled. C. Registered and Used in Bad Faith To succeed under the Policy, a complainant must show that the disputed domain name has been both registered and used in bad faith. It is a double requirement. The Panel is satisfied that the Respondent must have been aware of the Complainant’ business and its trademark WARTSILA when it registered the disputed domain name The Respondent when registering the disputed domain name The Complainant has proved that the Respondent has used the disputed domain name to encourage the Complainant’s client to make payment of an invoice to a bank account presumably controlled by the Respondent. In similar circumstances the panel said: “The fact that the Respondent used the disputed domain name to create a business email account and sent a phishing email to the Complainant’s customers indicates not only that the Respondent had prior knowledge about the Complainant’s business and trademark, but also that it registered the disputed domain name with the aim of fraudulently obtaining monies by creating likelihood of confusion with the Complainant’s trademark.” (PwC Business Trust and Price Waterhouse Coopers LLP / Sarah Wakida,WIPO Case No. D2020-0232). The Panel finds that the Respondent has registered and uses the disputed domain intentionally to attempt to attract for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement. This amounts to bad faith under paragraph 4(b)(iv) of the Policy. 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 Miguel B. O’Farrell
Sole Panelist
Date: May 21, 2020
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