1.1 The Complainant is Tzitzit Holdings Ltd. of the British Virgin Isles, Overseas Territory of the United Kingdom represented by Hofstetter, Schurack & Partner, Germany.
1.2 The Respondent is Wickhams Cay, EuroHomeDirect, of the British Virgin Isles, Overseas Territory of the United Kingdom. 2. The Domain Name and Registrar
2.1 The disputed domain name 3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 15, 2020. On April 16, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 16, 2020, the Registrar transmitted by email to the Center its verification response providing registration and contact details for the Respondent. On April 21, 2020, the Complainant submitted an amendment to the Complaint along with additional annexes. 3.2 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”). 3.3 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 29, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 19, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 25, 2020. On May 27, 2020, the Center granted the Respondent a five day period in which to indicate whether it wishes to participate to this proceeding. The new date for Response was June 1, 2020. The Respondent did not submit any response. 3.4 The Center appointed Matthew S. Harris as the sole panelist in this matter on June 5, 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 4.1 The Complainant is a company based in the British Virgin Islands (the “BVI”). It would appear to be a company that holds intellectual property used by Instant Services (Hong Kong) Limited (“ISHK”). ISHK is a company incorporated in Hong Kong, China (“Hong Kong”) in September 2015. The Complainant describes ISHK as its “trading company” and although the Complainant is incorporated in the BVI, its business address is that same as that of ISHK registered address in Hong Kong. Further, the sole director of both companies is a Mr Kenny Sing Leung Tam. 4.2 ISHK has for a number of years been engaged in the business of selling kitchen appliances and home furnishings under the “EuroHomeDirect” name. This has been done through websites operating from the domain name 4.3 The Complainant is the owner of Hong Kong registered trade mark No. 305042259 for the word mark “EuroHomeDirect” in class 35, filed on August 30, 2019 and proceeding to registration on March 17, 2020. It is also the owner of Chinese registered trade mark No. 40721804 “EuroHomeDirect” in class 35, applied for on August 30, 2019 and proceeding to registration on April 28, 2020. It has also applied for similar trade marks in Singapore and the European Union. 4.4 The Domain Name was first registered on July 21, 2017. On April 7, 2020 it was transferred out of the Complainant’s control into that of the Respondent. The circumstances of that transfer are addressed later in this decision. 4.5 The true identity of the Respondent is not known. The registration details for the Domain Name record the “Registrant” as “Wickhams Cay”, but this is merely the name of an island in the BVI. Further, these details also record the “Registrant Org” as “EuroHomeDirect” and the address given is that of the Complainant. 4.6 Since transfer, the Complainant has engaged in correspondence with the previous registrar, GoDaddy, the Registrar and ICANN, contending that someone had attempted to hack the Complainant’s account on April 1, 2020 in order to transfer the Domain Name, that this first attempt had been unsuccessful, but that the hacker then was able to effect transfer on April 7, 2020. GoDaddy, the Registrar and ICANN, have either been unable or willing to facilitate the transfer of the Domain Name back to the Complainant. 4.7 Exactly how the Domain Name has been used since transfer is not entirely clear but at least some persons attempting to access the Complainant’s website through the Domain Name on April 1, 2020 would have seen a browser message warning that the website operating from the Domain Name might be impersonating “eurohomedirect.com” to steal personal or financial information. Since about April 7, 2020 no website could be reached through the Domain Name. 5. Parties’ Contentions A. Complainant 5.1 The Complainant claims that its domain name account was somehow hacked and as a consequence the Domain Name was stolen in April 2020. 5.2 The Complainant refers to its registered trade marks and applications and claims that the Domain Name is identical to those marks. It contends that the circumstances surrounding the transfer of the Domain Name are such that the Respondent has no right or legitimate interest in the Domain Name and that the Domain Name was registered and is being held in bad faith. In this respect it relies upon the decision in Adam Laneer Construction, Inc. v. Perfect Privacy, LLC / Soleio Cuervo, Rose Village LLC,WIPO Case No. D2019-2227. B. Respondent 5.3 The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 There are no exceptional circumstances within paragraph 5(f) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response. 6.2 Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects set out in paragraph 4(a) of the Policy. Namely, the Complainant must prove that: (i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and (ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and (iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)). 6.3 However, under paragraph 14(b) of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”. A. Identical or Confusingly Similar 6.4 The Complainant has demonstrated registered trade mark rights in the term “EuroHomeDirect” in the form of registered Chinese and Hong Kong trade marks. The Domain Name comprises that term combined with the “.com” Top-Level Domain. Given this, the trade mark is clearly recognisable in the Domain Name. It follows that the Domain Name is “confusingly similar” (as that term is understood under the Policy) to a trade mark in which the Complainant has rights. 6.5 For the reasons that it rehearsed previously in Philip Morris USA Inc. v. Marlboro Beverages / Vivek Singh,WIPO Case No. D2014-1398, the Panel considers this to be a case of confusing similarity, rather than identity, between the trade mark and the Domain Name. But whichever is the case makes no practical difference. Either way the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests and Registered and Used in Bad Faith 6.6 It is usual for panels under the Policy to consider the issues of rights or legitimate interests and registration and use in bad faith in turn. However, in this case it is more convenient to consider those issues together. 6.7 The Complainant characterises this as a case of theft of a Domain Name. The Panel accepts that the Complainant’s domain name account was somehow hacked and that as a consequence the Domain Name was wrested from the control of the Complainant. This is a serious allegation, but it is consistent with correspondence that the Complainant sent in order to try and retrieve the Domain Name and the fact that false contact details (being those of the Complainant) have been used by the Respondent. 6.8 It does not follow that just because a domain name has been “stolen”, the UDRP provides a mechanism of retrieval. The UDRP is not a process for determining issues of domain name ownership in abstract or policing or correcting general domain name related wrong-doing. A complainant must still satisfy the requirements of the Policy. Nevertheless, the Complainant is able to do this in this case with relative ease. 6.9 In this respect, it is difficult to see how a Respondent could have a right or legitimate interest in a Domain Name that it has acquired through hacking the account of the Complainant and the act of acquisition in this manner is compelling evidence that no such right or legitimate interest exists. 6.10 The manner in which the Domain Name was acquired also strongly supports a finding of registration and use in bad faith, particularly bearing in mind that the way that the Domain Name has been used to promote ISHK’s business under the Complainant’s EUROHOMEDIRECT mark prior to being stolen. 6.11 The Panel also accepts that a finding of a lack of a right or legitimate interest and a finding of bad faith registration and use would be consistent with the decision in Adam Laneer Construction, Inc. v. Perfect Privacy, LLC / Soleio Cuervo, Rose Village LLC,WIPO Case No. D2019-2227. 6.12 There is the additional factor in this case, that the Domain Name has been registered by the Respondent using not only false contact details so far as the Respondent is concerned, but what is effectively the Complainant’s own address. This suggests that the Respondent has sought at least to the Registrar to impersonate the Complainant. There is no right or legitimate interest in such impersonation and the registration and use of a domain name for such impersonation also suggests bad faith registration and use. 6.13 For all these reasons the Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(ii) and 4 (a)(iii) of the Policy. 7. Decision 7.1 For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name Matthew S. Harris
Sole Panelist
Date: June 11, 2020
Full & Egal Universal Law Academy