The Complainant is Umicore, Belgium, represented by Gevers Legal NV, Belgium.
The Respondents are Harold Gasa, South Africa; John Conradie, Namibia; and, Thandeka Zuma, South Africa. 2. The Domain Names and Registrars
The disputed domain names The disputed domain name The disputed domain name The disputed domain name The disputed domain names are collectively hereinafter referred to as the “Domain Names”. Further, the above-referenced Registrars will be referred to hereinafter as the “Registrars”. 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 18, 2020. On June 18, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain names 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 Respondents of the Complaint, and the proceedings commenced on June 26, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 16, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 5, 2020. The Center appointed Willem J. H. Leppink as the sole panelist in this matter on August 11, 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. On July 20, 2020, the Center received an email request from the Complainant, requesting permission to amend the Complaint with the addition of a further domain name In its Panel Order No. 1 of August 25, 2020, the Panel noted that the revealed registrant, Harold Gasa, is the same registrant for the domain names On August 24, 2020, the Center received an email request from the Complainant requesting permission to amend the Complaint with the addition of a further domain name, Accordingly, the Panel requested the Center to send an email to the concerned Registrar, PDR Ltd. d/b/a PublicDomainRegistry.com, requesting registrar verification in relation to the domain name On August 26, 2020, PDR Ltd. d/b/a PublicDomainRegistry.com transmitted by email to the Center its verification response confirming that the registrant of the domain name In its Panel Order No. 2 of August 27, 2020, the Panel noted that the revealed registrant details indicated some similarities with at least the domain name On September 1, 2020, the Complainant submitted an amended consolidated Complaint. The Respondents were given until September 10, 2020, to submit a Response, if any. The Respondents did not submit any Response. 4. Factual Background The Complainant is Umicore, headquartered in Belgium. The Complainant is a global materials technology and recycling group, with more than 10,000 employees and a turnover of EUR 10.4 billion. The Complaints activities are carried out through offices located across Europe, North America, Asia, and Africa. The Complainant owns numerous trademark registrations worldwide including the word element UMICORE: - International Trademark Registration No.1400844 for UMICORE (designating amongst others the European Union and the United States of America), registered on November 27, 2017; and - United States Trademark Registration No. 2996277 for UMICORE, registered on September 20, 2005; (hereinafter also referred to in singular as the “Trademark”). The Domain Names were registered between April 12, 2020 and August 10, 2020. At the time of filing the Complaint, the Domain Names did not resolve to active websites. 5. Parties’ Contentions A. Complainant The Complainant contends the following. The Domain Names are confusingly similar to the Trademark. The Domain Names incorporate the Trademark in its entirety as its leading element. This identical element is followed by a descriptive term such as “group”, “global(s)”, “supply chain(s)”, or “project(s)”, which can respectively refer to the companies of the Complainant or to some of its services. In addition, the suffix “.com” does not generally affect the analysis under the first element of the Policy for the purpose of determining whether a domain name is identical or confusingly similar. Therefore, the Domain Names are highly similar to the Trademark. The Respondent has no rights or legitimate interests in respect of the Domain Names. The Respondent is not authorized or permitted to use the Trademark, nor is the Respondent associated with the Complainant. Furthermore, the Respondent is not using the Domain Names in connection with a bona fide offering of goods and services. The Respondent is in fact engaged in a fraudulent scheme and already uses most of the Domain Names for sending fraudulent emails in which the Complainant is impersonated. The two domain names that were added to the Complaint consist of the same naming pattern and seem to be under common control. The Respondent is therefore likely to also use these two additional domain names for its fraudulent activities. The Domain Names were registered and are being used in bad faith. The Complainant is globally well-known. The Domain Names were registered many years after the highly distinctive Trademark was first registered. The Respondent must have been well aware of the Complainant and its rights and seeks to mislead the Complainant’s potential customers and business partners by creating a misleading impression of association with the Complainant. The Complainant provided several documents which demonstrated the Respondent’s fraudulent attempts for commercial gain. Recently, the messaging service related to the additional domain names has been activated. As these additional domain names consist of the same naming pattern as the domain names that were initially included in the Complaint and seem to be under common control, the Respondent is likely to also use these additional domain names for its fraudulent attempts for commercial gain. B. Respondent The Respondents did not reply to the Complainant’s contentions. 6. Discussion and Findings Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements: (i) the Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) the Respondents have no rights or legitimate interests in respect of the Domain Names; and (iii) the Domain Names have been registered and are being used in bad faith. Preliminary Procedural Issue: Consolidation of Multiple Domain Names and Respondents WIPO Overview 3.0, section 4.11.2, addresses the issue of whether one proceeding can be brought against multiple respondents. It suggests that where a complaint is brought against more than one “respondent”, the question is whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. To determine whether such consolidation is appropriate, Panels have considered a range of factors, such as the nature of the marks at issue, any naming patterns in de disputed domain names and any (prior) pattern of similar respondent behavior. The Domain Names all consist of the Trademark, which – on the basis of the facts before the Panel – is considered well known and distinctive, along with a descriptive term in singular or plural. Furthermore, and of greater importance, the Complainant provided evidence that identical fraudulent emails were sent from email addresses linked to the Domain Names, owned by the Respondents. The nature of the mark, the naming patterns, and the pattern of behavior of the Respondents is highly similar. Therefore, the Panel finds it appropriate to consolidate the Complaint against multiple Respondents as the circumstances in this case strongly indicate that the Domain Names are subject to common control and that the consolidation would be fair and equitable to all parties. The Panel will in light of the foregoing consider the Respondents as one Respondent and thus will continue to refer to these as “Respondent” in singular. A. Identical or Confusingly Similar The Complainant must demonstrate that it has rights in a trademark and, if so, the Domain Names must be shown to be identical or confusingly similar to the Trademark. The Complainant has shown that it has rights in the Trademark. In accordance with WIPO Overview 3.0, section 1.7, the first element functions primarily as a standing requirement. The threshold test for confusing similarity between the Domain Names and the Trademark involves a relatively straightforward comparison. In light of the foregoing, the Panel finds that the Domain Names are confusingly similar to the Trademark. The Domain Names consist of the element “umicore”, which is identical to the Trademark, and are accompanied by a descriptive term. As the Domain Names incorporate the Trademark in its entirety, the addition of this descriptive term does not prevent a finding of confusing similarity. In addition, with regard to the suffix “.com” it does not generally affect the analysis under the first element of the Policy for the purpose of determining whether a domain name is identical or confusingly similar; indeed, the suffix is a necessary component of a domain name and does not give any distinctiveness. Thus, the Panel finds that the Domain Names are confusingly similar to the Trademark. For all the foregoing reasons, the Panel is satisfied that the first element of the Policy is met. B. Rights or Legitimate Interests The Respondent did not reply to the Complainant’s contentions. For that reason, the Panel has taken careful note of the factual assertions that have been made and supported by evidence provided by the Complainant. In particular, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has rights or legitimate interests in the Domain Names, such as: (i) use or preparation to use the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services prior to notice of the dispute; or (ii) being commonly known by the Domain Names (as an individual, business or other organization) even if the Respondent has not acquired any trademark or service mark rights; or (iii) making legitimate noncommercial or fair use of the Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. There is no evidence in the case file that the Respondent has any rights or legitimate interests in the Domain Names. The Respondent does not appear to be affiliated with the Complainant in any way. There is no evidence that the Respondent is commonly known as “umicore”. There is also no evidence that the Respondent is, or has ever been, a licensee of the Complainant or that the Respondent has ever been permitted by the Complainant to register or use the Trademark. The Respondent did not demonstrate any use or demonstrable preparation to use the Domain Names in connection with a bona fide offering of goods or services. In fact, the Respondent uses the Domain Names to impersonate the Complainant by using the email addresses related to the Domain Names. By impersonating the Complainant, the Respondent induces the Complainant’s (potential) clients and business relations to provide personal financial information, which information can be used in fraudulent activities conducted by the Respondent. This fraudulent use by the Respondent cannot be considered a bona fide offering of goods or services nor a legitimate non-commercial or fair use of the Domain Names (Koole Tanktransport B.V. v. Domains By Proxy, LLC / Export Department,WIPO Case No. DNL2016-0034). Finally, given the circumstances of this case, the Panel finds that the Respondent’s lack of rights or legitimate interests in the Domain Names may also be inferred by the fact that no response was filed by the Respondent. According to earlier UDRP panels, “non-response is indicative of a lack of interests inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights” (see GA Modefine S.A. and Giorgio Armani S.p.A. v. Yoon-Min Yang,WIPO Case No. D2005-0090; and, Pomellato S.p.A. v. Richard Tonetti,WIPO Case No. D2000-0493). Consequently, the Panel finds it established that the Respondent has no rights or legitimate interests in the Domain Names. The Complainant has thus established the second element of the Policy. C. Registered and Used in Bad Faith The Panel notes that the Trademark is, as are the activities of the Complainant, well known throughout the world. Furthermore, as the Respondent has sought to impersonate the Complainant, it is justified for the Panel to assume that the Respondent registered the Domain Names in full knowledge of the Complainant’s existence and rights, in order to create a misleading impression of affiliation with the Complainant. The Panel finds that the Respondent registered the Domain Names in bad faith. The Panel also finds that the Domain Names are being used in bad faith. The evidence submitted by the Complainant proves that the Domain Names are being used for illicit activities and potentially exposes Internet users to acts of financial fraud. Although the Complainant did not provide specific proof of actual illicit activity of the Additional domain names, the inherent risk exists that the Additional domain names will be used for phishing schemes as well. On this basis, the Panel finds that the Respondent intentionally attempts to attract, for commercial gain, Internet users to provide financial information, by creating a likelihood of confusion with the Trademark as to the source, sponsorship, affiliation, or endorsement of its email addresses, which constitutes registration and use in bad faith pursuant to paragraph 4(a)(iii) of the Policy. In light of the above circumstances, the Panel is satisfied that the third element of the Policy is met and that the Domain Names were registered and are 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 Domain Names The Panel, however, wishes to note that the Complainant after Panel appointment has twice requested to add a domain name to the Complaint. It is essential for the success of the alternative dispute resolution embodied in the UDRP that proceedings are kept as efficient as possible. In this particular situation in the Panel’s view, it may have been expedient for the Complainant to file an identical complaint for the additional domain names. Willem J. H. Leppink
Sole Panelist
Date: September 19, 2020
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