The Complainant is BDR Thermea Group B.V., Netherlands, represented by SafeNames Ltd., United Kingdom.
The Respondent is [Name Redacted], Domain Privacy, China, Komatsu, Canada, Nice IT Services Group Inc., Dominica, BDR Thermea Group, Canada. 2. The Domain Names and Registrars
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 24, 2020. On June 24, 2020, and June 29, 2020, the Center transmitted by email to the Registrars the request for registrar verification in connection with the disputed domain names. On June 24, 2020, June 25, 2020 and June 30, 2020, the Registrars transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 25, 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 the amended Complaint on June 26, 2020 adding the disputed domain name The Center verified that the Complaint together with the amended Complaints (hereinafter named all together as 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 July 3, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 23, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 24, 2020. The Center appointed Evan D. Brown as the sole panelist in this matter on August 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 The Complainant is in the business of providing goods and services relating to heating and cooling. It has business locations in many countries around the world and owns several trademark registrations for the mark BDR THERMEA, including Benelux Registration No. 0870955, registered on January 11, 2010, and Canadian Registration No. TMA840476, registered on January 17, 2013. The disputed domain names were registered on the following dates: The Complainant claims that the Respondents have used at least three of the disputed domain names to perpetrate fraud against the members of the public. The Complainant has submitted evidence that the Respondents have sent email messages using at least three of the disputed domain names to individuals working in companies, approaching them for a partnership opportunity, pretending to be the Complainant. Though the Complainant does not have direct evidence that the other disputed domain name is being used for fraudulent email, it has provided evidence (discussed below) that the fourth disputed domain name is under common control with the other three, and notes that the disputed domain name is set up with an MX records, indicating it is likewise used for email purposes. 5. Parties’ Contentions A. Complainant The Complainant contends that the disputed domain names are identical or confusingly similar to the Complainant’s trademark; that the Respondents have no rights or legitimate interests in respect of the disputed domain names; and, that the disputed domain names were registered and are being used in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Consolidation The Complainant requests that the action concerning all four domain name disputes be consolidated. The Panel grants the request. Paragraph 10(e) of the Rules states that a “Panel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules”. Paragraph 10(c) of the Rules provides, in relevant part, that “the Panel shall ensure that the administrative proceeding takes place with due expedition”. Section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) summarizes the consensus view of UDRP panels on the consolidation of multiple respondents and provides that where a complaint is filed against multiple respondents, panels consider whether the domain names or corresponding websites are subject to common control, and whether the consolidation would be fair and equitable to all parties. The record indicates the disputed domain names are under common control. Three of the disputed domain names, according to the Complainant, have been used for fraud (specifically an email phishing campaign) in a virtually identical manner. The record shows the email messages sent using these disputed domain names are similar in content and style which, in addition to the use of a common PDF file, suggests common ownership among the three disputed domain names. The fact that one of the disputed domain names was registered just days after one of the other disputed domain names was suspended is also indicative of common ownership. Two of the disputed domain names are also registered with the same registrar and are hosted on the same IP address. The Complainant links ownership and use of the disputed domain names together by demonstrating the common use of a purported fake “customer” in the email phishing campaign, associated with a particular additional domain name (not one of the disputed domain names). One of the disputed domain names uses the same IP address as this additional domain name. Finally, all four of the disputed domain names use the same or similar words, and were registered within a relatively short time frame. The Respondents have not presented any arguments as to why consolidation would be unfair or inequitable. Accordingly, conditions for proper consolidation of the four disputed domain names into one matter are present here. B. Request for Redaction One of the Respondents appears to have used the name of an officer of the Complainant when registering one of the disputed domain names. In light of the identity theft, the Panel has redacted the Respondent’s name corresponding to an officer of the Complainant 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 ASOS plc. v. Name Redacted,WIPO Case No. D2017-1520; Banco Bradesco S.A. v. FAST-12785241 Attn. Bradescourgente.net / Name Redacted,WIPO Case No. D2009-1788; Aquent LLC v. Registration Private, Domains By Proxy, LLC / Name Redacted,WIPO Case No. D2019-0689. C. Identical or Confusingly Similar The incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark. See Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505. In this case, the disputed domain names contains the Complainant’s trademark BDR THERMEA in its entirety (in some cases adding the word “group” or “groups”, to the trademark, which do not prevent a finding of the disputed domain names being identical or confusingly similar). A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. See Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen,WIPO Case No. D2014-0657. The Complainant has demonstrated its rights because it has shown that it is the owner of multiple valid and subsisting trademark registrations for the mark BDR THERMEA. Accordingly, the Panel finds that the Complainant has shown that the disputed domain names are identical or confusingly similar to a trademark in which the Complainant has rights. D. Rights or Legitimate Interests The Panel evaluates this element of the Policy by first looking to see whether the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. If the Complainant makes that showing, the burden of production to demonstrate rights or legitimate interests shifts to the Respondent. The Complainant has established, prima facie, that the Respondent lacks rights or legitimate interests in the disputed domain name. On this point, the Complainant asserts, among other things, that: - The Respondents do not have any trademark rights in the mark BDR THERMEA or any other terms used in the disputed domain names, nor has the Complainant granted any license to the Respondents to use the mark in a domain name. - The Respondents have not used the disputed domain names in connection with a bona fide offering of goods or services. Instead, the Respondents appear to have used the disputed domain names in connection with fraudulent email and related activity (which can never confer rights or legitimate interests on a respondent). - Concerning the one disputed domain name for which there is no evidence of use with fraudulent activity, there remains nonetheless a lack of any bona fide use. - The Respondents are not making a legitimate noncommercial or fair use of the disputed domain names. These facts make the Complainant’s prima facie showing. The Respondent has not provided any evidence to rebut this prima facie showing. In addition, the Panel notes the disputed domain names are identical or highly similar to the Complainant’s trademark, which carry a high risk of implied affiliation with the Complainant. The Panel finds that the Complainant has established this second element under the Policy. E. Registered and Used in Bad Faith The Policy requires the Complainant to establish that the disputed domain names were registered and are being used in bad faith. Based on the available record, the Panel finds that the Respondents registered and are using the disputed domain names in bad faith. Using the disputed domain names to send fraudulent email is a strong example of bad faith under the Policy. The passive holding of one of the disputed domain names does not prevent a finding of bad faith. Accordingly, the Complainant has satisfied this third element 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 names Evan D. Brown
Sole Panelist
Date: August 18, 2020
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