The Complainant is The Depository Trust & Clearing Corporation, United States of America (“United States”), represented by Day Pitney LLP, United States.
The Respondents are Domain Administrator, See PrivacyGuardian.org, United States / Shi Lei, China, and Xiaolei Wang, China. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 21, 2020. On July 22, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On July 22, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 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 August 10, 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 August 20, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 9, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 10, 2020. The Center appointed Willem J. H. Leppink as the sole panelist in this matter on September 15, 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 globally well-known provider of post-trade services to the global financial community. The Complainant provides a global platform of security transactions for over 40 years and processes over 100 million financial transactions daily under its DTCC trademark. The Complainant owns numerous well-known trademark registrations in multiple territories and jurisdictions, which include the word element DTCC as the dominant element, including China (Reg. Nos. 23412878, registered on April 7, 2018; 23412880, registered on March 28, 2018; and, 23412881, registered on April 28, 2018); European Union (Reg. No. 016190035, registered on August 9, 2017); Australia (Reg. No. 1821543, registered on January 23, 2017). These trademark registrations will also be referred to as the “Trademark”. The Domain Names were registered on May 12, 2020. At the time of filing of the Complaint, the domain names The following is a summary of the Complainant’s contentions. The Domain Names are confusingly similar to the Trademark. The Domain Names include the Trademark in its entirety, adding the pronoun “my” and the generic word “benefit(s)” with various misspellings. These additions to the Trademark do not sufficiently distinguish or differentiate the Domain Names from the Trademark. Instead, it further evidences the intention to mimic the Complainant’s Trademark as the terms “my” and “benefit” suggest that the Domain Names are connected with the Complainant’s own employee or health insurance plans. The Respondent has no rights or legitimate interest in the Domain Names. The Respondent is not authorized or permitted to use the Trademark, nor is the Respondent associated with the Complainant. The Respondent has not made any demonstrable preparations to use the Domain Names in connection with a legitimate, noncommercial fair use, but is instead using the Domain Names to advertise third-party health insurance services through pay-per-click advertising and to redirect users to install purported security add-ons to their web browsers, which may contain malware that can be used to perpetrate fraud. The Domain Names are registered and are being used in bad faith. The Respondent registered the Domain Names decades after the registration of the well-known Trademark. According to the Complainant, the Registrant did so with the bad faith intention of profiting off the Complainant’s reputation and goodwill in the global financial sector, namely by creating confusion and attract Internet users seeking the Complainant and the Complainant’s services to the Respondent’s advertisement-laden websites that presumably earn the Respondent a pay-per-click sum. The Complainant suspects that the Domain Names were registered in furtherance of a fraudulent scheme, which suspicion is supported by the creation of an active MX record which is clearly intended to mislead consumers or employees of the Complainant into believing that emails associated with the Domain Names are in fact affiliated with the Complainant, in furtherance of a fraud or phishing scheme. B. Respondent The Respondent 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 Respondent has 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. A. Preliminary Procedural Issue: Consolidation of Multiple Domain Names and Respondents WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“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 terms in singular or plural, with or without typos. The Domain Names were all registered on exactly the same date and using the same Registrar. A Reply on behalf of the respondents is lacking. 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. B. Identical or Confusingly Similar The Complainant must demonstrate that it has rights in a trademark or service mark and, if so, the Domain Names must be shown to be identical or confusingly similar to that mark. It is not disputed that the Complainant has rights in the Trademark. This satisfies the Panel that the Complainant has established that it owns registered trademark rights in DTCC for the purposes of the Policy. As set out in 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 “DTCC”, which is identical to the Trademark, and are accompanied by the pronoun “my” and the term “benefit(s)” with various misspellings. As the Domain Names incorporate the Trademark in its entirety, the addition of these additional terms does not prevent a finding of confusing similarity. C. 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 “DTCC”. 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 domain names Therefore, the Respondent is capitalizing on the reputation and the goodwill of the Trademarks. Therefore, these Domain Names are not used in connection with a bona fide offering of goods or services (see WIPO Overview 3.0, section 2.9). 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). Therefore, the Panel is satisfied that the second element of the Policy is met. D. 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. In the Panel’s view there is no other plausible explanation why the Respondent registered the Domain Names, other than the Respondent being aware of the Complainant and the Trademark and intending to trade off the goodwill and reputation associated with the Complainant. The domain name These uses support a finding of bad faith registration and use though their clear targeting of and use of the Trademark for commercial gain. Furthermore, as the Domain Names have active MX records, the Panel finds that the inherent risk exists that the Domain Names will be used for phishing schemes. On this basis, the Panel finds that the Respondent intentionally attempts to attract, for commercial gain, Internet users to its websites, 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 Willem J. H. Leppink
Sole Panelist
Date: September 29, 2020
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