The Complainant is The Governor and Company of Adventurers of England Trading into Hudson’s Bay AKA Hudson’s Bay, United States of America (“United States”), represented by Loeb & Loeb, LLP, United States.
The Respondent is Registration Private, Domains By Proxy, LLC, United States / Peter Grant, Russian Federation. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 22, 2020. On July 22, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 23, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 23, 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 amendment to the Complaint on July 28, 2020. The Center verified that the Complaint together with the amendment to 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 August 3, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 23, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 24, 2020. The Center appointed Nicholas Smith as the sole panelist in this matter on August 28, 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 retail enterprise, initially incorporated in what was then England in 1670, that now is specialising in department stores and other retail operations in Canada. In the most recent fiscal year the Complainant’s revenue exceeded USD 3 billion and it presently operates over 300 stores and employs over 40,000 people. The Complainant holds trade mark registrations (in jurisdictions such as Canada, the United States and the European Union) for a mark containing the plain letters “hbc” (the “HBC Mark”) for various goods, with the Canadian trade mark registration dating from April 2, 2004 (Registration No. TMA606933). The Domain Name was registered on January 13, 2020. The Domain Name is presently inactive. The evidence in the Complaint is that the Domain Name has been used by the Respondent as an email address from which the Respondent sends emails purporting to be official emails from the Complainant to potential job applicants inviting them to apply (and thereby providing the Respondent with the applicant’s personal information and other details) for non-existent jobs with the Complainant. 5. Parties’ Contentions A. Complainant The Complainant makes the following contentions: (i) that the Domain Name is identical or confusingly similar to the Complainant’s HBC Mark; (ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith. The Complainant is the owner of the HBC Mark, having registered the HBC Mark in various jurisdictions. The Domain Name consists of the HBC Mark along with the addition of the generic abbreviation “hr” (short for “human resources”) and generic word “team”, which do not materially alter the overall impression of the Domain Name. There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Complainant has not granted any license or authorization for the Respondent to use the HBC Mark. The Respondent does not use the Domain Name for a bona fide purpose or legitimate noncommercial purpose. Rather, the Domain Name is used for emails impersonating the Complainant (phishing), which does not grant the Respondent rights or legitimate interests in the Domain Name. The Domain Name was registered and is being used in bad faith. The Domain Name is being used to create emails that impersonate the Complainant to exploit potential job applicants by encouraging them to apply for non-existent employment opportunities and thereby provide the Respondent with their personal information. This amounts to an attempt to perpetuate fraud. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark. The Complainant is the owner of the HBC Mark, having registrations for the HBC Mark as a trade mark in various jurisdictions, including Canada, the United States and the European Union. The Domain Name consists of the HBC Mark along with the additional descriptive words/abbreviations “hr” and “team”. The addition of a descriptive term to a complainant’s mark does not dispel confusing similarity, see Wal-Mart Stores, Inc. v. Henry Chan,WIPO Case No. D2004-0056. Moreover, an individual viewing the Domain Name may be confused into thinking that the Domain Name would refer to a site in some way connected to the Complainant. Noting the manner in which the Domain Name has been used, this was clearly the intention of the Respondent. The Panel finds that the Domain Name is confusingly similar to the Complainant’s HBC Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name. Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name: “Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii): (i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or (iii) you are making legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.” The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the HBC Mark or a mark similar to the HBC Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial use. Rather, it appears from the evidence submitted by the Complainant that the Respondent has used the Domain Name to send emails passing itself off as the Complainant to prospective job applicants, encouraging them to apply for non-existent employment opportunities with the Complainant and thereby providing the Respondent with the prospective applicant’s personal information and other details. Such conduct is fraudulent and is not a bona fide offering of goods or services. The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has had an opportunity to rebut the prima facie case that it lacks rights or legitimate interests but has chosen not to do so. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith (Policy, paragraph 4(b)): (i) circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name to the Complainant who is the owners of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or (ii) the Respondent has registered the Domain Name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or (iii) the Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location. The Panel finds that the Respondent was aware of the Complainant at the time the Domain Name was registered. The Domain Name has been used to create an email account from which the Respondent sent emails purporting to be emails from the Complainant. The Respondent does not provide, nor is it apparent to the Panel, any reason why the Domain Name was registered other than by reference to the Complainant. The registration of the Domain Name in awareness of the Complainant and its rights in the HBC Mark and in the absence of rights or legitimate interests amounts to registration in bad faith. The Respondent is using the Domain Name to send emails seeking to mislead recipients as to the identity of the sender for its own commercial gain. Such conduct is deceptive, illegal, and in previous UDRP decisions has been found to be evidence of registration and use in bad faith, see The Coca-Cola Company v. Marcus Steiner,WIPO Case No. D2012-1804. The Panel finds that the Respondent is using the Domain Name in bad faith. Accordingly, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith under paragraph 4(a)(iii) 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 Domain Name Nicholas Smith
Sole Panelist
Date: August 30, 2020
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