The Complainant is The Depository Trust & Clearing Corporation, United States of America (“United States”), represented by Day Pitney LLP, United States.
The Respondent is Domain Administrator, See PrivacyGuardian.org, United States / Daniel St. Pierre, Weblogistics Inc., Bahamas. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 11, 2020. On September 14, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 14, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 16, 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 September 21, 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 September 23, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 13, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 21, 2020. The Center appointed Gareth Dickson as the sole panelist in this matter on November 9, 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 provider of post-trade services to the global financial community under the trade mark DTCC (the “Mark”). The Complainant is the owner of a number of trade mark registrations around the world for, or incorporating, the Mark, including the following registrations in the United States: - Trade mark registration number 2593532, registered on July 16, 2002; The disputed domain name was registered on May 20, 2019. It currently does not point to any active website but is being used by the Respondent to send emails which impersonate the Complainant and invite recipients to engage with the Respondent in correspondence about the redemption of shares. 5. Parties’ Contentions A. Complainant The Complainant argues that it has rights in the Mark by virtue of its ownership of various trade mark registrations around the world and in particular in the United States. It contends that the disputed domain name is confusingly similar to the Mark since it is comprised solely of the Mark, combined with the generic Top-Level Domain (“gTLD”) “.online”. The Complainant confirms that the disputed domain name was registered by the Respondent without its permission and that the Respondent is not a licensee of the Complainant. It alleges that the Respondent has been using the disputed domain name to further a fraud, writing to Internet users, including customers of the Complainant, while imitating the Complainant, and trying to persuade those customers to send the Respondent their bank details. In support of this allegation, the Complainant has provided documents showing an email which will appear to most recipients as having come from a domain name belonging to the Complainant, but which in fact has been sent using the disputed domain name (the Respondent having merely “masked” that domain name in the header of the emails). The Complainant also provides evidence that the Mark is used by the Respondent in the signature block of those emails and in attachments to it as well. Together, says the Complainant, this shows that the Respondent intends to confuse recipients of these emails as to their origin and to trick them into believing that they are corresponding with the Complainant, contrary to the fact. The Complainant alleges that online service providers have suspended services to the Respondent as a result of these emails, and that this merely prompts the Respondent to migrate the disputed domain name to a new service provider in order to continue, rather than to correct, its deceptive conduct. The Complainant submits that there is no evidence to suggest that the Respondent has been commonly known by the disputed domain name; is making, or intends to make, a legitimate noncommercial or fair use of it; or has ever used or demonstrated preparations to use it in connection with a bona fide offering of goods or services. The Complainant also submits that the Respondent must have known of the Complainant and the Mark when it registered the disputed domain name. The Respondent’s own use of the Mark in the disputed domain name to send emails impersonating the Complainant, including attachments which display the Complainant’s trade mark, further confirms that the Respondent knew of the Mark and the Complainant’s interest in it when it registered the disputed domain name and that it registered it in bad faith. The Complainant argues that the use of a domain name for per se illegal activity is manifest evidence of bad faith use of the disputed domain name, as is the Respondent’s use of a privacy service to conceal its identity. Together, the Complainant submits that the Respondent is using the disputed domain name in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, the Complainant bears the burden of proving that: - the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; These criteria are cumulative. The failure of the Complainant to prove any one of these elements means the Complaint must be denied. A. Identical or Confusingly Similar The Panel accepts that the Complainant is the owner of, and therefore has rights in, the Mark. Section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) provides that the first element test “typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name”. The Panel therefore finds that the disputed domain name is confusingly similar to the Mark, since the Mark is recognisable within the disputed domain name: indeed, the disputed domain name is comprised solely of the Mark. The addition of the gTLD “.online” does not alter this conclusion. Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights. B. Rights or Legitimate Interests Although a complainant is required to demonstrate that a respondent has no rights or legitimate interests in respect of the domain name, as explained in section 2.1 of the WIPO Overview 3.0, the consensus view of previous UDRP panels is that where a complainant establishes a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. In the current proceeding, the Complainant has established its prima facie case. The Complainant states that it has not given the Respondent permission to use the Mark, in a domain name or otherwise, and submits that the Respondent has not been commonly known by the disputed domain name. There is no evidence that the Respondent has acquired any common law rights to use the Mark, is commonly known by the Mark or has chosen to use the Mark in the disputed domain name in any descriptive manner or is making any use of the disputed domain name that would establish rights or legitimate interests as a result of a noncommercial or fair use of it. Furthermore, the use of the disputed domain name to send emails which imitate the Complainant and seek, through deception, to engage the recipient in discussions about redemption of shareholders and financial transactions does not constitute a bona fide sale of goods or services or a legitimate noncommercial or fair use within the meaning of the Policy. Section 2.13.1 of the WIPO Overview 3.0 states that: “Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent”. Although the Complainant has not provided conclusive evidence of what the Respondent asks recipients of its emails to do if they take the bait by replying to the Respondent, the evidence which is provided leaves no room for doubt about the male fides of the Respondent and its lack of legitimate interests in respect of the disputed domain name. By not participating in these proceedings, the Respondent has failed to refute the Complainant’s prima facie case that it has met its burden under the second UDRP element. As clearly stated in section 2.1 of the WIPO Overview 3.0, “a panel’s assessment will normally be made on the basis of the evidence presented in the complaint and any filed response. The panel may draw inferences from the absence of a response as it considers appropriate, but will weigh all available evidence irrespective of whether a response is filed”. Having reviewed and weighed the available evidence, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith The Panel notes that the disputed domain name was registered many years after the Mark was registered and accepts the overwhelming evidence that the disputed domain name was chosen by reference to the Mark. As a result, and in the absence of evidence from the Respondent that the similarity of the disputed domain name to the Mark is coincidental or permitted, the Panel must conclude that the Respondent knew of the Complainant’s rights in the Mark when it registered the disputed domain name, and that it registered it in bad faith since it attempted to appropriate for the Respondent, without the consent or authorisation of the Complainant, rights in the Complainant’s Mark. The disputed domain name is also being used in bad faith. Section 3.1.4 of the WIPO Overview 3.0 states: “[…] given that the use of a domain name for per se illegitimate activity such as the sale of counterfeit goods or phishing can never confer rights or legitimate interests on a respondent, such behavior is manifestly considered evidence of bad faith”. Although as described above there is no concrete evidence of the requests the Respondent makes of those who respond to its deceptive emails, the evidence that is provided is strong enough to show that the Respondent’s use of the disputed domain name is illegitimate and therefore in bad faith. Furthermore, the Respondent has not sought to explain its registration and use of the disputed domain name, has attempted to conceal its identity, and has not participated in these proceedings. There is also no conceivable use of the disputed domain name by the Respondent that would not be illegitimate and there is no basis for the Panel to conclude that the Respondent’s use of the disputed domain name is justified. Therefore, and on the basis of the information available to it, the Panel must, and does, find that the Respondent’s use of the disputed domain name is without justification and is inconsistent with the Complainant’s exclusive rights in the Mark. Consideration of these and other factors militates in favour of a finding of bad faith. The Panel finds that the Respondent has registered and is using the disputed domain name 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 disputed domain name, Gareth Dickson
- Trade mark registration number 5309424, registered on October 17, 2017; and
- Trade mark registration number 5309457, registered on October 17, 2017.
-the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
Sole Panelist
Date: November 23, 2020
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