Complainant is RTI Surgical, Inc., United States of America (“United States”), represented by Holland & Knight, LLP, United States.
Respondent is Brent C Fisher, William D. Tressel, United States.1 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 15, 2020. On September 16, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 16, 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 17, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on September 26, 2020. The Center verified that the Complaint and 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 Respondent of the Complaint, and the proceedings commenced on September 29, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 19, 2020. Respondent did not submit any response. Accordingly, the Center notified the Parties of Respondent’s default on October 21, 2020. The Center appointed Ingrīda Kariņa-Bērziņa as the sole panelist in this matter on October 26, 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. The Panel issued Administrative Panel Procedural Order No. 1 requesting clarification of the remedy requested on October 27, 2020. Complainant responded on the same day, requesting that the remedy requested be amended to “transfer”, rather than “cancel” as stated in Section VII of the Complaint. The Panel will decide the case accordingly. 4. Factual Background Complainant is a United States company that designs and manufactures surgical implants. Complainant is the proprietor of the following trademarks: - United States trade mark registration No. 4742729 for RTI SURGICAL (word mark), registered on May 26, 2015 for goods and services in classes 5 and 44; - United States trade mark registration No. 4828563 for RTI SURGICAL (word mark), registered on October 6, 2015 for goods in class 10. The disputed domain name was registered by Respondent on March 15, 2020. It redirects to Complainant’s corporate website at “www.rtix.com”. The record contains copies of e-mails sent to third parties by Respondent using the disputed domain name, and a copy of a cease-and-desist letter sent by Complainant to Respondent on July 20, 2020. 5. Parties’ Contentions A. Complainant Under the first element, Complainant states that it is the proprietor of registrations for the RTI SURGICAL mark, and that Respondent has infringed said mark by registering the disputed domain name. Complainant has not authorized Respondent to use its trademark in a domain name or otherwise, and Respondent is not in any way affiliated with Complainant. Under the second element, Complainant states that there is no evidence of Respondent’s use of or demonstrable preparations to use the disputed domain name in connection with any bona fide offering of goods or services. Respondent is not making any legitimate noncommercial or fair use of the disputed domain name. Respondent has used the disputed domain name to generate emails in an attempt to defraud Complainant’s suppliers. Under the third element, Complainant states that Respondent has engaged in a fraudulent scheme whereby Respondent used the disputed domain name to generate emails to Complainant’s suppliers requesting the delivery of goods or, in other cases, requesting payment for goods allegedly ordered from by these suppliers. Respondent impersonated Complainant’s employees in these emails. Complainant requests transfer of the disputed domain name. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Given the facts in the case file and Respondent’s failure to file a response, the Panel accepts as true the contentions in the Complaint. Nevertheless, paragraph 4(a) of the UDRP requires Complainant to make out all three of the following: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) Respondent has registered and is using the disputed domain name in bad faith. A. Identical or Confusingly Similar Complainant has provided evidence establishing that it has trademark rights in the RTI SURGICAL mark through registrations in the United States, thereby satisfying the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1. In comparing Complainant’s RTI SURGICAL mark with the disputed domain name Section 1.7 of WIPO Overview 3.0 provides: “It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name.” It is the well-established view of UDRP panels that the addition of the generic Top-Level Domain (“gTLD”) “.com” to the disputed domain name does not prevent the disputed domain name from being confusingly similar to Complainant’s trademark (see WIPO Overview 3.0, section 1.11.1, and cases cited thereunder). Accordingly, the Panel finds that Complainant has established the first element under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following: (i) before any notice to it of the dispute, Respondent’s 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) Respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or (iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The circumstances stated in the Complaint and evidence in support set forth in the Annexes to the Complaint indicate that, at the time that Respondent registered the disputed domain name, Respondent had no rights or legitimate interests in the disputed domain name. The nature of the disputed domain name, which contains a near approximation of Complainant’s mark together with the dictionary term “inc”, cannot constitute fair use because Respondent thereby effectively impersonates or suggests sponsorship or endorsement by Complainant, the trademark owner. See WIPO Overview 3.0, section 2.5.1. The Panel finds that there is no evidence that Respondent is commonly known by the disputed domain name or is using the RTI SURGICAL mark with the permission of Complainant. The evidence in the record indicates the disputed domain name is used for a fraudulent scheme, which can never confer rights or legitimate interests on Respondent. See WIPO Overview 3.0, section 2.13.1. The Panel therefore finds that the evidence submitted by Complainant establishes a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Pursuant to WIPO Overview 3.0., section 2.1, and cases thereunder, where Complainant makes out a prima facie case that Respondent lacks rights or legitimate interests, the burden of production on this element shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. Respondent, in failing to file a response, has not submitted any evidence or arguments demonstrating such rights or legitimate interests, nor has it rebutted any of Complainant’s contentions. Accordingly, the Panel finds that Complainant has established the second element under paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the disputed domain name in bad faith: (i) circumstances indicating that Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or (ii) that Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or (iii) that Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or (iv) that by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location. The Panel finds bad faith registration and use under the Policy, paragraph 4(b)(iv). Complainant’s rights in the RTI SURGICAL mark predate by several years the registration of the disputed domain name. Due to the way in which the disputed domain name was used, it is not credible that Respondent was unaware of Complainant’s mark when it registered the disputed domain name. Indeed, Respondent has registered the disputed domain name specifically with the intention of impersonating Complainant. The Panel finds that such a registration creates a presumption of bad faith. See WIPO Overview 3.0, section 3.1.4, describing the types of evidence that may support a finding of bad faith. The Panel finds that Respondent has demonstrated bad faith use in using the disputed domain name for a fraudulent email scheme wherein Respondent impersonated Complainant by sending emails to Complainant’s suppliers in an attempt to induce them to ship goods or to render payment to Respondent. The disputed domain name redirects to Complainant’s corporate website, which, in the view of the Panel, is an action intended to conceal Respondent’s scheme. Such actions demonstrate bad faith. The Panel therefore finds that Complainant has established the third element under paragraph 4(a) 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 name Ingrīda Kariņa-Bērziņa 1 “Brent C Fisher” is the Registrar-confirmed registrant of the disputed domain name. According to the evidence submitted by Complainant, email communications sent from the disputed domain name identified “William D. Tressel” as the sender. For purposes of this decision, the Panel treats “Brent C Fisher” and “William D. Tressel” as Respondent.
Sole Panelist
Date: November 9, 2020
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