The Complainant is Dycom Industries, Inc., United States of America (“United States”), represented by Shearman & Sterling LLP, United States.
The Respondent is Name Redacted.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 25, 2020. On September 28, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 28, 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 29, 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 29, 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 30, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 20, 2020. On October 2 and 12, 2020, the Center received email communications concerning an identity theft in this case. Accordingly, the Center informed the Parties of the latter on October 14, 2020 and proceeded to panel appointment on October 21, 2020. The Center appointed Lynda M. Braun as the sole panelist in this matter on November 2, 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 provides specialty contracting services to the telecommunications and infrastructure industries. The Complainant offers engineering, construction, maintenance, and installation services to telecommunications providers and electric and gas utilities, as well as underground facility locating services. The Complainant owns several trademarks, including, but not limited to: - DYCOM, 3193496, United States Reg. No. 3193496, registered on January 2, 2007 in International classes 37 and 42; and - DYCOM INDUSTRIES, INC., United States Reg. No. 5528888, registered on July 31, 2018 in International classes 37 and 42 (hereinafter collectively the “DYCOM Mark”). The Complainant owns the domain name The Respondent registered the Disputed Domain Name on August 17, 2020 and resolves to a webpage that shows that the Disputed Domain Name has been recently purchased and is not currently active. Further, the Respondent has been using the Disputed Domain Name to create fraudulent email addresses to impersonate the Complainant and members of the Complainant’s leadership team. The Respondent used the email address “[...]@dycomindi.com” to impersonate the Complainant and send phishing emails purportedly from the Complainant’s leadership team to impersonate the Complainant and deceive third parties in order to place fraudulent orders and apply for lines of credit for large purchases from third-party vendors in the Complainant’s name. 5. Parties’ Contentions A. Complainant The following are the Complainant’s contentions: - the Disputed Domain Name is confusingly similar to the Complainant’s trademark. - the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. - the Disputed Domain Name was registered and is being used in bad faith as part of a scheme in which the Respondent impersonates the Complainant to place orders and request lines of credit from the Complainant’s third-party vendors. - the Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied, to wit: (i) the Disputed Domain Name is 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 Disputed Domain Name; and (iii) the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark. The Panel concludes that the Disputed Domain Name is confusingly similar to the Complainant’s DYCOM Mark. It is uncontroverted that the Complainant has established rights in the DYCOM Mark based on its years of use as well as its federally registered trademarks for DYCOM and DYCOM INDUSTRIES, INC. The general rule is that “registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive”. See CWI, Inc. v. Domain Administrator c/o Dynadot,WIPO Case No. D2015-1734. The Respondent has not rebutted this presumption, and therefore the Panel finds that the Complainant has enforceable rights in the DYCOM Mark. The Disputed Domain Name consists of the entirety of the DYCOM Mark followed by “ind”, purportedly the abbreviation for “industries”, and the letter “i”, likely the abbreviation for “inc”. This is followed by the generic Top-Level Domain (“gTLD”) “.com”. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy despite the addition of a descriptive or dictionary term or abbreviation. See Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo,WIPO Case No. D2011-0795; see also Hoffmann-La Roche, Inc. v. Wei-Chun Hsia,WIPO Case No. D2008-0923. As stated in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”. Finally, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva,WIPO Case No. D2012-0182. Thus, the Disputed Domain Name is confusingly similar to the Complainant’s DYCOM Mark. Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant. B. Rights or Legitimate Interests Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name at issue. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1. In this case, the Panel finds that the Complainant has made out a prima facie case. In particular, the Respondent has not submitted any arguments or evidence to rebut the Complainant’s prima facie case and there is no evidence in the record that the Respondent is in any way associated with the Complainant. Furthermore, the Complainant has not authorized, licensed or otherwise permitted the Respondent to use its trademark. Finally, the name of the Respondent has no apparent connection to the Disputed Domain Name that would suggest it is related to a trademark or trade name in which the Respondent has rights. Instead, the Respondent is using the Disputed Domain Name solely for the purpose of perpetrating a fraud on the Complainant and its third-party vendors. “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.” WIPO Overview 3.0, section 2.13.1. The Respondent is using the Disputed Domain Name for fraudulent conduct, impersonation and passing off, and thus, the Panel finds that the Respondent does not have rights or legitimate interests in respect of the Disputed Domain Name. Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant. C. Registered and Used in Bad Faith The Panel finds that based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith registration and use of the Disputed Domain Name pursuant to paragraph 4(a)(iii) of the Policy. As demonstrated above, the Respondent used the Disputed Domain Name to impersonate the Complainant and perpetrate a fraudulent phishing scheme directed against the Complainant, a strong indication of bad faith. The Respondent’s scheme to send fraudulent emails purporting to come from the Complainant or its leadership team in order to make large purchases and apply for lines of credit from the Complainant’s unsuspecting third-party vendors evidences a clear intent to disrupt the Complainant’s business, deceive individuals, and trade off the Complainant’s goodwill by creating an unauthorized association between the Respondent and the Complainant’s DYCOM Mark. See Banco Bradesco S.A. v. Fernando Camacho Bohm,WIPO Case No. D2010-1552. Such conduct is emblematic of the Respondent’s bad faith registration and use of the Disputed Domain Name. “Panels have held that the use of a domain name for purposes other than to host a website may constitute bad faith. Such purposes include sending email, phishing, identity theft, or malware distribution […] Many such cases involve the respondent’s use of the domain name to send deceptive emails, e.g., to obtain sensitive or confidential personal information from prospective job applicants, or to solicit payment of fraudulent invoices by the complainant’s actual or prospective customers”, WIPO Overview 3.0, section 3.4. Moreover, the registration of a domain name that is confusingly similar to a trademark by an entity that has no relationship to that mark, as in this case, may be suggestive of opportunistic bad faith. See Ebay Inc. v. Wangming,WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163. The Disputed Domain Name Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant. 7. Decision For the foregoing reasons, in accordance with paragraph 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name Lynda M. Braun 1 The Respondent appears to have used the name and contact details of a third party when registering the Disputed Domain Name. In light of the potential identity theft, the Panel has redacted the Respondent’s name 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 that 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. All references in this decision to “Respondent” are references to the unknown underlying registrant of the Disputed Domain Name.
Sole Panelist
Date: November 10, 2020
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