Complainant is WILO USA LLC, United States of America (“United States”), represented by Momkus LLC, United States.
Respondent is Domains By Proxy, LLC, United States / Mary Lee Rippy, Applied Products, Inc, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 8, 2020. On October 9, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 9, 2020, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact. The Center verified that 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 Respondent of the Complaint, and the proceedings commenced on October 22, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 11, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 17, 2020. The Center appointed Frederick M. Abbott as the sole panelist in this matter on November 30, 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 Complainant1 has rights in registrations for the word, and word and design, trademark and service mark (hereinafter “trademark”) WILO on the Principal Register of the United States Patent and Trademark Office (“USPTO”), registration number 3472451, registration dated July 22, 2008, in International class (IC) 7, covering, inter alia, pumps for heating units, sewage and feces treatment installations, and water filtering units, and; registration number 3699032, registration dated October 20, 2009, in ICs 6, 7, 9, 16, 37 and 41, covering, inter alia, installation, maintenance and repair services of pumps and pumping system, and provision of related training services. Complainant (and its affiliated entities) is a global supplier of pump and pump systems for the building services, water management and industrial sectors. Complainant operates a commercial website at “www.wilo.com”, to which various other Wilo-formative domain names are redirected. According to the Registrar’s verification, Respondent is registrant of the disputed domain name. According to that verification, the creation date of the disputed domain name is June 30, 2020. There is no indication on the record of this proceeding that any party other than Respondent has owned registration of the disputed domain name. The disputed domain name currently redirects to Complainant’s official website. Respondent has used the dispute domain name as the domain extension (“[…]@wilo-us.com”) in a series of falsified emails employing as usernames the actual names of officers and other employees of Complainant, along with their titles in the bodies of the emails, in efforts to defraud legitimate product (and service) vendors into shipping products to addresses not affiliated with Complainant and its business. Part of this scheme involves securing credit lines from vendors, apparently in favor of Complainant, on the false pretense that Complainant is the applicant for commercial credit with the vendors. Certain suspicious vendors alerted Complainant of Respondent’s scheme to defraud. The registration agreement between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, one of which is the Center, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)). 5. Parties’ Contentions A. Complainant Complainant alleges that it owns rights in the trademark WILO and that the disputed domain name is identical or confusingly similar to that trademark. Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain name because: (1) Respondent has used the disputed domain name to impersonate Complainant and its personnel in attempts to defraud Complainant’s customers and vendors; (2) these activities by Respondent continued subsequent to Complainant’s transmission of a cease-and-desist demand to Respondent; (3) Respondent has no rights or legitimate interests in the disputed domain name arising out of its scheme to defraud. Complainant argues that Respondent registered and is using the disputed domain name in bad faith because: (1) Respondent is using the disputed domain name in connection with a scheme to defraud customers and vendors of Complainant; (2) Respondent attempted to shield its identity behind a privacy shield; (3) Respondent’s improper activities have continued subsequent to Complainant’s transmission of a cease-and-desist demand to Respondent, and; (4) Respondent’s scheme to defraud is based on creating a likelihood of confusion with Complainant’s trademark. Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceeding that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)). The Center formally notified the Complaint to Respondent at the email, fax, and physical addresses provided in its record of registration. It appears that courier delivery of the Complaint to Respondent was successful. The Center took those steps prescribed by the Policy and the Rules to provide notice to Respondent, and those steps are presumed to satisfy notice requirements. Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use and to obtain relief. These elements are that: (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) the disputed domain name has been registered and is being used in bad faith. Each of the aforesaid three elements must be proved by a complainant to warrant relief. This proceeding involves a regrettably familiar pattern: a domain name confusingly similar to a trademark is used as a domain identifier in connection with the transmission of email intended to deceive a recipient(s) as to the true identity of the sender, thereby to take unfair financial or other commercial advantage of the recipient(s). In addition to potential injury to the recipient(s), such deceptive behavior is likely to injure the commercial and/or reputational interest of the trademark owner. A. Identical or Confusingly Similar Complainant has provided evidence of rights in the trademark WILO, including by registration at the USPTO and use in commerce. See Factual Background, supra. Respondent has not challenged Complainant’s assertion of rights. The Panel determines that Complainant has established rights in the trademark WILO. The disputed domain name directly incorporates Complainant’s WILO trademark and adds the geographic identifier “-us”. The direct incorporation of Complainant’s distinctive trademark suffices in the circumstances here to establish confusing similarity between Complainant’s trademark and the disputed domain name. Incorporating the geographic term “-us” that (in this case) identifies the location of Complainant’s business operation is not an obstacle to a finding of confusing similarity. The Panel determines that the disputed domain name is confusingly similar to Complainant’s trademark. The Panel determines that Complainant has established rights in the trademark WILO, and that the disputed domain name is confusingly similar to that trademark. B. Rights or Legitimate Interests Complainant’s allegations to support Respondent’s lack of rights or legitimate interests in the disputed domain name are outlined above in section 5.A., and the Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name. Respondent has not replied to the Complaint, and it has not attempted to rebut Complainant’s prima facie showing of Respondent’s lack of rights or legitimate interests. Respondent’s use of the disputed domain name in email addresses incorporating usernames identical to that of officers and employees of Complainant, and using those originating email addresses, inter alia, in attempts to defraud vendors by inducing them to ship products on credit to locations not associated with Complainant does not establish rights or legitimate interests in the disputed domain name in favor of Respondent. Respondent’s use of the disputed domain name does not otherwise manifest rights or legitimate interests. The Panel determines that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith In order to prevail under the Policy, Complainant must demonstrate that the disputed domain name “has been registered and is being used in bad faith” (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy states that “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”. These include that, “(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other online 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”. Respondent has used the disputed domain name intentionally for purposes of commercial gain to establish Internet user confusion regarding Complainant as the source of email communications in a manner intended by Respondent to deceive product and service vendors. The intent of the deceptive emails, inter alia, was to induce vendors to ship products on credit to locations not affiliated with Complainant. Respondent was pretending to be Complainant in order to receive goods based on that deception. Respondent was manifestly aware of Complainant’s rights in its trademark when it registered the disputed domain name and undertook these actions. Such registration and use evidence bad faith. The Panel determines that Respondent registered and is using the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) 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 Frederick M. Abbott 1 Complainant Wilo USA LLC is an affiliated entity of Wilo SE, based in Germany. Wilo SE is registrant of the WILO trademarks at the USPTO. Counsel for Complainant represents that Complainant is authorized by Wilo SE to use the WILO trademarks in the United States. The Panel relies on that uncontested representation.
Sole Panelist
Date: December 12, 2020
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