The Complainant is Asendia Management, France, represented by Selarl Marchais & Associés, France.
The Respondent is Registration Private, Domains By Proxy, LLC, United States of America / Emily Wittman, United States of America. 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 30, 2020. On October 30, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 2, 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 November 3, 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 November 4, 2020. The Center verified that the Complaint together with the amendment 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 November 12, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 2, 2020. The Respondent did not submit any response. The Center appointed Alistair Payne as the sole panelist in this matter on December 23, 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, a joint venture between La Poste and Swiss Post, is a leading international mail, shipping and distribution organization, delivering packages, parcels, and documents to more than 200 destinations across the globe and it operates from 15 country offices in Europe, Asia, and the United States of America. The Complainant owns various trade mark registrations for its ASENDIA trade mark including International Registration 1 111 830 registered on October 27, 2011 and designated in both the European Union and in the United States of America. It also owns a range of domain names that incorporate the ASENDIA mark including The Respondent is based in the United States of America. The disputed domain name was registered on October 14, 2020 and resolves to an inactive web page. 5. Parties’ Contentions A. Complainant The Complainant submits that it owns registered trade mark rights as set out above for its ASENDIA trade mark. It says that the disputed domain name is confusingly similar to its ASENDIA registered trade mark in that the substantive element of the disputed domain name, before the Top-Level Domain (“TLD”) “.com” element, differs by only one letter. The Complainant says that this amounts to a case of typosquatting and that the purposeful misspelling of the disputed domain name does not alleviate potential confusion in that it will be read, understood, and pronounced similar to its own As far as rights or legitimate interests are concerned, the Complainant says that the Respondent’s name bears no similarity to the disputed domain name. It says that the Complainant has never licensed or authorised the Respondent to use its ASENDIA mark and that the Respondent has modified the Complainant’s ASENDIA mark and has incorporated it into the disputed domain name with the clear intention of free-riding on the coat tails of the renown that attaches to the Complainant’s mark. Further, says the Complainant, the Respondent is not making a legitimate, noncommercial or fair use of the disputed domain name and nor is the disputed domain name being used in connection with a bona fide offering of goods or services and in this regard it notes that the disputed domain name resolves to an inactive page. The Complainant says that the Respondent, hidden by a privacy service, has used the disputed domain name to impersonate the Complainant’s staff email addresses with a view to illegally extorting funds from the Complainant. This says the Complainant is not bona fide conduct and is inconsistent with the Respondent having legitimate rights or interests in the disputed domain name. As regards bad faith, the Complainant submits that its mark is distinctive and well known worldwide. In circumstances that the Respondent does not appear to be known as the disputed domain name and has used a privacy service to mask its identity and that the Complainant’s business is amongst the first links shown when “asendie” is entered into the Google search engine, the Complainant suggests that the Respondent acted in opportunistic bad faith in registering the disputed domain name in order to make an illegitimate use of it for the purpose of attracting Internet users to the Respondent’s website by creating a likelihood of confusion, or at least an impression of association, between the Complainant’s trade marks and the contested domain name, not only as to source, but as to a possible affiliation, connection, sponsorship, association, and/or approval between the Complainant and the Respondent. This says the Complainant is sufficient to infer registration in bad faith. As far as use is concerned, the Complainant notes that the disputed domain name resolves to an inactive website. It submits that the Respondent has used the disputed domain name to send fake emails in which the Respondent illegally impersonated the Complainant’s employees in order to extort funds with false invoices. It is therefore evident, says the Complainant, that the circumstances indicate that the Respondent has registered and used the disputed domain name primarily for the purpose of trying to gain unfairly the benefit of the goodwill and reputation attaching to the ASENDIA mark by creating a likelihood of confusion with the Complainant’s trade marks and domain names as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and the emails sent by the associated servers. The Complainant also notes that it has also been established in many UDRP decisions that a passive holding in appropriate circumstances can amount to the disputed domain name being used in bad faith. In this regard the Complainant notes the lack of active use of the disputed domain name, the substantial degree of renown attaching to the Complainant’s ASENDIA mark and the likelihood that the Respondent’s lack of use of the disputed domain name will cause irreparable harm to the Complainant’s goodwill because Internet users could be led to believe that the Complainant is not on the Internet or is no longer in business. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Complainant has demonstrated that it owns International Registration 1 111 830 registered on October 27, 2011 and designated in both the European Union and in the United States of America for its ASENDIA trade mark. The substantive element of the disputed domain name, excluding the “.com” TLD element differs from the Complainant’s distinctive trade mark only by the final letter. The Panel finds that the disputed domain name is therefore confusingly similar to the Complainant’s ASENDIA mark and that the Complaint succeeds under this element of the Policy. B. Rights or Legitimate Interests The Complainant has submitted that the Respondent’s name bears no similarity to the disputed domain name. It has confirmed that it has never licensed or authorised the Respondent to use its ASENDIA mark. It says further that the Respondent has modified the Complainant’s ASENDIA mark and has incorporated it into the disputed domain name with the clear intention of free-riding on the coat tails of the renown attaching to the Complainant’s mark. Further, the Complainant has asserted that the Respondent is not making a legitimate, noncommercial or fair use of the disputed domain name. In addition, the Complainant says that the disputed domain name is not being used in connection with a bona fide offering of goods or services and in this regard, it notes that the disputed domain name resolves to an inactive page. The Complainant alleges that the Respondent, hidden by a privacy service, has used the disputed domain name to impersonate the Complainant’s staff email addresses with a view to illegally extorting funds from the Complainant. It has provided the Panel with details of this fraudulent conduct and the Panel agrees with the Complainant that this is not bona fide conduct and is inconsistent with the Respondent having rights or legitimate interests in the disputed domain name. In circumstances that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and that the Respondent has failed to rebut the Complainant’s case, the Panel finds that the Complaint succeeds under this element of the Policy. C. Registered and Used in Bad Faith The Panel finds that the Complainant’s ASENDIA mark is distinctive and notes that it was registered in 2011 long before the disputed domain name was registered in 2020. While there is evidence to support a finding that the Complainant’s business is well-established and likely enjoys an established reputation in numerous countries amongst the business community, there is insufficient evidence on the record to support a finding that it is very well-known as asserted by the Complainant. However, the Panel notes that the Complainant’s business is amongst the first links shown when “asendie” is entered into the Google search engine, that the Respondent attempted to mask its identity by using a privacy service and that the Respondent subsequently used the disputed domain name for a fraudulent purpose as described herein. In all the circumstances, the Panel therefore finds that the Respondent most likely acted opportunistically in bad faith in registering the disputed domain name in 2020 for its own illegitimate purposes. The disputed domain name resolves to an inactive website but based upon the description and evidence provided by the Complainant, the Respondent appears to have used the disputed domain name to send fake emails that impersonate the Complainant’s employees in order to extort substantial funds from the Complainant using false invoices. It seems to the Panel more likely than not that the Respondent registered and used the disputed domain name primarily for this fraudulent purpose. The registration and use of a disputed domain name for fraudulent purposes in this manner is an example of the bad faith conduct that the Policy intends to proscribe. The fact that the Respondent used a privacy service to attempt to hide its identity only reinforces the Panel’s view of the Respondent’s likely bad faith. With these findings in mind, it is unnecessary to address further the use of the disputed domain name to resolve to an inactive website. Accordingly, the Panel finds that the disputed domain name was both registered and used in bad faith and that the Complaint succeeds under this element 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 Alistair Payne
Sole Panelist
Date: January 6, 2021
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