Complainant is Dycom Industries, Inc., United States of America (“United States” or “US), represented internally.
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 November 18, 2020. On November 19, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 19, 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 Complainant on November 25, 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 November 25, 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 Respondent of the Complaint, and the proceedings commenced on December 2, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 22, 2020. Respondent did not submit any response. Accordingly, the Center notified the Parties of Respondent’s default on December 23, 2020. The Center appointed Ingrīda Kariņa-Bērziņa as the sole panelist in this matter on January 4, 2021. 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 Complainant is an American company providing engineering, construction, and similar services to telecommunications and utilities providers. Complainant is the proprietor of trademark registrations incorporating the DYCOM mark, such as the following: - United States Reg. No. 3193496 for DYCOM (word mark), registered on January 2, 2007 for services in class 37 and 42; - United States Reg. No. 5528888 for DYCOM INDUSTRIES, INC. (word mark), registered on July 31, 2018 for services in classes 37 and 42. Complainant operates its primary corporate website at Respondent is an individual based in the United States. The disputed domain name was registered by Respondent on August 5, 2020. Respondent has used the disputed domain name to redirect Internet users to Complainant’s corporate website and to generate email communications to Complainant’s vendors. 5. Parties’ Contentions A. Complainant Complainant’s contentions may be summarized as follows. Under the first element, Complainant alleges that the disputed domain name is confusingly similar to the DYCOM mark, as the disputed domain name incorporates the entirety of Complainant’s DYCOM mark, which was registered prior to the registration and use of the disputed domain name. Under the second element, Complainant alleges that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services; Respondent is not commonly known by the disputed domain name; Respondent is not making a legitimate commercial or fair use of the disputed domain name. Rather, Respondent has been using the disputed domain name and associated email addresses to fraudulently represent itself as Complainant and members of Complainant’s leadership. Respondent has sent email messages from addresses associated with the disputed domain name to confuse third parties and impersonate Complainant by placing fraudulent orders for equipment. Under the third element, Complainant alleges that Respondent has registered the disputed domain name to take unfair advantage of Complainant’s DYCOM brand and business. The disputed domain name was registered primarily for the purposes of impersonating Complainant, thereby misleading third parties to believe that communications from email addresses associated with the disputed domain name were sent by Complainant. In two previously decided and two pending cases, a similar fact pattern of third parties registering domain names to impersonate Complainant has been noted by UDRP panels. Both previously decided cases resulted in the transfer of the disputed domain names. The registration of the disputed domain name in this case further indicates that there is a repeated effort to commit fraud and to harm Complainant. 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 DYCOM 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 DYCOM 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 generic Top-Level Domain (“gTLD”) “.com” is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test (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 Complainant’s long-established mark together with the dictionary term “corp”, 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 DYCOM mark with the permission of Complainant. The evidence in the record indicates the disputed domain name is used to generate fraudulent emails to impersonate Complainant and defraud its vendors. Such unlawful use can never confer rights or legitimate interests on a 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. Complainant’s rights in the DYCOM mark significantly predate the registration of the disputed domain name. It is not credible that Respondent was unaware of Complainant’s well-established mark when it registered the disputed domain name. The record supports a finding that Respondent registered the disputed domain name specifically with the intention of impersonating Complainant. Considering all these circumstances, 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 in using the disputed domain name to generate fraudulent emails to Complainant’s vendors. See WIPO Overview 3.0, section 3.4. 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 As detailed in Section 4 of this Decision, the record indicates that an unknown third party registered and used the disputed domain name without the consent of the named Respondent. The Panel has accordingly decided to redact Respondent’s name from the caption and body of this Decision. However, the Panel has included in Annex 1 to this Decision an instruction to the Registrar, which includes the Respondent’s name. The Panel has authorized the Center to transmit Annex 1 to the Registrar, and has indicated that Annex 1 is not to be published given the circumstances of the case. See Dycom Industries, Inc. v. Name Redacted,WIPO Case No. D2020-2128, Leo Pharma A/S v. Name Redacted,WIPO Case No. D2018-0900.
Sole Panelist
Date: January 18, 2021
Full & Egal Universal Law Academy