The Complainant is Cesi S.p.A, Italy, represented by Brock Shipe Klenk PLC, United States of America (“United States”).
The Respondent is Kesslyn Howard, 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 February 17, 2021. On February 17, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 18, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 18, 2021, providing the registrant and contact information disclosed by the Registrar and informing the Complainant that the Complaint was administratively deficient. The Complainant filed an amended Complaint on February 23, 2021. 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 February 24, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 16, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 18, 2021. The Center appointed Jon Lang as the sole panelist in this matter on March 25, 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 The Complainant has a registered trademark (word mark) for CESI, registered with the United States Patent and Trademark Office on July 2, 2013 (registration number: 4359615). The Complainant does business worldwide under the name CESI and has offices in nine countries, including the United States. The Complainant has been in operation since 1950 and is a leader in the global energy sector, with total production revenues of EUR 138,652,000 in 2019. The Domain Name was registered on December 22, 2020. 5. Parties’ Contentions A. Complainant The Complainant’s trademark registration, worldwide operations and significant revenues, demonstrate that the CESI name has meaning and expectation attached to it by consumers around the world. The Domain Name incorporates the Complainant’s CESI trademark in a confusing manner with the sole intention of creating confusion as to the Complainant’s association with the Respondent. The Respondent does not have any rights or legitimate interests in the Domain Name. Prior to suspension of the Domain Name, no substantive content was associated therewith and, to the Complainant’s knowledge, the Respondent only registered the Domain Name for the purposes of email communication so as to impersonate officers of the Complainant. There is nothing to indicate that the Respondent is using the Domain Name to run a legitimate business or to pursue legitimate ends. Rather, the Respondent is using the Domain Name to commit fraud in that the Respondent is deceiving individuals into believing that it is a representative of the Complainant and capable of offering employment opportunities. The Respondent is actively using the Domain Name in bad faith to purposefully create a likelihood of confusion with the Complainant, even going so far as to actively impersonate officers of the Complainant. The Respondent is intentionally confusing individuals as to the source of the Respondent’s offers of employment and to obtain individuals’ personal information. Specifically, the Respondent posed as an officer of the Complainant using the Domain Name as an email address and solicited personal information from prospective job candidates. The Respondent also used the Complainant’s CESI trademark in these emails to try and establish an appearance of association with the Complainant. The Complainant has received multiple inquiries and reports from individuals about job opportunities that did not exist after being contacted by the Respondent. The individuals reported that the Respondent requested personal identifying information from them as part of the fake job interview process. This behavior began immediately after the Respondent registered the Domain Name. Since then, the Respondent has reached out to individuals after finding them on sites such as “CareerBuilder.com” and “Indeed.com”, using the Domain Name as an email address to impersonate officers of the Complainant. The Respondent has defrauded multiple individuals using the Domain Name and the Complainant’s trademark (as a source of authority for assertions of association with the Complainant). The Respondent does not operate a legitimate business and the sole purpose of registration of the Domain Name was to impersonate the Complainant in order to commit identity theft and fraud. Finally, the Respondent used its email to send documents purportedly signed by the Complainant’s officers, including its CEO. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy requires a complainant to prove that a respondent has registered a domain name which is: (i) identical or confusingly similar to a trademark or service mark in which a complainant has rights; and (ii) that the respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith. A complainant must prove each of these three elements to succeed. A. Identical or Confusingly Similar The Complainant is the owner of the CESI trademark and thus clearly has rights in that mark. Ignoring the generic Top-Level Domain “.org” (as the Panel may do for comparison purposes), the Domain Name comprises the CESI trademark followed by the letters “usa”. Accordingly, the CESI trademark and Domain Name are not identical and thus the issue of confusing similarity must be considered. Application of the confusing similarity test under the UDRP typically involves “a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name” (section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). Section 1.7 of WIPO Overview 3.0 goes on to provide “…in cases where a domain name incorporates the entirety of a trademark, (…) the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”. The CESI trademark is incorporated in its entirety within the Domain Name. It is clearly recognizable within the Domain Name. The addition of the letters “usa” (being the International Organization for Standardization (ISO) code for the United States), does little to diminish the visual impression created by the Domain Name, namely that the CESI trademark, as well as being its first, is also its dominant element. The Panel finds that the Domain Name is confusingly similar to the CESI trademark for the purposes of the Policy and thus paragraph 4(a)(i) of the Policy has been established. B. Rights or Legitimate Interests By its allegations, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. Accordingly, the burden of production shifts to the Respondent to come forward with arguments or evidence demonstrating that it does in fact have such rights or legitimate interests. The Respondent has not done so and accordingly, the Panel is entitled to find, given the prima facie case made out by the Complainant, that the Respondent indeed lacks rights or legitimate interests in the Domain Name. Despite the lack of any answer to the Complainant’s contentions however, the Panel is entitled to consider whether there would be anything inappropriate in such a finding. A respondent can show it has rights to or legitimate interests in a domain name in various ways even where it is not, as here, licensed by or affiliated with a complainant. For instance, it can show that it has been commonly known by the domain name or that it 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. A respondent can also show that it is using a domain name in connection with a bona fide offering of goods or services. Here, however, the Respondent is not known by the Domain Name. Moreover, the Respondent has used the confusingly similar Domain Name to engage in nefarious activities, including phishing, imitating the Complainant for such purposes. Such behaviour cannot of course amount to a bona fide offering of goods or services, or a legitimate noncommercial or fair use for the purposes of the Policy. The very purpose in the Respondent choosing the Domain Name it did was to deliberately create a false impression of association with the Complainant. The Respondent then sought to impersonate the Complainant for its own improper purposes. The Respondent has not come forward with a formal Response or taken any other action to address the Complaint, no doubt because there is unlikely to be anything the Respondent could say that could justify its registration and use of the Domain Name in the manner described. There is no evidence before this Panel suggesting that the Respondent might have rights or legitimate interests in the Domain Name. There is only evidence suggesting the contrary. Accordingly, the Panel finds that the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith There can be little doubt that the Respondent was aware of the Complainant’s CESI trademark at the time of registration of the Domain Name. Paragraph 4(b) of the Policy provides a number of non-exclusive scenarios which may evidence a respondent’s bad faith. They include, for instance, a respondent registering a domain name in order to prevent an owner of the trademark or service mark to which it is said to be confusingly similar or identical, from reflecting the mark in question in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct. A respondent registering a domain name primarily for the purposes of disrupting the business of a competitor is another scenario, as is a respondent intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website or of products or services on it. Sometimes, it is not possible for a complainant to demonstrate literal or verbatim application of one of the paragraph 4(b) scenarios. However, given that such scenarios are non-exclusive and simply illustrative, this matters not as long as there is evidence demonstrating that a respondent seeks to take unfair advantage of, or to abuse a complainant’s trademark, such behaviour being broadly understood to constitute bad faith for the purposes of the Policy. To this end, it has been held by past UDRP panels that where a domain name has been used, or connected with phishing activities, a finding of bad faith will follow (e.g. Confédération Nationale du Crédit Mutuel v. Daniel Delcore,WIPO Case No. DLC2009-0001). Needless to say, use of a domain name in connection with fraud or other nefarious activities would also support a finding of bad faith registration and use. In the circumstances of this case, the Panel finds that, for the purposes of the Policy, there is evidence of registration and use of the Domain Name in bad faith. 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 Domain Name Jon Lang
Sole Panelist
Date: April 8, 2021
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