The Complainant is Wärtsilä Technology Oy Ab, Finland, represented by SafeNames Ltd., United Kingdom.
The Respondent is Shannon Sather, United States of America (“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 March 3, 2021. On March 3, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 4, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 the Respondent of the Complaint, and the proceedings commenced on March 16, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 5, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 8, 2021. The Center appointed Alvaro Loureiro Oliveira as the sole panelist in this matter on June 2, 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 is Wärtsilä Technology Oy Ab, a Finnish corporation which operates in the field of smart technologies and complete lifecycle solutions for the marine and energy markets, under the trade mark WÄRTSILÄ. The Complainant is the owner of the WÄRTSILÄ trademark and company name. The Complainant was established in and has been operating continually since 1834, first as a sawmill and iron works company, the Complainant changed its scope throughout the years and since 2001 expanded to biopower. Evidence of the history of the Complainant was presented in Annex 5 of the Complaint. The trademark WÄRTSILÄ is registered in jurisdictions throughout the world and include International trademark registration no. 1005789, registered on May 22, 2009, and United States registration no. 2078313, registered on July 15, 1997. Furthermore, the Complainant registered European Union Trade Mark no. 011765294 on September 18, 2013, for the trademark WARTSILA. A sample proof of these and other registrations owned by the Complainant for the trademarks WÄRTSILÄ and WARTSILA (hereafter collectively the “trademark WARTSILA”) was attached to the Complaint as Annex 6. The Complainant also holds a multitude of domain names registered throughout the world, all formed by the trademark WARTSILA, both with ccTLD extensions and with gTLD extensions, as evidenced in Annex 7 of the Complaint. The disputed domain name was registered on January 22, 2021. The disputed domain name does not resolve to an active website, however, the Complainant provided evidence that the disputed domain name has been used in connection to a fraudulent email scheme. 5. Parties’ Contentions A. Complainant The Complainant is the owner of the trademark WARTSILA, which is protected by several trademark registrations worldwide. Due to the Complainant’s operations, the trademark WARTSILA has acquired international recognition and is clearly linked to the Complainant. The trademark WARTSILA is associated to the Complainant’s core business. The Complainant has been recognized for its business services and brand recognition. Further, as stated by the documents presented, the registration and use of the trademark WARTSILA predates the registration of the disputed domain name, and the disputed domain name is confusingly similar to the Complainant’s trademark. The Respondent registered the disputed domain name, which incorporates the trademark WARTSILA registered by the Complainant, with the substitution of the letter “t” for an “f”, namely “warfsila”, as if it was a typographical error. The term “warfsila” incorporated in the disputed domain name is an intentional misspelling of the Complainant’s trademark, what constitutes typosquatting and can cause consumers confusion, fulfilling the requirements of paragraph 4(a)(i). The disputed domain name does not resolve to an active website, as seen in Annex 9. Nevertheless, the Complainant alleges that the Respondent has been contacting people, sending out e-mail communications from an email address associated with the disputed domain name, purporting to originate from a senior employee of the Complainant’s business, to request the redirection of invoices to be paid to an unauthorized bank account. Proof of this attempt was presented as Annex 10. Additionally, the Complainant alleges that the registration and use of the disputed domain name intentionally misleads Internet users, and that the disputed domain name was registered and is being used in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings The Policy, in its paragraph 4(a), determines that three elements must be presented and duly proven by a Complainant to obtain relief. These elements are: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect to 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 The disputed domain name is, indeed, confusingly similar to the trademark WARTSILA, as the latter is entirely incorporated in the disputed domain name, with the substitution of a “t” for an “f”. The Complainant has presented consistent evidence of ownership of the trademark WARTSILA in jurisdictions throughout the world, by presenting registrations for it, as well as comprehensive evidence of the use of the trademark. The use of the trademark with the substitution of the letter “t” for an “f”, namely “warfsila”, as if it was a typographical error in the disputed domain name does not differentiate it from the trademark – on the contrary, the mark WARTSILA is virtually reproduced, which may lead the public to consider the disputed domain name to resolve to a site related to the Complainant. Given the above, the Panel concludes that the disputed domain name is confusingly similar to the registered trademark of the Complainant. B. Rights or Legitimate Interests Given the clear evidence that the trademark WARTSILA is registered in the Complainant’s name and is widely known as identifying the Complainant’s activities, and that the Complainant has not licensed this to the Respondent, the Panel finds that the Complainant has established prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. In the absence of a Response, the Respondent has not rebutted such prima facie case. It has also been shown that the Respondent is not making any direct use of the disputed domain name, having registered it to create a likelihood of confusion with the Complainant’s mark. Further, the Complainant provides evidence that the Respondent has been establishing false email addresses associated with the disputed domain name and used in relation to phishing activity. The existence of at least one of these emails is shown in Annex 10. The Panel, thus, finds for the Complainant under the second element of the Policy. C. Registered and Used in Bad Faith Given the circumstances of this case, the facts outlined in sections A and B above can also evidence the Respondent’s bad faith in the registration and use of the disputed domain name. The disputed domain name was registered to clearly mislead consumers – hence the intentional typo in the trademark. The Complainant has submitted evidence of a fraudulent email scheme executed by the Respondent, using an email account relating to the disputed domain name and emulating the name of a senior employee. Accordingly, the Panel accepts that the disputed domain name is being used for unlawful purposes. The fact that the disputed domain name does not currently resolve to an active website does not prevent a finding of bad faith. All the points above lead to the conclusion by this Panel that the Respondent was fully aware of the Complainant and that the Respondent registered and is using the domain name in bad faith. The Panel finds that the Complainant has also proved the third 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, Alvaro Loureiro Oliveira
Sole Panelist
Date: June 16, 2021
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