Complainant is Whitehall Specialties, Inc., United States of America (“U.S.” or “United States”), represented by Quarles & Brady LLP, United States.
Respondent is Registration Private, Domains By Proxy, LLC, United States, Perfect Privacy, LLC, United States, WhoisGuard Protected, WhoisGuard, Inc., Panama / Lindsey Gartner, United States, Stefan Freter, Canada, Nick Bahnweg, United States. 2. The Domain Names and Registrars
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 10, 2021. On March 10, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On March 10, 11, and 12, 2021, the Registrars transmitted by email to the Center theirs verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent the notice of multiple registrants email communication to Complainant on March 15, 2021, 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 March 19, 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 Respondent of the Complaint, and the proceedings commenced on March 26, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 15, 2021. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 19, 2021. The Center appointed John C. McElwaine as the sole panelist in this matter on May 7, 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 a manufacturer of cheese. Complainant owns the following United States trademark registrations relevant to this matter: - WHITEHALL SPECIALITIES, U.S. Reg. No. 4,808,433 registered on September 8, 2015 for cheese food; cheese substitutes, in Class 29. Collectively, these trademark registrations are referred to herein as the “WHITEHALL SPECIALTIES Mark”. Respondent registered the Domain Names As background for this matter, Complainant alleges that it was founded in 1994 and is a company that manufactures and distributes high quality cheese to industrial wholesalers, food service companies, and retail private labels. Complainant contends that since opening it has expanded to sell over 100 million pounds of cheese a year in 30 countries. Complainant further alleges that it owns and uses the domain name Complainant alleges that since at least as early as February 1, 2021, Respondent has been using email addresses with the Domain Names to contact Complainant’s customers. Complainant has provided screenshots that show in the email that Respondent is posing as an actual employee of Complainant and requests that the customers change payment information to make payments to Respondent’s bank account. These screenshots show that the email signature block displays Complainant’s WHITEHALL SPECIALTIES Marks, Complainant’s address and contact information, and Complainant’s actual domain name With respect to the first element of the Policy, Complainant asserts that the With respect to the second element of the Policy, Complainant alleges that Respondent has used the Domain Names to pose as Complainant, by emailing Complainant’s customers, posing as an employee of Complainant, and seeking transfer of bank and payment information intended for Complainant to a fraudulent account assumingly owned by Respondent. Complainant assets that such fraudulent and unlawful actions are not a legitimate interest in the Domain Names. As to the With respect to the third element of the Policy, Complainant asserts four reasons to support a finding of registration and use of the Domain Names in bad faith. First, Complainant asserts that Respondent used the Domain Names to pass itself off as Complainant to trick Complainant’s customers into sending Respondent their personal information and payment information intended for Complainant. Second, Complainant asserts that Respondent obtained the Domain Names primarily for the purpose of disrupting its business by attempting to attract, for commercial gain, Complainant’s customers to divert payments to Respondent, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the fraudulent emails. Third, Complainant asserts that Respondent’s use of confusingly similar Domain Names that constitute typosquatting of Complainant’s WHITEHALL SPECIALTIES Mark is evidence of bad faith registration of a domain name. Finally, Complainant points out that Respondent hid behind a privacy service while carrying out its illegitimate activities, which compounds the bad faith in this case. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Even though Respondent did not formally reply to the Complaint, paragraph 4 of the Policy requires that, in order to succeed in this UDRP proceeding, Complainant must still prove its assertions with evidence demonstrating: (i) Each Domain Name is identical or confusingly similar to a trademark or service mark in which Complainants have rights; As an initial matter, Complainant points out that Stefan Freter is the registrant of Section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) summarizes the consensus view of UDRP panels on the consolidation of multiple respondents as follows: “Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario.” Here, Complainant has established that the Domain Names were all registered within one week of each other: Because of the absence of a formal Response, the Panel may accept as true the reasonable factual allegations stated within the Complaint and may draw appropriate inferences therefrom. See St. Tropez Acquisition Co. Limited v. AnonymousSpeech LLC and Global House Inc.,WIPO Case No. D2009-1779; Bjorn Kassoe Andersen v. Direction International,WIPO Case No. D2007-0605; see also paragraph 5(f) of the Rules (“If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint”). Having considered the Complaint, the Policy, the Rules, the Supplemental Rules and applicable principles of law, the Panel’s findings on each of the above cited elements are as follows. A. Identical or Confusingly Similar Paragraph 4(a)(i) of the Policy requires Complainant show that the domain name(s) in dispute are identical or confusingly similar to a trademark or service mark in which Complainant has rights. Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2. On this point, Complainant has provided evidence that it is the owner of four United States trademark registrations for the WHITEHALL SPECIALTIES Mark. As discussed in the WIPO Overview 3.0, section 1.9, the consensus view is that “a domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element”. Similarly, previous UDRP panels have consistently held that “a mere addition or a minor misspelling of Complainant’s trademark does not create a new or different mark in which Respondent has legitimate rights”. Express Scripts, Inc. v. Whois Privacy Protection Service, Inc. / Domaindeals, Domain Administrator,WIPO Case No. D2008-1302 (“Such insignificant modifications to trademarks is commonly referred to as ‘typosquatting’ or ‘typo-piracy,’ as such conduct seeks to wrongfully take advantage of errors by users in typing domain names into their web browser’s location bar.”) The spelling errors used in typosquatting have been found to produce domain names that are confusingly similar to the marks which they mimic. See, e.g., Yahoo! Inc. and GeoCities v. Data Art Corp. et al.,WIPO Case No. D2000-0587. Here, the Domain Names are all visually similar to the WHITEHALL SPECIALTIES Mark differing only by the omission or addition of one or two letters in each of the Domain Names. It is well established, and the Panel agrees, that typosquatting domain names are intended to be confusing and can constitute confusing similarity. See, First American Financial Corporation v. VistaPrint Technologies Ltd,WIPO Case No. DCO2016-0008; National Association of Professional Baseball Leagues, Inc, d/b/a Minor League Baseball v. John Zuccarini,WIPO Case No. D2002-1011). Accordingly, the Panel finds that Complainant has met its burden of showing that the Domain Names are confusingly similar to WHITEHALL SPECIALTIES Mark in which Complainant has valid subsisting trademark rights. B. Rights or Legitimate Interests Under the Policy, paragraph 4(a)(ii), Complainant has the burden of establishing that Respondent has no rights or legitimate interests in the Domain Names. Complainant needs to only make a prima facie showing on this element, at which point the burden of production shifts to Respondent to present evidence that it has rights or legitimate interests in the Domain Names. If Respondent has failed to do so, Complainant is deemed to have satisfied its burden under paragraph 4(a)(ii) of the Policy. See Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc.,WIPO Case No. D2010-1141; see also Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party,WIPO Case No. D2000-1415; Inter-Continental Hotels Corporation v. Khaled Ali Soussi,WIPO Case No. D2000-0252. The Policy, paragraph 4(c), provides a non-exhaustive list of circumstances in which a respondent could demonstrate rights or legitimate interests in a contested domain name: “(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are 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.” Complainant contents there is no right or legitimate interest in holding a domain name for the purpose of furtherance of a fraud through impersonation. Complainant further contends that Respondent is not commonly known by the Domain Names, that Complainant has not licensed, authorized or permitted Respondent to register the Domain Names, and that Respondent has not demonstrated any attempt to make legitimate use of the Domain Names. Respondent has not denied any of the Complainant’s assertions and has not put forth any evidence showing that it has a right or legitimate interest in the Domain Names. The Panel observes that the Domain Names have all been used to send emails in an attempt to impersonate an employee of Complainant for fraudulent purposes. Moreover, the Panel finds that the purpose of registering the Domain Names was to engage in an email scam or a phishing scheme, none of which is a bona fide offering of goods or services. WIPO Overview 3.0, section 2.13.1 (“Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent.”); see also, CMA CGM v. Diana Smith,WIPO Case No. D2015-1774 (finding that the respondent had no rights or legitimate interests in the disputed domain name holding, “such phishing scam cannot be considered a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Domain Name”.) The undisputed evidence of impersonation, deception and fraud nullifies any possible basis for the acquisition of rights or legitimate interests by Respondent. See Afton Chemical Corporation v. Meche Kings,WIPO Case No. D2019-1082. The fact that the The fact that Accordingly, Complainant made a prima facie showing of Respondent’s lack of any rights or legitimate interests and Respondent has failed to come forward to rebut that showing. As provided for by paragraph 14 of the Rules, the panel may draw such inference from Respondent’s default as it considers appropriate. The panel finds that Respondent does not have rights or legitimate interests in the Domain Names and that Complainant has met its burden under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Under paragraph 4(a)(iii) of the Policy, Complainant must show that Respondent registered and is using the Domain Names in bad faith. A non-exhaustive list of factors constituting bad faith registration and use is set out in paragraph 4(b) of the Policy. It is well settled that the practice of typosquatting constitutes obvious evidence of the bad faith registration of a domain name. See, Admiral Group Plc and EUI Limited v. Cimpress Schweiz, Cimpress Schweiz GmbH,WIPO Case No. DCO2017-0043 (citing Longs Drug Stores California, Inc. v. Shep Dog,WIPO Case No. D2004-1069 (finding typosquatting to be evidence of bad faith domain name registration); Lexar Media, Inc. v. Michael Huang,WIPO Case No. D2004-1039 (“Typosquatting has been held under the Policy to be evidence of bad faith registration of a domain name”); Wal-Mart Stores, Inc. v. Longo,WIPO Case No. D2004-0816 (“[typosquatting] is presumptive of registration in bad faith”)). Typosquatting can be defined as “inherently parasitic and of itself evidence of bad faith”. Insurance Company v. Dyk Dylina/Privacy--Protect.org,WIPO Case No. D2011-0304. The Domain Names were intentionally registered as a common typographical version or to appear confusingly similar to the WHITEHALL SPECIALTIES Mark. Further, Complainant submitted evidence of signature lines in emails sent from the Domain Names with the correct spelling of the WHITEHALL SPECIALTIES Mark, email address and URL for Complainant’s website, and using the name of Complainant’s employee. This serves as strong evidence Respondent intended for the Domain Names to be confused with Complainant’s WHITEHALL SPECIALTIES Mark. Respondent registered and then used the Domain Names to perpetrate an email scam or phishing scheme. Complainant’s WHITEHALL SPECIALTIES Mark was intentionally chosen when the Domain Names were registered with the intent to target Complainant’s customers in an attempt to siphon off payments intended for Complainant via the receipt of fraudulent emails. The Domain Names do not appear to have been registered for any other purpose as two do not resolve to an active website and one resolves to a parked webpage. The use of a confusingly similar, deceptive domain name for an email scam has previously been found by panels to be sufficient to establish that a domain name has been registered and is being used in bad faith. See Samsung Electronics Co., Ltd. v. Albert Daniel Carter,WIPO Case No. D2010-1367; Securitas AB, supra,WIPO Case No. D2013-0117. Moreover, in finding a domain name used only for an email scam was bad faith, the panel in Kramer Law Firm, P.A. Attorneys and Counselors at Law v. BOA Online, Mark Heuvel,WIPO Case No. D2016-0387, pointed out that numerous UDRP panels have found such impersonation to constitute bad faith, even if the relevant domain names are used only for email. See, e.g., Terex Corporation v. Williams Sid, Partners Associate,WIPO Case No. D2014-1742 (“Respondent was using the disputed domain name in conjunction with…an email address for sending scam invitations of employment with Complainant”); and Olayan Investments Company v. Anthono Maka, Alahaji, Koko, Direct investment future company, ofer bahar,WIPO Case No. D2011-0128 (“although the disputed domain names have not been used in connection with active web sites, they have been used in email addresses to send scam emails and to solicit a reply to an ‘online location’”). For these reasons, the Panel holds that Complainant has met its burden of showing that Respondent registered and is using the Domain Names in bad faith under paragraph 4(a)(iii) 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 Domain Names, John C. McElwaine
- WHITEHALL SPECIALTIES A WORLD LEADER IN CUSTOM CHEESE PRODUCTS & Design, U.S. Reg. No. 4,453,768 registered on December 24, 2013 for cheese food; cheese substitutes in Class 29.
- WHITEHALL SPECIALTIES & Design, U.S. Reg. No. 5,370,399 registered on January 2, 2018 for cheese food; cheese substitutes in Class 29.
- WHITEHALL SPECIALTIES UNLIMITED CHEESE & Design, U.S. Reg. No. 5,541,320 registered on August 14, 2018 for cheese food; cheese substitutes in Class 29.
(ii) Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) each Domain Name has been registered and is being used in bad faith.
Sole Panelist
Date: May 20, 2021
Full & Egal Universal Law Academy