Complainant is The Cooper Companies, Inc., United States of America (“United States”), represented by Owen, Wickersham & Erickson, PC, United States.
Respondent is Ray Carter, United States. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 30, 2021. On March 30, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On March 31, 2021, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on April 1, 2021. In accordance with the Rules, paragraph 5, the due date for the Response was April 21, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 22, 2021. The Center appointed Christopher S. Gibson as the sole panelist in this matter on April 27, 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 The Cooper Companies, Inc., a parent company to its wholly owned United States subsidiary, CooperVision, Inc. Complainant has submitted evidence to demonstrate that it owns numerous trademark registrations for its COOPER formative trademarks in the United States and worldwide, in connection with a wide range of eyewear-related goods and services provided by the company. Complainant’s COOPERVISION mark registered in the United States on December 27, 2011 (no. 4,076,710) claims first use in commerce as of October 31, 1980. Complainant owns over 90 domain names, which include its corporate trade name and its name “Cooper,” including The Domain Names (i) Identical or confusingly similar Complainant states it has rights in its COOPER family of marks, as described above. Complainant further contends that the Domain Names are essentially identical to Complainant’s trade name “The Cooper Companies”, as well as to Complainant’s registered COOPER trademarks and its Complainant’s “cooper” domain names, including (ii) Rights or legitimate interests Complainant states that before any notice to Respondent of the dispute, there is no evidence of Respondent’s use of, or demonstrable preparations to use, the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services. Respondent has not been commonly known by the Domain Names, and Respondent is not making a legitimate noncommercial or fair use of the Domain Names. Complainant sates that, as described below, the Domain Names are being used for fraudulent solicitations and phishing activities while representing the sender as being Complainant. Complainant states that impersonation of a complainant cannot confer rights or legitimate interests on a domain name registrant. (iii) Registered and used in bad faith Complainant claims that Respondent is using the Domain Names to impersonate Complainant and to send email solicitations purportedly from “The human resources department of The Cooper Companies, Inc.” to students, purporting to be recruiting them for job interviews and “training”. The emails require recipients to create a “Telegram account” by disclosing personal identification information through the messaging app . Complainant states that it notified the entity at Telegram of the alleged scam. Complainant learned about this scam when several students contacted Complainant to report it. Complainant has submitted evidence of the representative fraudulent emails sent from the Domain Names to student recipients. Complainant is not affiliated with any such recruiting efforts. Complainant contends that the emails are fraudulent attempts to obtain personal information and presumably, fees for the “organized training program” mentioned in the fraudulent emails. Complainant contends that by using the Domain Names in this manner, Respondent intentionally attempted to attract for commercial gain Internet users to Respondent’s online location by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, and endorsement of Respondent’s recruitment and training scam. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings In order to succeed on its Complaint, Complainant must demonstrate that the three elements set forth in paragraph 4(a) of the Policy have been satisfied. These elements are that: (i) the Domain Names registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the Domain Names; and, (iii) Respondent has registered and is using the Domain Names in bad faith. A. Identical or Confusingly Similar Complainant has demonstrated that it has established rights in its COOPER family of trademarks, through extensive registration and use. The Panel finds that the Domain Names incorporate the COOPER mark in its entirety, while adding the abbreviation “cos” (for “companies”) in both of the Domain Names and, in one Domain Name, the abbreviation “inc” (for “incorporated”). This combination in the Domain Names creates a confusing similarity with Complainant’s COOPER marks, as well as with Complainant’s trade name, “The Cooper Companies”, and with several of Complainant’s domain names.1 Numerous UDRP decisions have found that the addition of additional terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”); see also section 1.7 of WIPO Overview 3.0, which states, “where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.” Accordingly, the Panel finds that the Domain Names are confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Regarding the second element of the Policy, section 2.1 of the WIPO Overview 3.0, states, “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”. Here, the Panel determines that Complainant has made out a prima facie case, while Respondent has failed to respond to Complainant’s contentions. The Panel finds that Complainant has not authorized Respondent to use Complainant’s COOPER trademarks or trade name; that Respondent is not commonly known by the Domain Names or by the names “Cooper Cos.” or “Cooper Cos. Inc.”; that Respondent has not used the Domain Names for a legitimate noncommercial or fair use, nor used them in connection with a bona fide offering of goods or services. Instead, the Domain Names effectively impersonate or suggest sponsorship or endorsement by Complainant, by including the entirety of Complainant’s COOPER trademark as the dominant element, along with the abbreviation “cos” in both Domain Names, thereby imitating Complainant’s trade name, along with the abbreviation “inc” in one Domain Name. Respondent has not tried to justify why the Domain Names were registered. The evidence submitted by Complainant indicates the Domain Names are being used for fraudulent solicitations and phishing activities, while representing the sender as being Complainant. See WIPO Overview 3.0, section 2.13.1 (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 Beiersdorf AG v. PrivacyGuardian.org / Edward Peter Inc.,WIPO Case No. D2019-0149 (domain name used in attempted fraudulent email scheme designed to be deceptive and confusing, and an impersonation of the complainant by the respondent, cannot amount to bona fide offering of goods and services or a legitimate noncommercial or fair use). Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the Domain Names in accordance with paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The third element of paragraph 4(a) of the Policy requires that Complainant demonstrate that Respondent registered and is using the Domain Names in bad faith. WIPO Overview 3.0, section 3.1, states, “bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark”. Here, the Panel determines that the Domain Names were registered and are being used in bad faith. There is little doubt that Respondent, when registering the Domain Names, was aware of Complainant, its trade name and its COOPER marks, and intentionally targeted them, when registering the Domain Names. Complainant’s trademark registrations and use of its marks predate registration of the Domain Names by many years. Respondent’s addition in the Domain Names of the abbreviations “cos” and “inc” to the COOPER mark, as the case may be, does not avoid potential confusion among Internet users. Moreover, Respondent has used the Domain Names to send fraudulent emails to students, while impersonating Complainant. Given these facts, the Panel considers that the only logical conclusion is that Respondent targeted Complainant and its marks when registering the Domain Names. This point is further confirmed by Respondent’s use of the Domain Names. The evidence indicates that Respondent has used the Domain Names to send emails that impersonate Complainant to students, purportedly from the “human resources department of The Cooper Companies, Inc.”, and purporting to recruit them for job interviews and training. The emails require recipients to create an account on a messaging app and disclose personal identification information. Complainant has contended that the emails sent by Respondent (using the Domain Names) are fraudulent attempts to obtain personal information and possibly fees for the training program mentioned in the emails. The Panel finds that Respondent, through this scheme, has intentionally attempted to attract for commercial gain Internet users to Respondent’s online location by creating a likelihood of confusion with Complainant’s COOPER marks and trade name as to the source, sponsorship, affiliation, and endorsement of Respondent’s scheme. As stated in Beiersdorf AG v. PrivacyGuardian.org / Edward Peter Inc.,WIPO Case No. D2019-0149: “Impersonating a complainant by use of the complainant’s mark in an attempted fraudulent e-mail scam is disruptive and the fraudulent e-mail scam attempt is confusing in that recipients of any such mails would reasonably believe those e-mails are connected to or approved by the Complainant…. This mimicking by the Respondent of the Complainant shows that the Respondent was aware of the Complainant and its business and rights and constitutes impersonation.” See also Migros-Genossenschafts-Bund v. WhoisGuard Protected, WhoisGuard, Inc. / Jasmine Julius,WIPO Case No. D2020-0327 (finding that impersonation is clear evidence of bad faith registration and use). In conclusion, the Panel determines that, for all of the above reasons, the Domain Names were registered and are being used in bad faith. Accordingly, Complainant has satisfied 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 Domain Names Christopher S. Gibson 1 The evidence submitted by Complainant indicates the Domain Names were used for fraudulent emails in which the sender purported to be Complainant. The fact that a respondent has targeted a complainant’s trademark can support an indication that the complainant’s mark has achieved significance as a source identifier. See section 1.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Sole Panelist
Date: May 11, 2021
Full & Egal Universal Law Academy