The Complainant is Altius CVBA, Belgium, internally represented.
The Respondent is Benny Darlinton, United States of America1 . 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 7, 2021. On April 7, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 7, 2021, the Registrar transmitted by email to the Center its verification 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 the Complainant on April 13, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 14, 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 April 15, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 5, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 6, 2021. The Center appointed Rodrigo Azevedo as the sole panelist in this matter on May 14, 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 the Belgian law firm Altius CVBA. The trademark ALTIUS was registered by the Complainant in several regions of the world, including in the European Union (European Union Trademark numbers 002778702 and 015343601, respectively registered on September 1, 2003, and September 19, 2016). The Complainant also owns an International Registration for such trademark, designating Israel, Japan, the Russian Federation, Turkey and Ukraine (registration number 1275354, registered on July 29, 2015). The Complainant is the holder of the domain name The Respondent registered the disputed domain name The Panel accessed the disputed domain name on May 25, 2021, at which time the disputed domain name was not pointing to any active webpage. According to the Complaint, the disputed domain name resolved to a pay-per-click website displaying links related to the legal service. The Complainant has also presented evidence that the disputed domain name has been used to send emails requesting money transfer, seeking to confuse the recipients into believing these messages were from the Complainant. 5. Parties’ Contentions A. Complainant The Complainant makes the following contentions: - The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Respondent has used the disputed domain name to send email messages in a phishing expedition scheme, in which the reputation and credibility of the Complainant is used in order to convince people to transfer money to the Respondent. Where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in a domain name, the domain name shall be considered confusingly similar to the trademark. The disputed domain name incorporates the word mark ALTIUS (European Union Trademark number 015343601), and incorporates the verbal element of the figurative mark ALTIUS (European Union Trademark number 002718702, which is furthermore copied in its entirety in the email messages sent by the Respondent, with inclusion of the figurative elements). The element “law” in the disputed domain name is descriptive for the services of a law firm, and will as such be neither distinctive nor dominant. The dominant element is “altius”, which is copied in the disputed domain name. In comparing the Complainants’ trademarks to the disputed domain name, it is also well-established that the generic Top-Level Domain (“gTLD”) must be excluded from consideration as being a functional component. - The Respondent has no rights or legitimate interests in respect of the disputed domain name. Once the Complainant has shown that the Respondent has no rights or legitimate interests in the disputed domain name, the burden of production of rights or legitimate interests will thus lie on the Respondent. The fact that the Respondent is not a licensee of the Complainant and has never been authorized to use the Complainant’s trademarks creates sufficient prima facie evidence which calls for the Respondent to rebut the Complainant’s assertions. The disputed domain name is not currently used to host a website. The Respondent cannot allege use of the disputed domain name in connection with a bona fide offering of goods/services, especially given the bad faith practices it has been developing. The Respondent is not known under the name “Altius”. The disputed domain name falsely suggest affiliation with the Complainant, which is in itself unfair. The Respondent has been making an unfair use of the disputed domain name with the intent to deceive people to transfer their money, and to tarnish the Complainant’s trademarks. The Complainant’s trademarks are so used by the Respondent to benefit from the reputation and credibility of the Complainant, for illegal purposes (phishing). The use of a domain name for illegal activity, such as the activity developed by the Respondent, cannot confer rights or legitimate interests on it. - The disputed domain name was registered and is being used in bad faith. The Respondent cannot seriously contend that it was not aware of the Complainant and its trademarks, given their reputation. The Respondent abuses the Complainant’s trademarks, and is engaging in behavior detrimental to the Complainant’s trademarks. The mere registration of a domain name that is confusingly similar to a widely-known trademark by an unaffiliated entity creates an assumption of bad faith. Furthermore, the use of the disputed domain name for per se illegitimate activity, such as phishing practices developed by the Respondent, is manifest evidence of bad faith. Finally, the Respondent’s behavior amounts to direct infringement of the Complainant’s European Union Trademarks. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, a complainant shall prove the following three elements: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of 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 Annexes 4 to 8 to the Complaint show trademark registrations for ALTIUS obtained by the Complainant as early as in 2003. The disputed domain name differs from the Complainant’s trademark ALTIUS merely by the addition of the term “law” and of the gTLD “.net”. Previous UDRP panels have consistently found that the additional terms (such as the expression “law”, for a law firm) in a domain name does not avoid a finding of confusing similarity. This has been held in many UDRP decisions (see, e.g., Inter-IKEA Systems B.V. v. Evezon Co. Ltd.,WIPO Case No. D2000-0437; The British Broadcasting Corporation v. Jaime Renteria,WIPO Case No. D2000-0050; Volvo Trademark Holding AB v. SC-RAD Inc.,WIPO Case No. D2003-0601; Wal-Mart Stores, Inc. v. Lars Stork,WIPO Case No. D2000-0628; America Online, Inc. v. Dolphin@Heart,WIPO Case No. D2000-0713; AltaVista Company v. S. M. A., Inc.,WIPO Case No. D2000-0927). It is also well established that the addition of a gTLD suffix such as “.net” is typically irrelevant when determining whether a domain name is confusingly similar to a complainant’s trademark. As a result, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks, and that the Complainant has satisfied the first element of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides some examples without limitation of how a respondent can demonstrate a right or legitimate interest in a domain name: (i) before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; or (ii) the respondent has been commonly known by the domain name; or (iii) the 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 at issue. Based on the Respondent’s default and on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has not licensed or authorized the usage of its trademarks to the Respondent, and it does not appear from the present record that the Respondent is commonly known by the disputed domain name. The Panel also notes that the present record provides no evidence to demonstrate the Respondent’s intent to use or to make preparations to use the disputed domain name in connection with a bona fide offering of goods or services. At the time of filing of the Complaint, the disputed domain name resolved to a pay-per-click website displaying links related to the legal service. Further, the Complainant has brought evidence that the disputed domain name has been used in connection with a fraudulent phishing scheme, using the Complainant’s credibility to request money transfer supposedly to the Respondent. Consequently, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name, and the Complainant has proven the second element of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith: (i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or (ii) the respondent registered the 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 the respondent has engaged in a pattern of such conduct; or (iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location. When the disputed domain name was registered on October 20, 2020, the ALTIUS trademark was already undoubtedly connected with the Complainant’s law services. The disputed domain name encompasses the distinctive mark ALTIUS, together with the suffix “law”. In the present case, the Panel considers that the addition of the term “law” even enhances the (false) perception that the disputed domain name may be an official Internet channel of the Complainant. Therefore, the Panel concludes that it would not be feasible to consider that the Respondent – at the time of the registration of the disputed domain name – could not have been aware of the Complainant’s trademark, as well as that the adoption of the expression “altiuslaw” could be a mere coincidence. Currently, no active website is linked to the disputed domain name, but this does not prevent the Panel to make a finding that the disputed domain name is also being used in bad faith. In the Panel’s view, the circumstances that the Respondent: (a) previously used the disputed domain name for a pay-per-click website displaying links related to the legal service; and (b) has not provided any justifications for the registration of a domain name containing a third-party trademark, together with the term that describe the services related to this third party, certainly cannot be used in benefit of the Respondent in the present case. Such circumstances, associated with the evidence that the disputed domain name has been used in connection with a fraudulent scheme, trying to impersonate the Complainant in order to obtain financial gain, are enough in this Panel’s view to characterize bad faith registration and use in the present case. Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith, and the Complainant has also 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 disputed domain name Rodrigo Azevedo 1 The Panel notes that the disputed domain name was first registered through the privacy protection service.
Sole Panelist
Date: May 28, 2021
Full & Egal Universal Law Academy