The Complainant is perma-tec GmbH & Co. KG, Germany, represented by SKW Schwarz Rechtsanwälte, Germany.
The Respondent is Allan Jike, 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 May 28, 2021. On May 28, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 29, 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 June 9, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 29, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 14, 2021. The Center appointed Reynaldo Urtiaga Escobar as the sole panelist in this matter on July 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. The proceeding is conducted in English, this being the language of the disputed domain name’s registration agreement, as confirmed by the Registrar. 4. Factual Background The Complainant is a lubrication solutions company founded in Germany in 1934 that operates under its current name since 2000, and has subsidiaries in Australia, Chile, France, India, Italy, Spain, the United Kingdom, and the United States. The Complainant’s products, systems, applications, and services are marketed under the PERMA brand name and serve various industries, including automotive, chemical, cement, asphalt, pharma, heavy machinery, quarrying, recycling, refining, wind turbines, pulp and paper, steel, mining. The Complainant holds trademark registrations for PERMA, including: - European Union Trademark (EUTM) No. 005892518 (word mark) registered as of February 26, 2008, with respect to: “Apparatus for treating machines and machine parts with lubricants; lubricant dispensers with lubricant storage tanks and electromechanical drives; lubricant dispensers with lubricant storage tanks and electrochemical drives for the gas-controlled release of lubricants; lubricating devices being parts for machines, namely grease cups, lubricators, oils; parts of the aforesaid goods” (Class 7) and “Electronic control devices for apparatus for supplying machines and machine parts with lubricants, and for lubricant dispensers” (Class 9); - European Union Trademark (EUTM) No. 005460456 (figurative mark) registered as of November 21, 2008, with respect to: “Apparatus for treating machines and machine parts with lubricants; lubricant dispensers with lubricant storage tanks and electromechanical drives; lubricant dispensers with lubricant storage tanks and electrochemical drives for the gas-controlled release of lubricants; lubricating devices being parts for machines, namely grease cups, lubricators; oilers, parts for the aforesaid goods” (Class 7) and “Electronic control devices for apparatus for supplying machines and machine parts with lubricants, and for lubricant dispensers” (Class 9); These trademark registrations are in full force and effect. The disputed domain name was registered on February 28, 2021, and shortly after registration was used in an email communication impersonating two employees of the Complainant for the purpose of directing a customer of the Complainant to transfer money to an account not controlled by the Complainant. 5. Parties’ Contentions A. Complainant The Complainant contends as follows: (i) The disputed domain name consists of an intentional misspelling in the form of an adjacent keyboard letter “n” instead of “m” of the Complainant’s registered company name perma-tec GmbH & Co. KG and the Complainant’s registered domain name “perma-tec.com”; (ii) Under German law, specifically section 15 of the German Trademark Law and section 12 of the German Civil Code, name rights stem from a registered company name; (iii) According to section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), where a domain name incorporates the entirety of the Complainant’s trademark, or where at least the dominant feature of the relevant mark is recognizable in the disputed domain name, the latter will normally be considered confusingly similar to that mark for purposes of UDRP standing; (iv) The disputed domain name incorporates a misspelling of the entire PERMA mark in which the Complainant has rights; (vi) The Complainant has never authorized the Respondent to use the PERMA marks in the disputed domain name or otherwise; (vii) Pursuant to section 1.9 of the WIPO Overview 3.0, under the second and third elements, panels will normally find that employing a misspelling signals an intention on the part of the Respondent to confuse Internet users seeking or expecting the Complainant; (viii) Panels have categorically held that where the disputed domain name has been used for an illegal activity as is the case here (phishing), the Respondent has no rights or legitimate interests in the disputed domain name; (ix) A few days after registration of the disputed domain name, a spoofing email originating from the disputed domain name requested a customer of the Complainant to transfer money to a bank account that does not belong to the Complainant; (x) The Respondent sent fraudulent communications using email addresses that are confusingly similar to those of the Complainant’s actual employees, which is evidence of bad faith registration and use within the meaning of the Policy. B. Respondent The Respondent did not reply to the Complaint. 6. Discussion and Findings According to paragraph 4(a) of the Policy, in order to succeed in this administrative proceeding, the Complainant must prove that: (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 was registered and is being used in bad faith. These elements are discussed in turn below. In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules, and any other rules or principles of law that the Panel deems applicable. A. Identical or Confusingly Similar The first element has a low threshold merely serving as a gateway requirement under the Policy. See section 1.7 of WIPO Overview 3.0 (the standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name). The Complainant owns European Union Trademark registrations for PERMA, the earliest of which is registered as of February 26, 2008 (see section 4 supra). The Complainant alleges that the disputed domain name is an intentional misspelling of the Complainant’s PERMA mark, merely replacing the letter “m” for “n”, and adding the portion “tec”, which is part of the Complainant’s registered company name. From a visual standpoint, the disputed domain name bears close resemblance to the Complainant’s PERMA mark. This is sufficient to meet the first limb of Policy paragraph 4(a). See section 1.9 of the WIPO Overview 3.0 (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). Moreover, the disputed domain name is very similar to the Complainant’s “perma-tec” company name, which supports the finding of confusing similarity between the Complainant’s PERMA mark and the disputed domain name. Accordingly, the Panel holds that the disputed domain name is confusingly similar to the mark in which the Complainant has rights. The Complainant has met the standing requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests The second element under the Policy is that the Respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii)). Paragraph 4(c) of the Policy provides that “any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [the respondent’s] rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii): (i) before any notice to you [the respondent] of the dispute, your [the respondent’s] 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 [the respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you [the respondent] have acquired no trademark or service mark rights; or (iii) you [the respondent] 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”. As noted in section 2.1 of the WIPO Overview 3.0, the onus is on the Complainant to establish the absence of the Respondent’s rights or legitimate interests in the disputed domain name. However, because of the inherent difficulties in proving a negative, the consensus view is that the Complainant need only put forward a prima facie case that the Respondent lacks rights or legitimate interests. The burden of production then shifts to the Respondent to rebut that prima facie case (see also, e.g., World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles,WIPO Case No. D2000-1306). The Complainant avers that it did not authorize the Respondent to incorporate the PERMA marks in the disputed domain name or use the said marks otherwise. The Complainant also alleges that the Respondent’s use of the disputed domain name in connection with spoofing email correspondence aimed to extort money from a Complainant’s customer is neither lawful, legitimate, nor bona fide within the meaning of the Policy. In reviewing the email correspondence produced by the Complainant, the Panel observes that in fact, on March 2, 2021, the Respondent impersonated the Complainant in a follow-up communication to a private email exchange between a Complainant’s employee and a Complainant’s customer. The Respondent did so by replacing the address “[...]@perma-tec.com” belonging to an employee of the Complainant with the exact name of the employee in question but using the email address “[...]@perna-tec.com” associated with the disputed domain name. The Respondent also switched the email address of a second employee of the Complainant who was copied on the original email, with an email address associated with the disputed domain name but preserving the actual name of the Complainant’s second employee. The Respondent’s follow-up communication falsely informed the Complainant’s customer that the Complainant’s bank account regularly used was unavailable “due to an on going (sic) periodic financial audit exercise” and thus directed the Complainant’s customer to remit payment to an alternate bank account supposedly controlled by the Complainant. This fraudulent use the disputed domain name is inimical to the Respondent’s holding of rights or legitimate interests in the sense of Policy, paragraph 4(a)(ii). See section 2.13.1 of the WIPO Overview 3.0 (panels have categorically held that the use of a domain name for illegal activity, such as impersonation/passing off, or other types of fraud, can never confer rights or legitimate interests within the meaning of the Policy). In sum, the Panel finds that the Respondent lacks rights and legitimate interests in the disputed domain name within the meaning of the Policy. The Complainant has fulfilled the second limb of Policy, paragraph 4(a). C. Registered and Used in Bad Faith Pursuant to Policy, paragraph 4(a)(iii), in order to be granted relief, the Complainant must show that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy sets forth the following non-exhaustive grounds of bad faith registration and use: “(i) circumstances indicating that you [the respondent] have 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 that complainant, for valuable consideration in excess of your [the respondent’s] documented out-of-pocket costs directly related to the domain name; or (ii) you [the respondent] have 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 you [the respondent] have engaged in a pattern of such conduct; or (iii) you [the respondent] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you [the respondent] have intentionally attempted to attract, for commercial gain, Internet users to your [the respondent’s] 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 your [the respondent’s] website or location or of a product or service on your [the respondent’s] website or location.” For Policy purposes, bad faith is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark. See section 3.1 of the WIPO Overview 3.0. Here, the Panel finds that the Respondent took unfair advantage of the Complainant by knowingly selecting and registering a domain name that is confusingly similar to the Complainant’s PERMA mark and the Complainant’s “perma-tec” company name. The Respondent’s bad faith registration is buttressed by the fact that the disputed domain name is a typosquatting of the Complainant’s PERMA mark, and typosquatting, in turn, is a form of cybersquatting. As for bad faith use, according to the evidence on file, the Respondent appears to have hacked into the Complainant’s private network and then unlawfully intercepted a private email exchange between the Complainant’s employees and one of the Complainant’s customers. The Respondent’s presumed hacking and unlawful interference with the Complainant’s private email correspondence are conclusive evidence of the disputed domain name’s bad faith use as per the Policy. See Halliburton Energy Services, Inc. v. Najranps Project Sales,WIPO Case No. D2019-2961 (finding bad faith’s registration and use where the respondent attempted to obtain a payment from the complainant’s customer, having previously intercepted email correspondence between the complainant and its customer). Last but not least, in the Panel’s opinion, the Respondent’s impersonation of the Complainant’s employees further supports a finding of bad faith use within the realm of the Policy. See section 3.4 of the WIPO Overview 3.0 (the use of a disputed domain name to send deceptive emails, e.g., to solicit payment of fraudulent invoices by the complainant’s actual or prospective customers, constitutes bad faith). For the reasons stated above, the Panel holds that the disputed domain name was registered in bad faith and has been used in bad faith. The Complainant has discharged its burden in relation to 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 name Reynaldo Urtiaga Escobar
(v) Confusing similarity also results from the fact that the disputed domain name incorporates the term “tec” that is included in the Complainant’s registered company name;
Sole Panelist
Date: August 19, 2021
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