WIPO Domain Name Decision D2021-2117 for wartsilaa.com, wastila.com

WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Wärtsilä Technology Oy Ab v. Michael Williams, M & C LLC Case No. D2021-2117 1. The Parties

The Complainant is Wärtsilä Technology Oy Ab, Finland, represented by SafeNames Ltd., United Kingdom.

The Respondent is Michael Williams, M & C LLC, United States of America (“United States”). 2. The Domain Names and Registrar

The disputed domain names and are registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”). 3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 2, 2021. On July 2, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 3, 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 July 8, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 28, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 29, 2021.

The Center appointed Fabrice Bircker as the sole panelist in this matter on August 5, 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 a Finnish corporation which operates in the field of smart technologies and complete life cycle solutions for the marine and energy markets.

The Complainant’s business has been established in 1834. Currently, the Complainant has operations in over 200 locations across more than 80 countries. In 2019, the Complainant had approximately 19,000 employees and generated net sales of EUR 5.2 billion.

These activities are notably protected through the following trademark registrations, all in the name of the Complainant:

- WÄRTSILÄ, International Trademark Registration No. 1005789 of May 22, 2009 in Classes 7, 9, 11, 12, 35, 37, 41, and 42, duly renewed in 2019 and protected among others in Australia, China, Japan, Norway, and Russian Federation;

- WÄRTSILÄ, European Union Trademark registered on February 21, 2000, registered under No. 000838466, duly renewed since then and covering products and services of Classes 7, 12, and 37;

- WARTSILA European Union Trademark registered on September 18, 2013, registered under No. 011765294 and covering products and services of Classes 7, 9, 11, 12, 35, 37, 41, and 42.

The Complainant has also developed an online presence, in particular through its website, available via the domain name.

The disputed domain names and were registered, respectively, on May 17 and 18, 2021.

Both disputed domain names currently do not resolve to any active website.

However, according to the record of the case, the disputed domain name was used to send at least one email by which the Respondent, by deceitfully pretending to be the Vice President of an affiliated company to the Complainant, requested from one of its customers to proceed with payments up to EUR 150,000 to an unauthorized bank account.

When aware of this use of the disputed domain name, the Complainant sent a takedown request to the Registrar and the latter has then suspended all services associated with this disputed domain name.

Concerning the second disputed domain name, , there is no evidence of use, but it is configured with MX records, which puts the Respondent in a position to use it to send emails. 5. Parties’ Contentions A. Complainant

The numerous arguments of the Complainant can be summarized as follows.

First, the Complainant submits that it holds in various jurisdictions numerous trademark registrations for the terms WÄRTSILÄ or WARTSILA, which have accrued significant goodwill and reputation.

Then, it contends that both disputed domain names are confusingly similar to its WÄRTSILÄ or WARTSILA trademarks because: i) they consist in obvious misspelling of its trademarks; and ii) the “.com” generic Top-Level Domain (“gTLD”) is a domain name standard registration requirement which can therefore be disregarded.

The Complainant also contends that the Respondent has no rights or legitimate interests in the disputed domain names, in particular because it has never authorized in any way the Respondent to register or to use the WÄRTSILÄ or WARTSILA trademarks in any manner.

In addition, the Complainant puts forward that the disputed domain name was used by the Respondent to facilitate email phishing attacks, what can never confer rights or legitimate interests.

The Complainant argues that, correlatively, such use of the disputed domain name is neither a legitimate noncommercial use, nor a fair use made without intent for commercial gain to misleadingly divert consumers or to tarnish its trademark.

Concerning the other disputed domain name, , the Complainant submits that there is no evidence of use. Therefore, the Complainant contends that the Respondent has not used, nor prepared to use, this disputed domain name neither in connection with an offering of goods or services in good faith, nor in connection with a legitimate noncommercial or fair use.

In addition, the Complainant puts forward that the Respondent is not known as WÄRTSILÄ or WARTSILA.

Besides, the Complainant argues that the disputed domain names have been registered in bad faith, among others, because: i) its WÄRTSILÄ or WARTSILA trademark registrations predate the creation of the disputed domain names by at least 20 years; ii) the Complainant has developed substantial goodwill and recognition; iii) the Respondent had actual knowledge of the Complainant’s rights as it used one of the disputed domain names to impersonate one of its employees.

In addition, the Complainant submits that the Respondent is engaged in a pattern of abusive domain name registrations in order to prevent the Complainant and third parties from reflecting their trademarks in corresponding disputed domain names.

Furthermore, the Complainant submits that the Respondent has used the disputed domain name with the intention to profit off the likelihood that receivers of the fraudulent emails will be confused as to their source and proceed with undue payments in its benefit.

At last, the Complainant contends that the fact that the disputed domain name is not used does not prevent a finding of bad faith use under the doctrine of passive holding, notably because of its closeness with the WÄRTSILÄ or WARTSILA trademarks and because of the fraudulent use of the disputed domain name.

In consideration of all the above, the Complainant requests the transfer of both disputed domain names. B. Respondent

The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings

Pursuant to paragraph 4(a) of the Policy, for obtaining the transfer of the disputed domain names, the Complainant must establish each of the following three elements:

(i) the disputed domain names are 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 names; and
(iii) the disputed domain names have been registered and is being used in bad faith.

Besides, paragraph 15(a) of the Rules provides that “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

Paragraphs 10(b) and 10(d) of the Rules also provide that “[i]n all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case” and that “[t]he Panel shall determine the admissibility, relevance, materiality and weight of the evidence”.

Besides, the Respondent’s failure to reply to the Complainant’s contentions does not automatically result in a decision in favor of the Complainant, although the Panel is entitled to draw appropriate inferences therefrom, in accordance with paragraph 14(b) of the Rules (see section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

Taking the foregoing provisions into consideration the Panel finds as follows. A. Identical or Confusingly Similar

Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must first establish rights in a trademark or service mark and secondly establish that the disputed domain names are identical or confusingly similar to its trademark.

The Panel finds that the Complainant has trademark rights consisting in the WÄRTSILÄ and WARTSILA denominations, in particular those mentioned in section 4 above.

Turning to whether the disputed domains are identical or confusingly similar to the Complainant’s mark, the Panel notes that they consist of:

- the terms, respectively, “wartsilaa” and “wastila”;

- followed by the gTLD “.com”.

There is a consensus view among UDRP panels that:

- a domain name containing a common or obvious misspelling of a trademark normally will be found to be

confusingly similar to such trademark, where the misspelled trademark remains the dominant or principal component of the domain name (see WIPO Overview 3.0, section 1.9);

- gTLDs may be ignored for the purpose of assessing the confusing similarity, because they only play a technical function.

The Panel finds that the removal of the diaresis in both disputed domain names, the addition of the extra letter “a” in the disputed domain name, and the removal of the letter “r” along with the reversal of the letters “t” and “s” in the disputed domain name, are obvious typos of the WÄRTSILÄ and WARTSILA trademarks.

Indeed, accidentally typing a letter several times, omitting to type a diaresis or a letter, or switching two letters are common and frequent mistakes made by Internet users, so-called “typosquatting” (See for instance, Instagram, LLC v. Zhichao Yang,WIPO Case No. D2021-1351 and the cited decisions).

In light of the above, the Panel considers that the Complainant’s trademarks remain recognizable within the disputed domain names.

Consequently, the first element under the Policy set for by paragraph 4(a)(i) is fulfilled. B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:

(i) before any notice to [the Respondent], [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or

(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or

(iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge or control of the respondent. As such, 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 (see WIPO Overview 3.0, section 2.1).

In the present proceedings, the Respondent has not been authorized by the Complainant to register and to use the disputed domain names.

Besides, there is nothing in the record of the case likely to indicate that the Respondent may be commonly known by the disputed domain names.

Furthermore, according to the record of the case, the disputed domain name was used to send at least one email by which the Respondent, by deceitfully pretending to be the Vice President of a company affiliated with the Complainant, has requested from a client that it proceeds with payments to an unauthorized bank account.

Obviously, such use of a disputed domain name, which is not refuted by the Respondent, is made with intent for commercial gain by deceiving a third party by fraudulently impersonating the Complainant. In this respect, Panels have categorically held that the use of a domain name for illegal activity (such as phishing or impersonation) can never confer rights or legitimate interests on a respondent (see WIPO Overview 3.0, section 2.13 or Lutosa v. Name Redacted,WIPO Case No. D2021-0809).

Correlatively, such use cannot manifestly amount to a legitimate noncommercial or fair use of this disputed domain name.

As far as the second disputed domain name, , is concerned, it is not used.

In view of all the above, the Panel finds that the Complainant has discharged its burden of proof that the Respondent has no rights or legitimate interests in respect of the disputed domain names.

The burden of production now shifts to the Respondent to show that it does have some rights or legitimate interests.

The Respondent, which has not replied to the Complainant’s contentions, has not come forward with any explanation or evidence that demonstrates any rights or legitimate interests in the disputed domain names.

Based on the above, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain names and accordingly that the second element in paragraph 4(a) of the Policy is satisfied. C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that a complainant must establish that a respondent registered and is using the disputed domain name in bad faith.

The circumstances deemed to be evidence of the registration and use of a domain name in bad faith listed at paragraph 4(b) of the Policy are non-exhaustive examples.

1) Registration in Bad Faith

In the present case, the Panel notes that:

- the use of the WÄRTSILÄ and WARTSILA trademarks by the Complainant predates by decades the registration of the disputed domain names;

- the Complainant’s WÄRTSILÄ and WARTSILA trademarks are intrinsically distinctive and also enjoy substantial reputation and goodwill (see notably Wärtsilä Technology Oy Ab v. McKeith Powers,WIPO Case No. D2020-1525);

- both disputed domain names contain misspellings of the Complainant’s trademarks and therefore have no meaning other than as an approximation of the Complainant’s prior rights;

- the disputed domain name has been used, the very same day of its registration, to create an email address as from which at least one email deceitfully impersonating the Vice President of a company affiliated with the Complainant was sent in an attempt to fraudulently try to obtain from its recipient wire transfers on a bank account which was not under the Complainant’s control;

- this fraudulent message notably contained in its signature, the Complainant’s WÄRTSILÄ trademark, its logo, and the address of its website;

- the Respondent, by remaining silent in the present procedure, has not contested the Complainant’s contentions.

It necessarily results from the above findings that the Respondent registered both disputed domain beings fully aware of the Complainant’s prior rights.

2) Use in Bad Faith

As mentioned above, the Respondent intentionally used the disputed domain name by fraudulently impersonating a company affiliated with the Complainant in an attempt to conduct a third party to proceed with wire transfers on an unauthorized bank account.

Such conduct is deceptive, illegal, and made for commercial gain. In that regard, it is consistently held that the use of a domain name for illegitimate activity, such as phishing or identity theft, is considered as manifest evidence of bad faith (see WIPO Overview 3.0, sections 3.1.4 and 3.4; or Wärtsilä Technology Oy Ab v. McKeith Powers,WIPO Case No. D2020-1525).

As far as the disputed domain name is concerned, there is no evidence of use.

However, the fact that a disputed domain name is inactive does not prevent a finding of bad faith use under the doctrine of passive holding (see WIPO Overview 3.0, section 3.3).

In the present case, the Panel finds that:

- the disputed domain name incorporates the Complainant’s WARTSILA distinctive mark with a common misspelling (the addition of an extra final letter), which is a clear example of typosquatting;

- the Complainant’s prior rights enjoy a significant reputation;

- the disputed domain name is configured with MX records, which puts the Respondent in position to use it to send emails;

- given the illegitimate conditions in which the disputed domain name was used by the Respondent, the existence of the disputed domain name, also in the hands of the Respondent, constitutes a threat hanging over the Complainant that this second disputed domain name may also be used to fraudulently impersonate the Complainant;

- it results from the record of the case that the Respondent registered other domain names liable to infringe upon the rights of third parties;

- the Respondent, while invited to participate to this procedure, did not come with any explanation.

In such a context, any use in good faith of the disputed domain name by the Respondent seems implausible.

For all the above reasons, the Panel finds that the Respondent registered and is using both disputed domain names in bad faith, pursuant to the Policy, paragraph 4(a)(iii). 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 names, and , be transferred to the Complainant.

Fabrice Bircker
Sole Panelist
Date: August 19, 2021

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