The Complainant is Wistrand Advokatbyrå Göteborg Kommanditbolag, Sweden, represented by Ports Group AB, Sweden.
The Respondent is Privacy service provided by Withheld for Privacy ehf, Iceland / Zhi Hao, Singapore. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 12, 2021. On July 13, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same day, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 15, 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 Amendment to the Complaint on July 16, 2021. The Center verified that the Complaint together with the Amendment to 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 19, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 8, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 11, 2021. The Center appointed Olga Zalomiy as the sole panelist in this matter on August 20, 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 Swedish law firm with offices in Gothenburg and Stockholm. The Complainant owns Swedish trademark registration for the figurative WISTRAND W trademark, registration No. 327950, registered on July 31, 1988. The trademark consists of the big letter “W” behind the word “Wistrand”. Since July 4, 2000, the Complainant has owned the domain name The Domain Name was registered on February 15, 2021. The Domain Name resolves to a purported Complainant’s website that displays information about the Complainant’s offices and employees. The Respondent also set up MX records and created an email address, namely, […]@wisttrand.com. 5. Parties’ Contentions A. Complainant The Complainant contends that it is a Swedish law firm. The Complainant alleges that it owns a registration for the WISTRAND W trademark. The Complainant claims that it also owns a domain name registration that includes its trademark. The Complainant asserts that the Domain Name is confusingly similar to its trademark WISTRAND W because it contains a simple misspelling of the Complainant’s trademark. The Complainant contends that the Domain Name is identical to its trademark except for an additional letter “t” in the middle of the trademark. The Complainant argues that the generic Top-Level Domain (“gTLD”) “.com” should be disregarded under the first element of the confusing similarity test. The Complainant asserts that the Respondent has no rights or legitimate interests in the Domain Name because the Complainant did not authorize the Respondent’s use of its trademark in the Domain Name. The Complainant contends that the Domain Name resolves to a website that is designed to look like its official website. The Complainant alleges that the Respondent’s website contains information about the law firm, including profiles of its employees and the offices’ addresses. The Complainant alleges that the Respondent registered and is using the Domain Name in bad faith. The Complainant claims that the Respondent registered the Domain Name in bad faith because it directs to a website passing off as the Complainant’s website. The Complainant asserts that the Respondent is using the Domain Name in bad faith because it created an email address under the Domain Name that has or will likely be used for fraudulent operations. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Pursuant to paragraph 4(a) of the UDRP, to succeed in this proceeding, the Complainant must prove each of the following elements with respect to each of the Domain Names: (i) the 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 Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar Pursuant to paragraph 4(a)(i) of the UDRP, the Complainant must prove that the Domain Name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights. The submitted evidence shows that the Complainant own a trademark registration for the WISTRAND W trademark. Under section 1.2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), this satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. The Domain Name entirely reproduces the Complainant’s WISTRAND W trademark except that it adds a single letter “t” in the middle of the mark, and the generic Top-Level Domain (“gTLD”) “.com”. Previous UDRP panels found that “[a] domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered… to be confusingly similar to the relevant mark for purposes of the first element”1 . It is well-established that the applicable gTLD should be disregarded under the confusingly similarity test as a standard registration requirement2 . Thus, the Domain Name is confusingly similar to the Complainant’s trademark. The Panel finds that the Complainant has satisfied the first element of the UDRP. B. Rights or Legitimate Interests To prove the second UDRP element, the Complainant must make out a prima facie case3 in respect of the lack of rights or legitimate interests of the Respondent. Pursuant to paragraph 4(c) of the Policy, any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on the evidence, shall demonstrate a respondent’s rights or legitimate interests to a domain name for the purposes of paragraph 4(a)(ii) of the Policy: (i) before any notice of the dispute, 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) the respondent (as an individual, business, or other organization) has been commonly known by the 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 domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The Complainant submitted evidence that shows that the Respondent has not been commonly known by the Domain Name. The Complainant alleges that it did not authorize the Respondent’s use the Complainant’s trademark in the Domain Name. Further, the evidence on record shows that the Domain Name resolves to a website designed to look like the Complainant’s website. The website reproduces the Complainant’s trademark and lists addresses of its offices. Prior UDRP panels have held that the use of a domain name for illegal activity, such as impersonation, or other types of fraud “can never confer rights or legitimate interests on a respondent”4 . Based on the foregoing evidence, the Panel finds that the Complainant has made out a prima facie case in respect of the lack of rights or legitimate interests of the Respondent in the Domain Name. Once a complainant makes a prima facie case, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name5 . The Respondent has failed to do so, and, consequently, the Panel finds that in this proceeding the Complainant has satisfied paragraph 4(a)(ii) of the UDRP. C. Registered and Used in Bad Faith Pursuant to paragraph 4(a)(iii) of the Policy, the Complainant must prove that the Domain Name was registered and is being used in bad faith. Paragraph 4(b) of the UDRP sets forth circumstances, which shall be considered evidence of the registration and use of a domain name in bad faith. The examples of bad faith registration and use set forth in paragraph 4(b) of the UDRP are not meant to be exhaustive of all circumstances from which such bad faith may be found. Prior UDRP panels have held that “the use of a domain name for purposes other than to host a website may constitute bad faith. Such purposes include sending email, phishing, identity theft, or malware distribution. […] Many such cases involve the respondent’s use of the domain name to send deceptive emails, e.g., to obtain sensitive or confidential personal information from prospective job applicants, or to solicit payment of fraudulent invoices by the complainant’s actual or prospective customers”6 . The Panel finds that the Respondent registered and is being using the Domain Name in bad faith, because it is likely that the Respondent registered the Domain Name to commit fraud. The Respondent registered the Domain Name, which is confusingly similar to the Complainant’s trademark and the Complainant’s own domain name, to direct users to a webpage copying the Complainant’s official website. In addition, the Domain Name contained links to the Complainant’s website and listed the Complainant’s offices addresses. Therefore, it is likely that the Respondent was seeking to create a likelihood of confusion with the Complainant’s mark to intentionally attempt to attract Internet users to an online location and capitalize on the Complainant’s trademark rights and reputation. The evidence on file also shows that the Respondent has used the Domain Name to set up MX records and create email address […]@wisttrand.com. Although no phishing emails have been reported to the Complainant, it is likely that the Respondent has been using the Domain Name to pass off as the Complainant, setting up a phishing scheme. Such use is in bad faith. See, e.g., Admiral Group Plc and EUI Limited of Cardiff v. Cimpress Schweiz, Cimpress Schweiz GmbH,WIPO Case No. DCO2017-0043, where the panel stated that, “[r]espondent has used the disputed domain name as a fake email address in order to impersonate the CFO of Complainant A and mislead some employees, recipients of the emails. The fraudulent intentions of the Respondent are hereby clearly unveiled, and enable the Panel to conclude that the disputed domain name is used in bad faith”. Similarly, the Respondent in this case has made preparations to use and, possibly, has used, the Domain Name in attempt to obtain from third parties sensitive information and/or money. Therefore, the Panel finds that the Complainant has established the third element of paragraph 4(a) of the UDRP. 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 Olga Zalomiy 1 Section 1.9, WIPO Overview 3.0. 2 Section 1.11.1, WIPO Overview 3.0. 3 Section 2.1, WIPO Overview 3.0. 4 Section 2.13.1, WIPO Overview 3.0. 5 Section 2.1, WIPO Overview 3.0. 6 Section 3.1.4, WIPO Overview 3.0.
Sole Panelist
Date: August 24, 2021
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