The Complainant is Cummins Filtration Inc., United States of America (“United States”), represented by Mayer Brown LLP, United States.
The Respondent is Domains by Proxy, LLC, United States/ Thomas Carson, United States.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 14, 2021. On July 15, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 16, 2021, the Registrar transmitted by email to the Center its verification response 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 July 23, 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 July 28, 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 July 28, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 17, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 30, 2021.
The Center appointed William F. Hamilton as the sole panelist in this matter on September 17, 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 BackgroundThe Complainant, founded in 1919, designs, manufactures, distributes and services diesel and natural gas engines and related technologies. The Complainant employs 55,000 people worldwide and serves customers in 190 countries and territories through over 8,000 distributor and dealer locations.
The Complainant has used the CUMMINS mark (the “Mark”) in promoting its products and services since 1919 and obtained United States Patent and Trademark Office Registration No. 579346 on Sept. 1, 1953, for the Mark.
The Respondent registered the disputed domain name on Mach 30, 2020. The disputed domain name originally resolved to a commercial website featuring the expression “Welcome to Cummins Filtration Inc.” and purporting to offer for sale various “filtration systems for diesel engines, transmissions, and industrial applications….” The Respondent’s website included repeated references to the Complainant’s trademarks. The Respondent utilized the disputed domain name in various phishing email solicitations designed to confused persons into believing they were doing business with the Complainant. The disputed domain name is currently inactive.
5. Parties’ Contentions A. ComplainantThe Complainant asserts the disputed domain name is confusingly similar to the Marks. The disputed domain name combines the Complainant’s Mark with the dictionary term “filtration” (which is part also of Complainant’s trademarks around the world when combined with the Mark or the Complainant’s distinctive, stylized logo). The Complainant further asserts the Respondent has no legitimate rights or interests in the Mark or the disputed domain name as there is no evidence of any legitimate business activity of the Respondent prior to registration and use of the disputed domain name. Further, the Complainant asserts that the Complainant has not authorized the use of the Mark by the Respondent. The Complainant also asserts the disputed domain name was registered and used in bad faith to implement a phishing scheme and to otherwise confuse purchasers.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsUnder paragraph 4(a) of the Policy, to succeed the Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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.
A. Identical or Confusingly SimilarThe Panel finds that the disputed domain name is confusingly similar to the Complainant’s Marks.
The disputed domain name is composed by combining of the Complainant’s Mark, the dictionary term “filtration,1” and the letters “inc.” which are commonly understood as an abbreviation for the legal term “incorporated.” A domain name which wholly incorporates a complainant’s mark or prominent and distinctive portions thereof, is sufficient to establish confusingly similarity for the purposes of the Policy irrespective of any added terms. Accordingly, the addition of the dictionary term “filtration” and abbreviation “inc.” does not avoid a finding of confusing similarity. Cummins Turbo Technologies Limited v. Wang Tian,WIPO Case No. D2014-1381; Cummins Inc. v. Jamie Lent,WIPO Case No. D2015-0188. See generally WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8 (“where the relevant trademark is recognizable with the disputed domain name, the additions of other terms (whether descriptive, geographic, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”).
The Top-Level Domain of the disputed domain name, in this case “.com”, may be disregarded for the purposes of assessment under the first element, as it is viewed as a standard registration requirement. See WIPO Overview 3.0, section 1.11.1. Monster Energy Company, a Delaware Corporation v. J.H.M. den Ouden,WIPO Case No. D2016-1759; Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd,WIPO Case No. D2006-0762.
The Complainant has met its burden under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsThe Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant has specifically disavowed providing the Respondent with permission to use the disputed domain name or the Mark. There is no evidence that the Respondent has conducted any bona fide business under the disputed domain name or is commonly known by the disputed domain name. The Complainant has established a prima facie case in its favor, which shifts the burden of production on this point to the Respondent. PepsiCo, Inc v. Amilcar Perez Lista d/b/a Cybersor,WIPO Case No. D2003-0174. The Respondent, however, has failed to come forth with any evidence showing any rights or legitimate interests in the disputed domain name. Furthermore, the nature of the disputed domain name, being nearly identical to the Mark, including the use of the disputed domain name in connection with Respondent’s phishing emails, carries a high risk of implied affiliation. See WIPO Overview 3.0, section 2.5.1.
The facts and circumstances presented to the Panel demonstrate that the Respondent does not have any rights or legitimate interests in the disputed domain name. The Complainant has met its burden under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithUnder paragraph 4(b) of the Policy, bad faith may be established by any one of the following non-exhaustive scenarios:
(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 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has 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 on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.
The Panel finds the disputed domain name was registered and is being used in bad faith.
A simple Internet search, normally undertaken before registering a domain name, would have disclosed the Complainant’s Mark. Myer Stores Limited v. David John Singh,WIPO Case No. D2001-0763. The Mark is well known and distinctive. The disputed domain name incorporates the Mark entirely with the obvious intent by the Respondent of suggesting that the disputed domain name resolves to a website offering products sponsored by the Complainant. Common sense compels the conclusion that the Respondent was quite aware of the Complainant’s well-known Marks when registering and using the disputed domain name.
Any doubt is resolved by the fact that the Respondent’s website contained other of Complainant’s trademarks. Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455.
Moreover, the Complainant has alleged and submitted unrebutted evidence tending to show that the disputed domain name was utilized in connection with a phishing attempt to deceive Internet users and Complainant’s potential customers. National Westminster Bank plc. v. Sites / Michael Vetter,WIPO Case No. D2013-0870 (phishing constitutes bad faith use).
The current inactive status of the disputed domain name is irrelevant because the continued registration of the disputed domain name by the Respondent constitutes a threat hanging over the Complainant. That the disputed domain name does not currently resolve to an active website does not prevent a finding of bad faith under the circumstances of this case and the doctrine of passive holding. See WIPO Overview 3.0, section 3.3 and section 3.2.1. In fact, the current passive holding of the disputed domain name is further evidence of the Respondent’s bad faith registration and use.
Finally, it is difficult to conceive of any use that the Respondent might make of the disputed domain name without the Complainant’s consent that would not involve bad faith. Telstra Corporation, Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Verner Panton Design v. Fontana di Luce Corp,WIPO Case No. D2012-1909 (where the reputation of a complainant in a given mark is significant and the mark bears strong similarities to the disputed domain name, the likelihood of confusion is such that bad faith may be inferred); DPDgroup International Services GmbH & Co. KG v. Wise One, Wilson TECH,WIPO Case No. D2021-0109; and Monster Energy Company v. PrivacyDotLink Customer 116709 / Ferdinand Nikolaus Kronschnabl,WIPO Case No. D2016-1335.
The Complainant has met its burden under paragraph 4(a)(iii) of the Policy.
7. DecisionFor 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
William F. Hamilton
Sole Panelist
Date: September 19, 2021
1 The Complainant asserts a protectable interest in the expression CUMMINS FILTRATION. However, the United States Patent and Trademark Office Registration No. 3,878,201 for the combination of Complainant’s logo and word “Filtration” disclaims any exclusive use the word “filtration” aside from its use in combination with the logo. The Panel need not and does not reach the issue of whether Complainant may assert a protectable interest in the expression CUMMINS FILTRATION as this case is resolved relying solely on Complainant’s registered mark CUMMINS and treating “filtration” as a dictionary term.