The Complainant is Newell Brands Inc., United States of America (“United States”), represented by Polsinell PC, United States.
The Respondent is Angel Micheal, Krisvee Ventures, Netherlands.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 25, 2021. On August 26, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 27, 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 August 30, 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 August 31, 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 September 2, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 22, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 27, 2021.
The Center appointed Jane Lambert as the sole panelist in this matter on October 4, 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 Complainant is a United States public company which makes and sells a wide range of consumer goods ranging from rubbish bins to candles. According to the Complaint, its products are to be found in over 90 percent of American homes. It has registered the word NEWELL as a trade mark in plain text or stylized lettering in trade mark registries around the world. By way of example, it registered NEWELL for a range of goods in classes 16, 6, 8, 9, 11, and 20 in Germany on November 7, 1997 under registration number 39515502.
The disputed domain name was registered on January 7, 2021, and does not resolve to an active website. The Complainant has provided evidence that the disputed domain name has been used in connection to a fraudulent email scheme impersonating the Complainant.
5. Parties’ Contentions A. ComplainantThe Complainant requests the transfer of the disputed domain name on the following grounds:
- the disputed domain name is confusingly similar to a trade mark in which the complainant has rights;
- the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- the disputed domain name has been registered and is being used in bad faith.
As to the first ground, the Complainant points to its trade mark registrations for NEWELL. It submits that the disputed domain name is similar to each and every one of those registrations, the only differences being the addition of an extra “l” and the letters “co”. It cites several authorities where it was held that such differences were not enough to prevent a finding of confusing similarity between a disputed domain name and a complainant’s trade mark.
In respect of the second ground, the Complainant alleges that the Respondent has used the disputed domain name as an email address for fraudulent purposes. None of the circumstances listed in Paragraph 4(c) of the Policy applies. The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. Nor is the Respondent making a legitimate, noncommercial or fair use of the disputed domain name. To the best of the Complainant’s knowledge, the Respondent has never been known by the disputed domain name and the disputed domain name is not derived from the Respondent’s name. The Complainant denies that it has ever licensed or authorized the Respondent to register a domain name that incorporates its trade mark.
With regard to the third ground the Complainant submits that the examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. It alleges that the Respondent has used the disputed domain name to set up an email account at the disputed domain name and attempted to use that account to extort money from at least one of the Complainant’s connections. Copies of the email correspondence evidencing the attempt are attached to the Complaint as Annex 6.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsThe following provisions of the Policy are incorporated by reference into the contract to register the disputed domain name:
“You are required to submit to a mandatory administrative proceeding in the event that a third party (a ‘complainant’) asserts to the applicable Provider, in compliance with the Rules of Procedure, that
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.
In the administrative proceeding, the complainant must prove that each of these three elements are present.”
A. Identical or Confusingly SimilarThe first element is present.
The above-mentioned trade mark NEWELL which inter alia is registered in Germany under trade mark number 39515502, is a trade mark in which the Complainant has rights.
The disputed domain name incorporates that trade mark in its entirety adding an extra letter “l” and the letters “co”. The disputed domain name may not be identical to the NEWELL mark, but it is undoubtedly confusingly similar since the NEWELL mark remains clearly recognizable in the disputed domain name. The addition of the letters “l” and “co” do not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Accordingly, the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights.
B. Rights or Legitimate InterestsThe second paragraph of section 2.1 of the WIPO Overview 3.0 states:
“While the overall burden of proof in UDRP proceedings is on the complainant, 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.”
The Complainant has averred that it has neither licensed nor authorized the Respondent to register the disputed domain name. In view of the Complainant’s trade mark registrations and the goodwill likely to accrue to the NEWELL mark by virtue of the Complainant’s efforts, it is hard to see how anyone other than the Complainant could lawfully do so without such a license. There is no evidence that any of the circumstances in Paragraph 4(c) of the Policy applies. It follows that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Furthermore, the Complainant has provided evidence that the disputed domain name has been used in connection to a fraudulent email scheme; such use cannot confer rights or legitimate interests on the Respondent.
The Respondent has had ample opportunity to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name but has not done so. Accordingly, the Complainant has satisfied the second element.
C. Registered and Used in Bad FaithThe third element is present.
Paragraph 4(b) of the Policy lists a number of circumstances which if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The Respondent rightly points out that those circumstances are not exhaustive, but it would appear that the fourth of those circumstances applies here. The Panel has already held that the disputed domain name is confusingly similar to the Complainant’s mark. The use of that domain name to set up an email account intentionally to extract money satisfies the rest of Paragraph 4(b)(iv).
Alternatively, the use of a domain name to perpetrate a fraud is an act of bad faith in itself. Furthermore, in the context of this use, the reputation of the Complainant’s marks, and the choice of additional letters in the disputed domain name, it is clear that the Respondent targeted the Complainant and its trade marks in bad faith at the time of registration of the disputed domain name. That is enough to dispose of the dispute.
Accordingly, the disputed domain name has been registered and is being used in bad faith.
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,
Jane Lambert
Sole Panelist
Date: October 18, 2021