The Complainant is Alfa Laval Corporate AB, Sweden, represented by Advokatbyrån Gulliksson AB, Sweden.
The Respondent is Withheld for Privacy Purposes, Privacy Service Provided by Withheld for Privacy ehf, Iceland / Sunny Obed, Nigeria.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 7, 2021. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. Also on the same day, 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 September 13, 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 September 16, 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 17, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 7, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 11, 2021.
The Center appointed Nicholas Weston as the sole panelist in this matter on October 15, 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 is a company incorporated in Sweden that operates a business in the field of heat transfer, separation and fluid handling across many industries. The Complainant holds a portfolio of registrations for the trademark ALFA LAVAL including United States of America trademark registration number 0764251, registered on February 4, 1964.
The Complainant owns several domain names that incorporate its trademark including the domain name
The Disputed Domain Name
The Complainant cites its Swedish Trademark Registration No. 6089 registered on December 13, 1897 and numerous other registrations around the world, for the mark ALFA LAVAL as prima facie evidence of ownership.
The Complainant submits that the mark ALFA LAVAL is well known and that its rights in that mark predate the Respondent’s registration of the Disputed Domain Name
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it resolves to an inactive webpage.
Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, contrary to the Policy and Rules and submits that the Respondent had used the Disputed Domain Name in fraudulent phishing “by sending emails via <@aflalaval.com>” to impersonate the Complainant.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsUnder paragraph 4(a) of the Policy, the Complainant has the burden of proving the following:
(i) that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) that the Disputed Domain Name has been registered and is being used in bad faith.
The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark ALFA LAVAL in numerous jurisdictions including Sweden, the United States and many other jurisdictions. The requirements of the first element for purposes of the Policy may be satisfied by a trademark registered in any country (see Thaigem Global Marketing Limited v. Sanchai Aree,WIPO Case No. D2002-0358).
Turning to whether the Disputed Domain Name is identical or confusingly similar to the ALFA LAVAL trademark, the Panel observes that the Disputed Domain Name comprises: (a) the Complainant’s trademark ALFA LAVAL; (b) with the letters “l” and “f” reversed in the first word of the trademark; (c) followed by the gTLD “.com”.
It is well-established that the gTLD used as technical part of a domain name may be disregarded (see Autodesk v. MumbaiDomains,WIPO Case No. D2012-0286). The relevant comparison to be made is with the second-level portion of the Disputed Domain Name, specifically: “aflalaval”.
It is also well established that where, on a side-by-side comparison of the Disputed Domain Name and the textual components of the relevant trademark (to assess whether the mark is recognizable within the Disputed Domain Name) if at least a dominant feature of the relevant mark is recognizable in the Disputed Domain Name, then the Disputed Domain Name will normally be considered confusingly similar to that mark for purposes of UDRP standing (see: WIPO Overview of WIPO Panel Views on Selected URDP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7).
In the absence of a reply, and in line with previous UDRP panel typosquatting decisions that have considered a domain name comprised of a trademark with two letters transposed or inverted, the Panel finds the Disputed Domain Name consists of an obvious and intentional misspelling of the Complainant’s trademark of the type that is considered by many previous panels to be confusingly similar to the relevant mark for purposes of the first element. (see: Alfa Laval AB, Alfa Laval Corporate AB v. Wan-Fu China, Ltd.,WIPO Case No. D2007-1837; Alfa Laval Corporate AB v. Prince, Michael, PMUJ,WIPO Case No. D2017-1613; WIPO Overview 3.0, section 1.9).
The Panel finds that the Complainant has established paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy lists the ways that the Respondent may demonstrate rights or legitimate interests in the Disputed Domain Name. The Policy also places the burden on the Complainant to establish the absence of the Respondent’s rights or legitimate interests in the Disputed Domain Name. 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 World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles,WIPO Case No. D2000-1306; WIPO Overview 3.0, section 2.1).
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because (i) the Disputed Domain Name is parked; (ii) the Respondent has not acquired or owned any trademark or service mark rights in the name ALFA LAVAL, and has not been commonly known by the name ALFA LAVAL; and (iii) the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain to misleadingly divert consumers or to impersonate an employee of the Complainant for the purpose of unlawful phishing.
Where the composition of the Disputed Domain Name consists of a misspelled trademark, the potential for phishing or fraud, in this Panel’s view carries “a risk of affiliation” that other UDRP panels have not considered fair use as it “effectively impersonates or suggests sponsorship or endorsement by the trademark owner” (see WIPO Overview 3.0, section 2.5.1).
Panels have also categorically held that the use of a Disputed Domain Name for illegal activity such as phishing, impersonation/passing off, or other types of fraud, can never confer rights or legitimate interests on a respondent (see WIPO Overview 3.0, section 2.13.1).
The Panel notes the evidence that the Disputed Domain Name in this proceeding resolves to a dormant webpage and has been used to impersonate an employee of the Complainant in email communications. The Panel is satisfied that the Complainant has put forward a prima facie case that the Respondent lacks rights or legitimate interests. In the absence of a Response by the Respondent, this Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
The Panel finds for the Complainant on the second element of the Policy.
C. Registered and Used in Bad FaithThe third element of the Policy that the Complainant must also demonstrate is that the Disputed Domain Name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both of these conjunctive requirements.
The Panel finds that the evidence in the case shows the Respondent registered and has used the Disputed Domain Name in bad faith.
On the issue of registration, taking into account the composition of the Disputed Domain Name and the content of the website it resolves to, the Panel is satisfied that the Respondent knew of the Complainant’s trademark ALFA LAVAL when it registered the Disputed Domain Name (see Alfa Laval AB, Alfa Laval Corporate AB v. Wan-Fu China, Ltd., supra (which accepted that “the repute of the Complainant’s trade mark makes it more probable than not that the Respondent had knowledge of it prior to registering a misspelling of the trade mark as a domain name”); Alfa Laval Corporate AB v. Prince, Michael, PMUJ, supra; (“the Panel finds that the Respondent’s choice of the terms “aifalaval” and “alfalavai” for the disputed domain names was deliberate, and in full knowledge of the Complainant’s ALFA LAVAL trademark”); Alfa Laval Corporate AB v. Contact Privacy Inc. Customer 0148561631 / Erin Dickey, EDickey Ltd,WIPO Case No. D2017-1617 (“the Domain Name comprises a typo of a widely-known mark”).
This Panel accepts, as the basis of a further finding of bad faith, the Complainant’s uncontested submission that there is no reason for Respondent to have registered the Disputed Domain Name other than to trade off the Complainant’s reputation of the Complainant’s trademark (see: Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403 (which held that the domain name in question was “so obviously connected with the Complainant and its products that its very use by someone with no connection with Complainant suggests opportunistic bad faith”).
The diversion of Internet users is also a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous UDRP decisions (see L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc.,WIPO Case No. D2005-0623; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163 and Hoffmann-La Roche Inc. v. Samuel Teodorek,WIPO Case No. D2007-1814).
Further, a gap of several years between registration of a complainant’s trademark and respondent’s registration of a disputed domain name (containing the trademark) can indicate bad faith registration (see Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415). In this case, the Disputed Domain Name was registered more than 123 years after the Complainant established trademark rights in the ALFA LAVAL mark.
On the issue of use, the Complainant’s evidence is that the Disputed Domain Name does not currently resolve to an active website. Previous UDRP panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. “While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the ‘passive holding’ doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put” (See WIPO Overview 3.0, section 3.3). This Panel notes that the evidence is that all four of these four factors are present in this proceeding. This Panel finds that use of the Disputed Domain Name to resolve to a passive website is also evidence of bad faith.
There is also evidence that the Disputed Domain name has been used for fraud or phishing to impersonate an employee of the Complainant. Past panels have held that the use of a domain name for per se illegitimate activity such as phishing is considered to be evidence of bad faith (see WIPO Overview 3.0 at Section 3.1.4).
In the absence of any evidence to the contrary, this Panel accepts the Complainant’s evidence and finds that the Respondent has taken the Complainant’s trademark ALFA LAVAL and incorporated a version of it with two letters transposed, in the Disputed Domain Name, without the Complainant’s consent or authorization, for the very purpose of capitalizing on the reputation of the trademark to infringe upon the Complainant’s rights.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of 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
Nicholas Weston
Sole Panelist
Date: October 27, 2021