The Complainant is CSI Leasing Mexico, S. de R.L. de C.V., Mexico, represented by 101domain.com, United States of America (“U.S.”).
The Respondent is Withheld for Privacy Purposes, Privacy Service Provided by Withheld for Privacy ehf, Iceland / Cristina Montalvo, U.S.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 8, 2021. On September 10, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. 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 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 September 21, 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 September 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 13, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 15, 2021.
The Center appointed Cherise Valles as the sole panelist in this matter on October 25, 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 BackgroundCSI Leasing Mexico, S. de R.L. de C.V. is a subsidiary of the Complainant’s U.S. company, CSI Leasing, Inc. The Complainant was founded in 2002 and has been operating in the Mexican leasing market for nearly two decades since the registration of its primary domain name
The Complainant maintains an extensive portfolio of over 50 domains consisting of ccTLD and gTLD variations of the trademarked term CSI LEASING including
The disputed domain name
The disputed domain name is used to offer competing services in the field of financial and leasing industry. Further, the Complainant has provided evidence that the disputed domain name has been used in connection to the sending of phishing email communications impersonating the Complainant and its employees. At the time of the decision, the disputed domain name does not resolve to an active website.
5. Parties’ Contentions A. The ComplainantThe Complainant asserts that each of the elements enumerated in paragraph 4(a) of the Policy and the corresponding provisions in the Rules have been satisfied. In particular, the Complainant asserts that:
The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
- The disputed domain name is confusingly similar to the Complainant’s registered CSI LEASING trademark, in light of the fact that it substantially incorporates the Complainant’s mark.
The Respondent lacks rights or legitimate interests in the disputed domain name.
- The Complainant states that the Respondent should be considered as having no rights or legitimate interests in the disputed domain name. The Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name that included its trademarks.
The disputed domain name has been registered and is being used in bad faith.
- The Complainant asserts that the disputed domain name was registered and is being used in bad faith. The mere fact of registration of a domain name that is confusingly similar or identical to a famous trademark by an entity that has no relationship to that mark is itself evidence of bad faith registration and use. Furthermore, the Respondent’s impersonating uses of the disputed domain name is clear evidence of bad faith.
The Complainant requests the Panel to issue a decision finding that the disputed domain name be transferred to the Complainant, in accordance with paragraph 4(i) of the Policy.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsThe Policy provides specific remedies to trademark owners against registrants of domain names where the owner of the mark (the Complainant) establishes each of the following elements:
(i) the domain name is identical or confusingly similar to a trademark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name was registered and is being used in bad faith.
The Complainant has the burden of proof in establishing each of these elements.
The Respondent has failed to file a Response in this proceeding. The Panel may draw appropriate inferences from the available evidence submitted by the Complainant.
A. Identical or Confusingly SimilarTo prove this element, the Complainant must have trademark rights and the disputed domain name must be identical or confusingly similar to the Complainant’s trademark.
The Complainant submits that the disputed domain name is confusingly similar to the trademark CSI LEASING in which it has rights. The disputed domain name substantially incorporates the CSI LEASING trademark in its entirety, but replaces the “a” with an “e”. Given the Complainant’s trademark registration as detailed above, the Complainant has established its trademark rights in CSI LEASING for the purposes of paragraph 4(a)(i) of the Policy.
As stated in section 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) “[a] domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element”.
The replacement of the “a” in the Complainant’s trademark with a double “e” in the disputed domain name, which sounds the same phonetically, does not prevent a finding of confusing similarity as the disputed domain name contains sufficiently recognizable aspects of the CSI LEASING trademark.
It is standard practice when comparing a disputed domain name to a Complainant’s trademark not to take the Top Level Domain (“TLD”) into account. See section 1.11.1 of the WIPO Overview 3.0, which states that the “applicable TLD in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and, as such, is disregarded under the first element of the confusing similarity test”.
In the light of the foregoing, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trademark and that paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy enumerates three non-exclusive ways in which a respondent may demonstrate rights or legitimate interests in a domain name (with “you” referring to the respondent):
“[a]ny of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your 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) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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 Respondent did not submit a Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b).
Previous UDRP panels have held that the complainant must establish a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production to the respondent. See, The American Automobile Association, Inc. v. PrivacyProtect.org / Domain Tech Enterprises and The American Automobile Association, Inc. v. PrivacyProtect.org /Tarun Kumar and The American Automobile Association, Inc. v. Publishier LLC, WIPO Case No. D2011-2202, where the panel notes that a complainant need only show a prima facie case that the respondent lacks rights or legitimate interests in a disputed domain name in order to shift the burden of production to the respondent. If the respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
On the evidence before the Panel, it appears that there has never been any relationship between the Complainant and the Respondent. The Respondent does not seem to be licensed, or otherwise authorized, be it directly or indirectly, to register or use the Complainant’s CSI LEASING trademark in any manner, including in, or as part of, the disputed domain name.
The Respondent has no rights or legitimate interests in the disputed domain name because the Complainant has not licensed nor allowed the Respondent to use the CSI LEASING trademark for any purpose. The Complainant became aware of the Respondent’s registration of the disputed domain name when the Complainant’s customers contacted it to report a user was spoofing the Complainant’s
The Complainant has many registered CSI LEASING trademarks and domain names that reinforce its global presence.
The Complainant submits that the Respondent is not a licensee, authorized agent of the Complainant, or in any other way authorized to use the Complainant’s trademark. Specifically, the Respondent is not an authorized reseller of the Complainant and has not been authorized to register and use the disputed domain name.
The Complainant asserts that the Respondent is unable to invoke any of the circumstances set out in paragraph 4(c) of the Policy in order to demonstrate rights or legitimate interests in the disputed domain name. In particular, the Respondent cannot assert that, prior to any notice of this dispute, he was using, or had made demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services in accordance with paragraph 4(c)(i) of the Policy.
The Respondent does not appear to have any legitimate connection to the “csi leesing” term. It appears that it registered the disputed domain name primarily for the purpose of disrupting the business of the Complainant, and to lure the Complainant’s customers to its disputed domain name. The Respondent is not commonly known by the disputed domain name. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name because it was suspended and does not currently resolve to an active website (Annex 8). The Respondent has not provided any evidence of bona fide use of, or preparations to use, the disputed domain name in connection with any legitimate offering of goods or services. Rather, the Respondent has attempted to divert potential customers away from the Complainant’s legitimate domain names by registering a domain name in which it has no rights or legitimate interests.
In light of the foregoing, the Panel finds that the Complainant has established an unrebutted prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and concludes that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant (the owner of the trademark or service mark) or to a competitor of the Complainant, for valuable consideration in excess of 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 online 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 its website or location.
The term “bad faith” is “broadly understood to occur where a respondent takes unfair advantage of, or otherwise abuses, a Complainant’s mark”. See section 3.1 of the WIPO Overview.
The Complainant asserts that the disputed domain name was registered and was being used in bad faith. Paragraph 4(b) of the Policy lists four factors which, in particular but without limitation, may be evidence of registration and use of a domain name in bad faith for the purposes of paragraph 4(a)(iii) of the Policy.
Previous UDRP panels have found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. See section 3.1.4 of the WIPO Overview 3.0. Previous UDRP panels have held that the “registration of a well-known trademark as a domain name is a clear indication of bad faith itself”. See The Gap, Inc. v. Deng Youqian,WIPO Case No. D2009-0113. Furthermore, the fact that the disputed domain name comprises a typo of Complainant’s trademark and its subsequent use suggest that the Respondent targeted the Complainant’s trademark in bad faith when registering the disputed domain name.
The Respondent has registered the disputed domain name which is very similar to the Complainant's well-known trademark, and that, in and of itself, is a clear indication of bad faith. Moreover, the Respondent was spoofing its email address to appear as if the sender was from “@csileasing.com” and not the actual email address “@csileesing.com” related to the disputed domain name. The Respondent also used the name of an employee of the Complainant’s company to confuse customers familiar with the CSI LEASING brand into paying fabricated invoices to an account unassociated with the Complainant (Annex 6). Since the registration of the disputed domain name, the Respondent has not used, nor prepared to use it, for any legitimate purpose. The Complainant states that it believes that the disputed domain name was registered and is being used in bad faith to impersonate the Complainant. The Panel finds that the Respondent has been misusing the disputed domain name primarily for the purpose of asking current and (possibly) prospective customers of the Complainant to pay false invoices.
In the light of the foregoing, the Panel concludes that the Complainant has satisfied its burden of showing bad faith registration and use of the disputed domain name 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
Cherise Valles
Sole Panelist
Date: November 8, 2021