Complainant is American Machinery Works Inc., United States of America (“United States”), represented by Morrison Cohen LLP, United States.
Respondent is Registration Private, Domains by Proxy LLC, United States / Name Redacted.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 12, 2021. On September 13, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 14 and 15, 2021, the Registrar transmitted by email to the Center its verification responses 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 Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on September 20, 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 Respondent of the Complaint, and the proceedings commenced on September 28, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 18, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 21, 2021.
The Center appointed Phillip V. Marano as the sole panelist in this matter on November 11, 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 BackgroundEstablished in 1984, Complainant is an American packing supply company that offers packing products, equipment, and related services and repairs. Complainant asserts common law ownership of the AMW and AMW PACKAGING trademarks in the United States dating back to 1984.
Respondent registered the disputed domain name on March 26, 2021. At the time this Complaint was filed, the disputed domain name was inactive and was used to send phishing emails to Complainant’s customers.
5. Parties’ Contentions A. ComplainantComplainant asserts common law ownership of the AMW and AMW PACKAGING trademarks and has adduced evidence demonstrating online use of those trademarks in the United States dating back to at least January 1, 2014. The disputed domain name is confusingly similar to Complainant’s AMW PACKAGING trademark, according to Complainant, because the identical AMW trademark appears in the disputed domain name and Respondent deliberately substituted the letters “nn” for “m” in order to cause confusion.
Complainant further asserts that Respondent lacks any rights or legitimate interests in the disputed domain name based on: the lack of any evidence that Respondent is known by the AMW or AMW PACKAGING trademarks; and Respondent’s use of the disputed domain name to send phishing emails to Complainant’s customers using the names of Complainant’s employees.
Complainant argues that Respondent has registered and used the disputed domain name in bad faith for numerous reasons, including: Respondent’s deliberate registration of the disputed domain name as a typographical homoglyph of Complainant’s AMW trademark; Respondent’s use of the disputed domain name to send phishing emails to Complainant’s customers using the names of Complainant’s employees; and Respondent’s failure to reply to Complainant’s cease and desist correspondence.
B. RespondentRespondent did not reply to Complainant’s contentions.
6. Discussion and FindingsTo succeed in its Complaint, Complainant must establish in accordance with paragraph 4(a) of the Policy:
(i) The disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
Although Respondent did not reply to Complainant’s contentions, the burden remains with Complainant to establish by a balance of probabilities, or a preponderance of the evidence, all three elements of paragraph 4(a) of the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.3 (“[A] respondent’s default […] would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true. […] [P]anels have been prepared to draw certain inferences in light of the particular facts and circumstances of the case e.g., where a particular conclusion is prima facie obvious, where an explanation by the respondent is called for but is not forthcoming, or where no other plausible conclusion is apparent.”); see also The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064 (“The Respondent’s default does not automatically result in a decision in favor of the complainant. The Complainant must still prove each of the three elements required by Policy paragraph 4(a)”).
A. Identical or Confusingly SimilarTo establish unregistered or common law trademark rights for purposes of the Policy, Complainant must show that its mark has become a distinctive identifier which consumers associate with Complainant’s goods and/or services. Specific evidence demonstrating such acquired distinctiveness is required, rather than mere conclusory assertions of common law trademark ownership. Such evidence includes: (i) the duration and nature of use of the mark; (ii) the amount of sales under the mark; (iii) the nature and extent of advertising using the mark; (iv) the degree of actual consumer, public and media recognition; and (v) consumer surveys. In addition, the fact that a respondent has clearly targeted a complainant and their trademark can also support a finding of acquired distinctiveness and common law trademark rights for purposes of the Policy. WIPO Overview 3.0, section 1.3. See e.g. Roper Industries, Inc. v. VistaPrint Technologies Ltd.,WIPO Case No. 2014-1828 (Accepting unregistered trademarks for the purpose of the Policy where inter alia “[t]he disputed domain name is a close typo-variant of the Complainant’s trademark”, was “used as the return email address in fraudulent correspondence sent to Complainant, seeking to dupe the Complainant into sending money to a stated bank account”, and “Respondent failed to respond to the Complainant” cease and desist correspondence or the complaint).
Complainant submitted affidavit evidence establishing that: (i) Complainant has used Complainant’s AMW and AMW PACKAGING trademarks in connection with its products and services since its founding in 1984, which is nearly 40 years of continuous and uninterrupted trademark use; and (ii) Complainant has a strong presence on the Internet by way of Complainant’s commercial website at “www.amwpkg.com” which has prominently used and displayed the AMW and AMW PACKAGING trademarks since at least 2014. Moreover, Complainant submitted ample evidence in the form of numerous emails sent by Respondent from various [...]@annwpkg.com email addresses to Complainant’s customers attempting to impersonate Complainant’s employees and divert customer payments to bank accounts controlled by Respondent. Based on this evidence, the Panel accepts that Complainant has established unregistered or common law trademark rights for purposes of the Policy.
The only remaining question under the first element of the Policy is whether the disputed domain name is identical or confusingly similar to Complainant’s AMW and AMW PACKAGING trademarks. In this Complaint, the disputed domain name is confusingly similar to both Complainant’s AMW and AMW PACKAGING trademarks because, disregarding the “.com” generic Top-Level Domain (“gTLD”), the AMW trademark is represented in its entirety within the disputed domain name by the typographical homoglyph “annw” and the “packaging” element of Complainant’s AMW PACKAGING trademark is represented by the common abbreviation “pkg” within the disputed domain name. WIPO Overview 3.0, section 1.7 (“This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name. […] [I]n cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar [...].”). It is well established that domain names which consist of common, obvious or intentional misspellings of trademarks are considered to be confusingly similar for the purposes of the first element of the Policy. WIPO Overview 3.0, section 1.9 (“Examples of such typos include (i) adjacent keyboard letters, (ii) substitution of similar-appearing characters […], (iii) the use of different letters that appear similar in different fonts, (iv) the use of non-Latin internationalized or accented characters, (v) the inversion of letters and numbers, or (vi) the addition or interspersion of other terms or numbers.”). See e.g. Edmunds.com, Inc. v. Digi Real Estate Foundation, WIPO Case No. D2006-1043 (“This is clearly a ‘typosquatting’ case where the disputed domain name is a slight misspelling of a registered trademark to divert Internet traffic … In fact, the domain name comprises the Complainant’s trademark […] with a single misspelling of an element of the mark: a double consonant ‘s’ at the end.”). In regards to gTLDs, such as “.com” in the disputed domain name, they are generally viewed as a standard registration requirement and are disregarded under the first element. WIPO Overview 3.0, section 1.11.
In view of the evidence of unregistered or common law trademark rights adduced by Complainant, including Respondent’s clear-cut use of the disputed domain name to in furtherance of an illegal phishing scheme targeting Complainant’s customers, plus Respondent’s clear attempt at homoglyph typosquatting on the AMW trademark, the Panel concludes that Complainant has established the first element of the Policy.
B. Rights or Legitimate InterestsComplainant must make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name, shifting the burden of production on this element to Respondent to come forward with evidence demonstrating such rights or legitimate interests. Where, as in this Complaint, Respondent fails to come forward with any relevant evidence, Complainant is deemed to have satisfied the second element of the Policy. WIPO Overview 3.0, section 2.1.
UDRP panels have categorically held that use of a domain name for illegal activity, including the impersonation of the complainant, phishing, and other types of fraud, can never confer rights or legitimate interests on a respondent. Circumstantial evidence can support a credible claim made by a complainant asserting the respondent is engaged in such illegal activity, including that the respondent has improperly masked its identity to avoid being contactable. WIPO Overview 3.0, section 2.13. See e.g. Graybar Services Inc. v. Graybar Elec, Grayberinc Lawrenge,WIPO Case No. D2009-1017 (“Respondent has used the domain name to pretend that it is the Complainant and in particular to create false emails pretending that they are genuine emails coming from the Complainant and one of its senior executives.”). See also The Commissioners for HM Revenue and Customs v. Name Redacted,WIPO Case No. D2017-0501 (“In addition, the disputed domain names […] have had their web hosting suspended as a result of fraudulent activities. This is evidence of bad faith registration and use of the disputed domain names.”). To this end and as detailed below, the second and third elements of the Policy may be assessed together where clear indicia of bad faith suggests that there cannot be any respondent rights or legitimate interests. WIPO Overview 3.0, section 2.15.
In view of Respondent’s clear-cut use of the disputed domain name to in furtherance of an illegal phishing scheme targeting Complainant’s customers, the Panel concludes that Complainant has established the second element of the Policy.
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy proscribes the following non-exhaustive circumstances as evidence of bad faith registration and use of the disputed domain name:
(i) Circumstances indicating that Respondent has registered or Respondent has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to Complainant who is the owner of the trademark to a competitor of that Complainant, for valuable consideration in excess of Respondent’s documented out of pocket costs directly related to the disputed domain name; or
(ii) Respondent has registered the disputed domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
UDRP panels have categorically held that registration and use of a domain name for illegal activity — including impersonation, phishing, and other types of fraud — is manifestly considered evidence of bad faith within paragraph 4(b)(iv) of the Policy. WIPO Overview 3.0, section 3.1.4. Respondent’s wrongful use of Complainant’s trademarks to extort payments or information from unsuspecting and unwary customers, by using the disputed domain name for phishing activity, is considered abusive registration and use of the disputed domain name under the Policy.See CareerBuilder, LLC v. Stephen Baker, WIPO Case No. D2005-0251; The Boots Company, PLC v. The programmer adviser, WIPO Case No. D2009-1383. See e.g. WSI Holdings Ltd. v. WSI House,WIPO Case No. D2004-1089 (“Respondent appears to be engaged in ‘phishing’ for mistaken potential employees of the Complainant […] Respondent (1) has adopted a confusingly similar domain name, (2) it has used the trade dress of the Complainant’s website, and (3) it has sought to attract users to its site by creating confusion between its site and the Complainant’s. It has clearly engaged in activity which fulfils the bad faith requirements of Paragraph 4(b)(iv) of the Policy.”). See e.g. Go Daddy Operating Company, LLC v. Wu Yanmei, WIPO Case No. D2015-0177 (emails sent by the respondent from domain names using the complainant's trademark in an attempt to obtain complainant’s customer information was held to be use of the disputed domain name for a phishing scheme and consequently bad faith under the Policy); AB Electrolux v. Piotr Pardo,WIPO Case No. D2017-0368 (engaging in fraudulent email phishing activities through unauthorized use of a trademark for obtaining data or deriving information is construed as bad faith under the Policy).
Furthermore, the Panel concludes that failure by Respondent to answer Complainant’s cease and desist letter only further confirms “that Respondent was aware that it has no rights or legitimate interests in the disputed domain name, and that the disputed domain name has been registered and is being used in bad faith.” See America Online, Inc. v. Antonio R. Diaz,WIPO Case No. D2000-1460 (internal citations omitted). See also Spyros Michopoulos S.A. v. John Tolias, ToJo Enterprises,WIPO Case No. D2008-1003. Furthermore, the failure of Respondent to answer this Complaint or take any part in the present proceedings, in the view of the Panel, is another indication of bad faith on the part of Respondent. See Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,WIPO Case No. D2002-0787.
In view of Respondent’s clear-cut use of the disputed domain name to in furtherance of an illegal phishing scheme targeting Complainant’s customers, the Panel concludes that Complainant has established the third element 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
Phillip V. Marano
Sole Panelist
Date: December 2, 2021
1 Respondent appears to have used the name of a third party when registering the disputed domain name. In light of the potential identity theft, the Panel has redacted Respondent’s name from this decision. However, the Panel has attached as Annex 1 to this decision an instruction to the Registrar regarding transfer of the disputed domain name, which includes the name of Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this decision shall not be published due to the exceptional circumstances of this case. See Banco Bradesco S.A. v. FAST‑12785241 Attn. Bradescourgente.net / Name Redacted,WIPO Case No. D2009-1788.