ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Championx USA Inc. v. Name Redacted Case No. D2022-1299 1. The Parties Complainant is Championx USA Inc., United States of America ("United States"), represented by TechLaw Ventures, PLLC, United States. Respondent is Name Redacted. 2. The Domain Name and Registrar The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 8, 2022. On April 12, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 13, 2022, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that 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 Respondent of the Complaint, and the proceedings commenced on April 26, 2022. On April 28, 2022, May 3, 2022 and May 18, 2022, a third party contacted the Center, stating that its identity and contact details had been used without its knowledge to register the disputed domain name.1 1 Respondent appears to have used the name and contact details 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 page 2 In accordance with the Rules, paragraph 5, the due date for Response was May 16, 2022. Respondent did not file a Response. Accordingly, the Center commenced the panel appointment process on May 18, 2022. The Center appointed Phillip V. Marano as the sole panelist in this matter on May 25, 2022. 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 Background Complainant is Championx USA, Inc., formerly known as Apergy Corporation prior to the merger of Apergy Corporation and Championx Holding, Inc. in 2020, a United States-based company in chemistry solutions and highly engineered equipment and technologies that help companies drill for and produce oil and gas safely and efficiently around the world. Complainant owns valid and subsisting registrations for the CHAMPIONX trademark in numerous countries, including the trademark for CHAMPIONX & design (Reg. No. 402020171953U in Singapore, with the earliest priority dating back to December 11, 2019. Complainant also owns pending trademark applications for the trademark CHAMPIONX & design (Appl. Ser. Nos. 90/455,610 and 88/468,316), filed June 11, 2019. Respondent registered the disputed domain name on March 24, 2021. At the time this Complaint was filed, the disputed domain name failed to resolve to any website content. 5. Parties' Contentions A. Complainant Complainant asserts ownership of the CHAMPIONX trademark and has adduced evidence of trademark registrations in a number of countries around the world, including Singapore and the Philippines, as well as pending trademark applications in the United States, with earliest priority dating back to December 11, 2019. The disputed domain name is confusingly similar to Complainant's CHAMPIONX trademark, according to Complainant, because it is a misspelling of Complainant's CHAMPIONX trademark, with the substitution of the letter "q" for the letter "p." Complainant further asserts that Respondent lacks any rights or legitimate interests in the disputed domain name based on: the lack of evidence that Respondent is commonly known by the disputed domain names; the lack of evidence that Respondent has made use of, or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services; and Respondent's use of misleading WhoIs information. Complainant argues that Respondent has registered and used the disputed domain name in bad faith based on: Respondent's passive holding of the disputed domain name; and Respondent's use of misleading WhoIs information. B. Respondent Respondent did not reply to Complainant's contentions. Annex 1 to this Decision shall not be published due to the exceptional circumstances of this case. See Banco Bradesco S.A. v. FAST12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788. page 3 6. Discussion and Findings To 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 [.] UDRP panels 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 Similar Ownership of a nationally or regionally registered trademark serves as prima facie evidence that Complainant has trademark rights for the purposes of standing to file this Complaint. WIPO Overview 3.0, section 1.2.1. Complainant submitted evidence that the CHAMPIONX trademark was applied for in the United States, with a filing date of June 11, 2019. Pending trademark applications alone do not generally establish trademark rights within the meaning of paragraph 4(a)(i) of the Policy, because they have not yet been approved or matured into registrations. WIPO Overview 3.0, section 1.1.4 However, Complainant also submitted evidence that the CHAMPIONX trademark has been registered in Singapore with priority dating back to December 11, 2019, which predates the disputed domain name's registration by Respondent. Thus, the Panel finds that Complainant's rights in the CHAMPIONX trademark have been established pursuant to the first element 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 CHAMPIONX trademark. In this Complaint, the disputed domain name is confusingly similar to Complainant's CHAMPIONX trademark because, disregarding the ".com" generic Top-Level Domain ("gTLD"), the dominant features of the CHAMPIONX trademark are recognizable in the disputed domain. WIPO Overview 3.0, section 1.7. ("This test typically involves a sideby-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..."). In regards to gTLDs, such as ".com" in the disputed domain names, they are generally viewed as a standard registration requirement and are disregarded under the first element. WIPO Overview 3.0, section 1.11. Furthermore, 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, 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: page 4 a double consonant "s" at the end.") See e.g.General Electric Company v. mr domains (Marcelo Ratafia) Case No. D2000-0594 (August 28, 2000) ("In the Panel's opinion 'www-' used in this context is a generic term which does nothing to reduce the potential for confusion, and therefore the panel is of the opinion that the Domain Names are for all intents and purposes identical to the registered trademark.") In view of Complainant's registration for the CHAMPIONX trademark and Respondent's clear attempt at typosquatting on the CHAMPIONX trademark, the Panel concludes that Complainant has established the first element of the Policy. B. Rights or Legitimate Interests Complainant 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. To that end, it is evident that Respondent, identified by WhoIs data as a third-party victim of identity theft unrelated to Respondent, is not commonly known by the disputed domain name or Complainant's CHAMPIONX trademark. Moreover, passively holding a domain name in and of itself does not constitute a bona fide offering of goods or services. Philip Morris USA Inc. v. Gabriel Hall, WIPO Case No. D2015-1779. In view of the absence of any evidence supporting any rights or legitimate interests in the disputed domain name, Respondent's use of false WhoIs information belonging to an unrelated third party, and Respondent's passive holding of the disputed domain name, the Panel concludes that Complainant has established the second element of the Policy. C. Registered and Used in Bad Faith Paragraph 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. Passively holding a domain name does not prevent a finding of bad faith. WIPO Overview 3.0, section 3.3. This includes domain names that do not resolve to any website content. Where a domain name is being passively held, as alleged in this Complaint, bad faith registration and use exists based upon: (i) the degree of distinctiveness or reputation of the complainant's mark; (ii) the failure of the respondent to submit any response or offer any credible evidence of rights or legitimate interests; (iii) the respondent's concealing its identity or use of false contact details; and (iv) the implausibility of any good faith use which the domain page 5 name may be put. See Id. See also Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 ("A remedy can be obtained under the Policy only if those circumstances show that the Respondent's passive holding amounts to acting in bad faith.") Complainant did not proffer specific arguments or evidence regarding the degree of distinctiveness or reputation of its CHAMPIONX trademark. However, Respondent has failed to submit any response or credible evidence of its legitimate interests in the disputed domain name, and Respondent used false WhoIs information (misappropriated from an unrelated third party) to register the disputed domain name. Under such circumstances, coupled with the typosquatted nature of the disputed domain name (as discussed below), the Panel views any potential good faith uses by Respondent as most likely implausible. The act of "typosquatting" or registering a domain name that is a common misspelling of a mark in which a party has rights has often been recognized as evidence of bad faith registration per se. WIPO Overview 3.0, section 3.2.1 ("Particular circumstances UDRP panels take into account in assessing whether the respondent's registration of a domain name is in bad faith include: (i) the nature of the domain name (e.g., a typo of a widely known mark ."). See also Paragon Gifts, Inc. v. Domain.Contact, WIPO Case No. D2004-0107 (citing National Association of Professional Baseball Leagues, d/b/a Minor League Baseball v. Zuccarini, WIPO Case No. D2002-1011); ESPN, Inc. v. XC2, WIPO Case No. D2005-0444 (finding that the practice of "typosquatting", of itself, is evidence of the bad faith registration of a domain name). The Panel concurs with this approach. . Thus, the Panel infers Respondent's bad faith based on the fact that the Respondent is trying to gain profit of mistakes such as typographical errors made by Internet users, when inputting the expression "chamqionx" instead of "championx" into a web browser. Prior WIPO UDRP panel determinations agree, the use of false registration data in connection with a disputed domain name further supports a finding of bad faith registration and use. See e.g. Action Instruments, Inc. v. Technology Associates, WIPO Case No. D2003-0024 (Providing false contact information violates paragraph 2 of the Policy, which requires a registrant to represent that the statements it "made in [its] Registration Agreement are complete and accurate." Maintaining that false contact information in the WHOIS records (which can easily be updated at any time) after registration constitutes bad faith use of the domain name because it prevents a putative complainant from identifying the registrant and investigating the legitimacy of the registration."); Royal Bank of Scotland Group v. Stealth Commerce, WIPO Case No. D2002-0155; Home Director, Inc. v. HomeDirector, WIPO Case No. D2000-0111. Respondent also evidently registered the disputed domain name using the identity of another party who has no actual connection to the disputed domain name. The use of false registration data in connection with the disputed domain name (and in this case, broader identity theft used to perpetrate fraud) further supports a finding of bad faith registration and use. See, e.g., Action Instruments, Inc v. Technology Associates, WIPO Case No. D2003-0024. In view of Respondent's typosquatting on Complainant's CHAMPIONX trademark, Respondent's passive holding of the disputed domain name, and Respondent's use of false registration data in connection with a disputed domain name - specifically the identify of another party who has no actual connection to the disputed domain name - the Panel concludes that Complainant has established the third element of the Policy. 7. Decision For 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 be transferred to Complainant. /Phillip V. Marano/ Phillip V. Marano Sole Panelist Date: June 2, 0222
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