ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Gripple Limited v. John Terry Douglas Case No. D2022-2955 1. The Parties The Complainant is Gripple Limited, United Kingdom, represented by BRB Legal, India. The Respondent is John Terry Douglas, Canada. 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 August 10, 2022. On August 10, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 11, 2022, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center sent an email communication to the Complainant on August 17, 2022 providing information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 22 and 29, 2022. 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 1, 2022. In accordance with the Rules, paragraph 5, the due date for Response was September 21, 2022. The Center received an email communication from the Respondent on August 23, 2022. However, the Respondent did not submit a formal response. The Center appointed Pablo A. Palazzi as the sole panelist in this matter on September 27, 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. page 2 4. Factual Background Since 1984, the Complainant has been a manufacturer of a device to join two wires together. In 1988, the Complainant started to use the trademark GRIPPLE (formed by a combination of "grip" and "pull") to identify this product. The Complainant has used the GRIPPLE trademark in commerce in India since 2006, and the Complainant holds several registered trademarks in India for GRIPPLE, including Reg. No. 1414293 for "connectors and fastening devices, all for joining and securing wires, ropes and cables.", registered on January 17, 2006. The Complainant has also registered the GRIPPLE trademark in various countries in North America, South America, and Europe. The Complainant has owned the domain name since 1996, and uses that domain name to host a commercial website selling its GRIPPLE fastener products. The disputed domain name was registered on June 22, 2022, and was used to impersonate an employee of the Complainant until it was suspended by the Registrar. 5. Parties' Contentions A. Complainant The Complainant requests that the disputed domain name be transferred to the Complainant. According to the Complainant, each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case. First, the Complainant submits that the disputed domain name is identical or confusingly similar to the GRIPPLE trademark registrations of the Complainant. Second, the Complainant argues that the Respondent has neither rights nor legitimate interests in the disputed domain name. Third, the Complainant submits that the disputed domain name was registered and is being used in bad faith. The Complainant states that "on June 23, 2022, an electronic mail account of an employee of the Complainant was hacked. The hacker contacted one of the Complainant's customers, indicating that Gripple's account details had been changed with the view to redirect the funds from the customer to the hacker's account while copying a Management Accountant, but the email address used included the disputed domain name. The issue only came to light when the customer emailed the Complainant employee using her correct address to say the payment was being made to the 'new' bank account. The employee then stated that the account details were incorrect and escalated the issue within the organization. The Complainant took steps to inform the police and also the Registrar about the fraudulent activities undertaken using the disputed domain. The Registrar, after going through the documents and conducing its internal investigation has suspended the disputed domain name". The Complainant requests the transfer of the disputed domain name. page 3 B. Respondent The Respondent did not reply to the Complainant's contentions. However an email was received stating the following: "Hello Team., My legal advisor is interested in this case, Please can this be transferred to afghanistan? I can not get a good justice at western court of law. I wait for your kind response." 6. Discussion and Findings Paragraph 4(a) of the Policy lists three elements which a complainant must satisfy in order to succeed. The Complainant must satisfy that: (i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of such domain name; and (iii) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The first element that the Complainant must establish is that the disputed domain name is identical or confusingly similar to the Complainant's trademark. The Complainant holds several valid GRIPPLE trademark registrations, which precede the registration of the disputed domain name. The disputed domain name is confusingly similar to the Complainant's trademarks since it merely reproduces the GRIPPLE trademarks with the addition of the final letter "e". The disputed domain name almost incorporates the Complainant's GRIPPLE trademark in its entirety. As numerous UDRP panels have held, where at least a dominant feature of the relevant trademark is recognizable in the domain name, it is sufficient to establish that a domain name is identical or confusingly similar to a registered trademark. The Panel finds the first element of the Policy has therefore been met. B. Rights or Legitimate Interests Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such a prima facie case is made, the respondent carries the burden of production of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 2.1. Paragraph 4(c) of the Policy lists the ways that a respondent may demonstrate rights or legitimate interests in the domain name: (i) before any notice of the dispute, the respondent's 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 page 4 (ii) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or (iii) the respondent is 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. In this case, the Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. In particular, the Respondent has not submitted any arguments or evidence to rebut the Complainant's contention that it has never authorized, licensed or permitted the Respondent to use the GRIPPLE trademark in any way. The Respondent is also not using the disputed domain name in connection with any bona fide offering of goods or services (see next section in this decision), nor is the Respondent making a legitimate noncommercial or fair use of the disputed domain name. Rather, the illegal use of the disputed domain name can never confer rights or legitimate interests upon the Respondent. Section 2.13 of the WIPO Overview 3.0. Therefore, the Panel concludes that the Respondent does not have rights or a legitimate interests in the disputed domain name within the meaning of the Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. In the present case, the Panel finds that the Respondent was necessarily aware of the Complainant and its trademark at the time of the registration of the disputed domain name, since the disputed domain name has been used to create an email address from which the Respondent has sent fraudulent emails. The Respondent attempted to impersonate the Complainant, and the Complainant contends that this fraudulent conduct is sufficient to find a bad faith use of the disputed domain name. The Panel is of the view that the use of a domain name for illegitimate activity is considered as manifest evidence of bad faith (see WIPO Overview 3.0, section 3.4; Colas, Société Anonyme v. Concept Bale, WIPO Case No. D2020-2733; and COLAS, Société Anonyme v. Elliott Murray, WIPO Case No. D2020-2417). Considering the above evidence and findings, the Panel therefore finds that the Respondent registered and is using the disputed domain name in bad faith and that paragraph 4(a)(iii) of the Policy has been satisfied. 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 the Complainant. /Pablo A. Palazzi/ Pablo A. Palazzi Sole Panelist Date: October 11, 2022
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