ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION R. R. Donnelley & Sons Company v. Name Redacted Case No. D2023-2190 1. The Parties Complainant is R. R. Donnelley & Sons Company, United States of America ("United States"), represented by Loeb & Loeb, LLP, United States. Respondent is Name Redacted.1 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 May 18, 2023. On May 19, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 23, 2023, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the Disputed Domain Name. 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 May 31, 2023. In accordance with the Rules, paragraph 5, the due date for Response was June 20, 2023. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on June 21, 2023. 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Annex 1 to the Registrar as part of the order in this proceeding and has indicated Annex 1 to this decision shall not be published due to the exceptional circumstances of this case.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. page 2 The Center appointed Purvi Patel Albers as the sole panelist in this matter on June 27, 2023. 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, founded in 1864, is a leading global provider of marketing, packaging, print, and supply chain solutions. Complainant has over 25,000 clients, and 33,300 employees across 29 countries. In 2020, Complainant's net sales were USD 4.8 billion. Complainant has been using its "R. R. Donnelley & Sons Company" name and RR DONNELLEY mark since 1890, and the mark RRD since 2012 (the "Trademarks"). Complainant owns the domain names , and registered on April 22, 1994, and December 13, 1995, respectively. Both domain names are used as Complainant's corporate websites that provide information about Complainant's business and offerings. The domain name is used for corporate emails. Complainant also owns multiple trademark registrations, including United States Registration No. 2,842,428 for RR DONNELLEY, registered on May 18, 2004; United States Registration No. 4,706,196 for RRD registered on March 24, 2015; and United States Registration No. 5,851,845 for RRD registered on September 3, 2019. Hereinafter referred to "Complainant's Trademarks" or "Trademarks". The Disputed Domain Name was registered on February 13, 2023, and at the time of filing the Complaint, the Disputed Domain Name was inactive. 5. Parties' Contentions A. Complainant Complainant contends that the Disputed Domain Name is virtually identical or confusingly similar to its Trademarks because the Disputed Domain Name is a common misspelling of Complainant's Trademarks. Specifically, Respondent's substituted the first letter "l" with the letter "i" of the RR DONNELLY mark in the Disputed Domain Name. Complainant asserts that such an alteration to Complainant's Trademarks constitutes typosquatting and does not negate its confusing character. Complainant also asserts that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Disputed Domain Name was registered without Complainant's authorization or consent. Respondent is not commonly known by the Disputed Domain Name, nor are there any trademark applications or registrations in the name of Respondent anywhere in the world which incorporate the Trademarks. Furthermore, Respondent has not used, or prepared to use, the Disputed Domain Name in connection with a bona fide offering of goods and services. Additionally, Complainant asserts that the Disputed Domain Name was registered and is being used in bad faith. The Disputed Domain Name was registered long after Complainant established its rights in its Trademarks and with presumptive knowledge by Respondent of its Trademarks. Additionally, Complainant's investigation revealed that Respondent set up the Disputed Domain Name with a mail exchange, suggesting possible use of the Disputed Domain Name for phishing or fraud purposes. Furthermore, the contact information for Respondent in the WhoIs record for the Disputed Domain Name appears to be false or the subject of potential identity theft, which is indicative of a fraudulent representation at the time the Disputed Domain Name was registered. Complainant's investigation revealed the person and organization listed in the WhoIs record did not register the Disputed Domain Name or have any information about its registration or use. Second, the postal address for the Disputed Domain Name is listed in the WhoIs record as "Nashville state Tennessee code 37201, Nashville, TN, 37011," which appears false given its format. page 3 As relief, Complainant requests transfer of the Disputed Domain Name. B. Respondent Respondent did not reply to Complainant's contentions. 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."); 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 Complainant has satisfied the first element of paragraph 4(a) of the Policy. Ownership of a nationally 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 Complainant's Trademarks have been registered in the United States with priority dating back years before the Disputed Domain Name was registered by Respondent. The Panel finds that the Disputed Domain Name is confusingly similar to Complainant's Trademarks because, disregarding the ".com" generic Top-Level Domain ("gTLD"), a confusingly similar version of Complainant's Trademarks is contained in its entirety within the Disputed Domain Name. WIPO Overview 3.0, section 1.7, which states "[t]his 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[...]". GTLDs, such as ".com" in the Disputed Domain Name, are generally viewed as a standard registration requirement and are disregarded under the first element. WIPO Overview 3.0, section 1.11.1. In addition, 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 page 4 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."); see also Redbox Automated Retail, LLC d/b/a Redbox v. Milen Radumilo, WIPO Case No. D2019-1600. In view of Complainant's registrations for the Trademarks and Respondent's incorporation of a typosquatted version thereof in the Disputed Domain Name, the Panel concludes that Complainant has established the first element of the Policy. B. Rights or Legitimate Interests The Panel determines, having considered the evidence submitted, that Complainant has established a prima facie case that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Disputed Domain Name was registered many years after Complainant established its trademark rights in the Trademarks. Complainant has not authorized Respondent to use its Trademarks and Respondent's registration of the Disputed Domain Name without any relationship to Complainant or Complainant's Trademarks itself creates a strong presumption that Respondent lacks rights or legitimate interests in the Disputed Domain Name. See, e.g., Pfizer Inc. v. NA, WIPO Case No. D2005-0072. Even more, there is no evidence that Respondent is commonly known by the Disputed Domain Name or has used the Disputed Domain Name for a bona fide purpose. In fact, given the typosquatting nature of the Disputed Domain Name, the construction of the Disputed Domain Name is likely to mislead or cause confusion, which was likely the intent of Respondent when registering such typosquatting domain name - this cannot amount to fair use nor confer rights or legitimate interests upon Respondent. See Confederation Nationale Du Credit Mutuel - CNCM v. Jder Isow, WIPO Case No. D2022-3817. Thus, the second element of paragraph 4(a) of the Policy has been established. C. Registered and Used in Bad Faith Finally, the Panel finds that the Disputed Domain Name was registered and is being used in bad faith. The Disputed Domain Name was registered long after Complainant established its rights in its Trademarks and with knowledge by Respondent of its mark. The mere fact that Respondent has registered the Disputed Domain Name, which is virtually identical to Complainant's Trademarks, is sufficient to infer bad faith and suggests opportunistic bad faith. In any case, the fact that the Disputed Domain Name does not resolve to an active website does not prevent a finding of bad faith. WIPO Overview 3.0, section 3.3. In this case, (i) the Disputed Domain Name comprises a typosquatting version of Complainant's Trademark, (ii) there has been no response to the Complaint, and (iii) Complainant provided uncontested evidence that Respondent submitted false and misleading contact details when the Disputed Domain Name was registered; therefore, it is impossible to conceive of any good faith use to which the Disputed Domain Name could be put. Additionally, Complainant alleges that its investigation revealed that the Respondent set up the Disputed Domain Name with a mail exchange, which suggests possible use of the Disputed Domain Name for phishing or fraud purposes. See The Depository Trust & Clearing Corporation v. Guillaume, Guillaume Kuffler, WIPO Case No. D2020-0663. See WIPO Overview 3.0, section 3.4. The fact that Respondent may have committed identity theft and submitted false and misleading contact details when it registered the Disputed Domain Name is further evidence of Respondent's bad faith registration. See e.g. Action Instruments, Inc. v. Technology Associates, WIPO Case No. D2003-0024 page 5 ("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."); and Realm Entertainment Limited v. Ahmet Turk, WIPO Case No. D2015-0965. In the Panel's view there is thus no other plausible explanation why the Respondent registered the Domain Names, other than the Respondent being aware of Complainant and its Trademarks. Accordingly, Complainant has established the third element of paragraph 4(a)(iii) 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. /Purvi Patel Albers/ Purvi Patel Albers Sole Panelist Date: July 11, 2023
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