ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Millicom International Cellular S.A. v. Gina Choi Case No. D2023-3785 1. The Parties 1.1 The Complainant is Millicom International Cellular S.A., Luxembourg, represented by Gottlieb, Rackman & Reisman, PC, United States of America (the "Complainant"). 1.2 The Respondent is Gina Choi, United States of America (the "Respondent"). 2. The Domain Name and Registrar 2.1 The disputed domain name (the "Disputed Domain Name") is registered with NameCheap, Inc. (the "Registrar"). 3. Procedural History 3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 11, 2023. On September 12, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 12, 2023, 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 (REDACTED FOR PRIVACY) and contact information in the Complaint. The Center sent an email communication to the Complainant on September 20, 2023, 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, 2023. 3.2 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"). 3.3 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 26, 2023. In accordance with the Rules, paragraph 5, the due date for Response was October 16, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 30, 2023. page 2 3.4 The Center appointed Ike Ehiribe as the sole panelist in this matter on November 6, 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 4.1 The Complainant Miillicom International Cellular S.A. is a Public Liability Company located in Luxembourg and is described as a leading provider of fixed line and mobile telecommunications services as well as financial services. It is said the Complainant currently serves 45 million customers all over the world and services more than 50 million subscribers. The Complainant's fame and commercial strength is reflected in its annual global revenue for the year 2022 said to be in excess of USD 5.6 billion. The Complainant it is said has invested millions of dollars in advertising and promoting its brand and has established a massive online presence. The Complainant operates an interactive website accessible at the domain name and has thousands of followers on Twitter, Facebook, and Instagram. The Complainant has been operating with the MILLICOM name in the US and around the world in connection with its technological, telecommunications and financial products and services since 1990. The Complainant owns a valid and subsisting trademark registration in the United States with registration number 4423670 registered on October 29, 2013; in addition to other trademark registrations in other countries such as Argentina, Bolivia, Brazil, Chile, Columbia, Costa Rica, Ecuador, El Salvador, the European Union, Guatemala Honduras, Nicaragua Paraguay Peru, and Uruguay. The Complainant has also been involved in previous UDRP proceedings namely, Millicom International Cellular SA v. Privacy service provided by Withheld for Privacy ehf / Mathias Iwu, WIPO Case No. D2022-1510, Millicom International Cellular S.A. v. PGI Holding, WIPO Case No. D2014-0158 and Millicom International Cellular S.A., Colombia Móvil SA ESP v. Domain Admin, PrivacyProtect.org / Reinaldo Hernández, WIPO Case No. DCO2013-0002. 4.2 According to the WhoIs record, the Disputed Domain Name was registered on May 12, 2023. The Disputed Domain Name currently resolves to a page that cannot be reached. 5. Parties' Contentions A. Complainant 5.1 The Complainant asserts that the Disputed Domain Name is confusingly similar to the Complainant's MILLICOM trademark in that the Disputed Domain Name wholly incorporates the Complainant's well-known trademark. The Complainant further contends that using the word "group" in association with the MILLICOM trademark would give consumers the impression that the Disputed Domain Name is associated with all of the Complainant 's brands. The Complainant therefore submits that the addition of a descriptive word such as "group" does not inhibit a finding of confusing similarity following Millicom International Cellular S.A. v. Privacy Service provided by Withheld for Privacy/ Mathias Iwu, supra as the Complainant's MILLICOM trademark is clearly recognisable in the Disputed Domain Name. 5.2 The Complainant also contends that the Respondent has no rights or legitimate interests in the Disputed Domain Name following the provisions in paragraph 4(c) of the Policy in that the Complainant never licensed, nor authorised nor otherwise sanctioned the Respondent's use of the MILLICOM trademark for any purpose. Secondly, there is nothing to indicate that the Respondent has ever been known by or referred to by a name wholly consisting of or incorporating the Complainant's MILLICOM trademark. Thirdly, it is submitted that the Respondent's use of the Disputed Domain Name and of a corresponding email address in the context of scamming Internet users by sending fake job offers to obtain confidential information from individuals cannot confer rights or legitimate interests on the Respondent following Bantrel Co v. Registration Private, Domains By prox, LLC/Line Gagnon, WIPO Case No. D2022-2901. See also in this regard, CooperVision International Limited, Cooper Vision, Inc. v. Domains By Proxy, LLC/Vision Jobs, WIPO Case No. D2021-2840. Finally, it is further asserted that there is no evidence that the Respondent has made any bona fide commercial use of the MILLICOM trademark. page 3 5.3 As regards the question of bad faith registration and use, the Complainant contends that the Respondent's bad faith is primarily demonstrated by the inclusion of the Complainant's famous MILLICOM trademark in which the Complainant has enjoyed exclusive rights for more than thirty years. Secondly, it is submitted that at the time the Disputed Domain Name was registered the Respondent undoubtedly knew of the Complainant's MILLICOM trademark and knew that it had no rights or legitimate interests in the Disputed Domain Name. It is submitted that such conduct is indicative of bad faith registration and use following Philip Morris USA Inc. v Daniel Iannotte, WIPO Case No. D2015-0381, a previous UDRP decision pertaining to the passive holding of a domain name incorporating the famous MARLBORO trademark. In addition it is argued that the Respondent could not have been unaware of the Complainant's use of its MILLICOM trademark in connection with telecommunications and financial services prior to creating the Disputed Domain Name, this is because the Respondent is engaged in the act of impersonating the Complainant's staff and using scam emails sent from the Disputed Domain Name to obtain sensitive or confidential personal information from Internet users which is further evidence that the Respondent registered and is using the Disputed Domain Name in bad faith in furtherance of an unlawful and fraudulent scheme. See in this regard previous UDRP decisions including Fox Media LLC v. Bill Biersdorf, WIPO Case No. D2022-4600. B. Respondent 5.4 The Respondent did not reply to the Complainant's contentions; therefore, the Panel shall draw such inferences from the failure of the Respondent to reply as it deems appropriate. 6. Discussion and Findings 6.1 Under paragraph 4(a) of the Policy, to succeed in the administrative proceeding the Complainant must prove that: i) the Disputed Domain Name is identical and confusingly similar to the trademark or service mark of the Complainant; ii) the Complainant has no rights or legitimate interest in respect of the Disputed Domain Name; and iii) the Disputed Domain Name has been registered and is being used in bad faith. 6.2 As is expressly stated in the Policy the Complainant must establish the existence of each of these three elements in any administrative proceeding. A. Identical or Confusingly Similar 6.3 This Panel finds and accepts that the Complainant is a famous and well-known telecommunications and financial services provider in many countries including the United States of America. The Panel also accepts that the Complainant owns several trademark registrations as clearly indicated in the list of international trademarks herewith attached. In the circumstances, the Panel finds that upon a visual examination of the Disputed Domain Name is clearly confusingly similar to the Complainant's MILLLICOM trademark. Evidently, the Disputed Domain Name wholly incorporates the Complainant's MILLICOM trademark. The Panel further accepts that the addition of the word such as "group" does nothing to inhibit a confusing similarity finding. Furthermore, the Panel finds that the addition of the gTLD extension ".com" equally does nothing to prevent a finding of confusing similarity. See in that regard the detailed discussion on the test for confusing similarity as appears in sections 1.7, 1.8, 1.11, and 1.12 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, third edition ("WIPO Overview 3.0"). 6.4 Therefore the Panel is satisfied that the Complainant has established that the Disputed Domain Name is confusingly similar to the Complainant's trademark. B. Rights or Legitimate Interests 6.5 The Panel is satisfied that the Respondent has failed to establish that the Respondent has rights or page 4 legitimate interests in the Disputed Domain Name within the ambit of paragraph 4(c) of the Policy. Following section 2.1 of the WIPO Overview 3.0, the burden of production of satisfactory evidence shifts onto the Respondent to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name. There is no evidence of any permission, authority, licence or other business affiliation between the Complainant and the Respondent such that justifies the Respondent's use of any domain name that incorporates the Complainant's MILLICOM trademark. On the contrary what the evidence adduced by the Complainant reveals is that the Respondent is utilising the Disputed Domain Name and a corresponding email address to send fake job offers with a view to obtaining confidential information from Internet users. This Panel finds that such activity cannot by any means be described as legitimate noncommercial offer or fair use activity within the ambit of the Policy. See in support Bantrel Co. V. Rgistration Private, Domains By Proxy, LLC/Line Gagnon, supra and CooperVision International Limited, CooperVision, Inc. v. Domains By Proxy. LLC /Vision Jobs, supra. 6.6 Accordingly the Panel finds that the Complainant has established that the Respondent does not possess any rights or legitimate interests in the Disputed Domain Name as specified in paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith 6.7 With regards to the question of bad faith registration and use the Panel in the first instance, finds that it is inconceivable that the Respondent did not know of the Complainant's famous trademark and world-wide successful reputation and profile in the telecommunications and financial services industry, when it elected to register the Disputed Domain Name as recent as May 12, 2023. In this regard, the Complainant asserts that it has enjoyed exclusive rights in the field of telecommunications and financial services for more than thirty years. The Panel has found no justifiable reason for the Respondent to have registered a domain name containing the MILLICOM trademark and the word "group" except to deceive Internet users into believing that there is some sort of affiliation with the Complainant. Accordingly, as held in the previous UDRP decision in Milicom International Cellular SA v. Privacy service provided by Withheld for Privacy elf/ Mathias Iwu, supra, the Panel finds such conduct to be blatant evidence of bad faith registration and use. Furthermore, the irrefutable facts as adduced by the Complainant disclose that the Respondent has engaged in a bogus job-offering scam by impersonating the Complainant's staff and by using the Complainant's MILLICOM trademark in the Disputed Domain Name to send emails to Internet visitors in order as to extract sensitive and financial information. The Panel therefore finds as held in Bantrel Co. v. Registration Private, Domains By Proxy LLC/Line Gagnon, supra that the use of the Disputed Domain Name in furtherance of an unlawful and fraudulent scheme is clear evidence of bad faith registration. See also Fox Media LLC v. Bill Biersdorf, supra. In addition to the foregoing, and as indicated in paragraph 5.5 above, the Panel has drawn adverse inferences from the failure of the Respondent to reply to the contentions of the Complainant in this Proceedings. 6.8 The Panel therefore finds that the Complainant has satisfied the bad faith registration and use requirement as specified in the Policy. 7. Decision 7.1 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. /Ike Ehiribe/ Ike Ehiribe Sole Panelist Date: November 20, 2023
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