ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Simpson Strong-Tie Company Inc. v. Name Redacted Case No. D2024-1648 1. The Parties The Complainant is Simpson Strong-Tie Company Inc., United States of America (“U.S.”), represented by Shartsis Friese LLP, U.S. The Respondent is Name Redacted.1 2. The Domain Name and Registrar The disputed domain name is registered with Hostinger Operations, UAB (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 19, 2024. On April 19, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 22, 2024, 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, Privacy service provided by Withheld for Privacy ehf) and contact information in the Complaint. The Center sent an email communication to the Complainant on April 23, 2024 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 amended Complaint on April 25, 2024. 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 1The 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 the 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 the 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Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this decision shall not be published due to the exceptional circumstances of this case.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 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 April 26, 2024. In accordance with the Rules, paragraph 5, the due date for Response was May 16, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 22, 2024. The Center appointed R. Eric Gaum as the sole panelist in this matter on May 28, 2024. 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 a supplier of structural building products. Since the 1980s, Complainant has used its house mark SIMPSON STRONG-TIE in connection with structural connectors, fasteners, power tools, epoxies, and related products and services. Complainant owns multiple trademark registrations for STRONG-TIE and SIMPSON STRONG-TIE, including without limitation and by way of example, the following: U.S. Reg. No. Date of Reg. Trademark Description of Goods 801188 January 4, 1966 STRONG-TIE Class 12: framing connectors for structural elements-namely, joist and furring hangers, bridging members, reinforcing and framing angles, wall frame braces, column bases, column caps, sheathing strips, sheathing clips, tie straps, and securing devices therefor sold with said elements. 5433671 March 27, 2018 SIMPSON STRONG-TIE Class 9: Computer software for use in designing a building’s structural frame, including individual support members, trusses and analyzing wind and seismic forces on a building and designing lateral force resisting members, creating three1dimensional models, creating and modifying construction drawings, creating materials lists, creating labor estimates, creating calculation sheets and reports, maintaining customer, vendor, material and labor data, estimating labor and materials, managing sales transactions, importing geometry of existing jobs from related software programs, viewing and modifying data generated by related software programs, producing material selection and cutting instructions, and consolidating all files associated with a single job for the purposes of sending the information to the vendor’s technical support or engineering staff or for file archiving. Class 42: Software as a service (SAAS) services, namely, hosting software for use by others for use in designing a building’s structural frame, including individual support members, trusses and analyzing wind and seismic forces on a building and designing lateral force resisting members, creating three-dimensional models, creating and modifying construction drawings, creating materials lists, creating labor estimates, creating calculation sheets and reports, maintaining customer, vendor, material and labor data, estimating labor and
page 3 materials, managing sales transactions, importing geometry of existing jobs from related software programs, viewing and modifying data generated by related software programs, producing material selection and cutting instructions, and consolidating all files associated with a single job for the purposes of sending the information to the vendor’s technical support or engineering staff or for file archiving. 1833650 May 3,1994 SIMPSON STRONG-TIE Class 6: metal connectors and securing hardware for structural elements; namely, anchor bolts, floor tie anchors, foundation anchors, framing anchors, mudsill anchors, purlin anchors, angles and gussets, concrete form angles, reinforcing and skewable angles, stair case angles, Z angles, adjustable column bases, adjustable post bases, elevated post bases, post cap bases, standoff post bases, truss bearing enhancers, floor beam levelers, wall frame braces, knee braces, fence brackets, shelf brackets, bridging members, nail and nailess metal bridging post frame connectors, column caps, post caps, framing clips, plywood sheathing clips, roof truss clips, Z clips, corrosion resistant connectors, hinge connectors, hip ridge connectors, ornamental connectors, ridge rafter connectors, slope and skew connectors, variable pitch connectors, rigid tie connectors, adjustable truss hangers, embedded truss anchors, heavy duty hangers, light truss hip/jack hangers, offset top flange hangers, open/closed top flange hangers, ridge hangers, saddle hangers, sloped and/or skewed seat hangers, sloped top flange hangers, multiple truss hangers, plated truss hangers, reinforcing angles, roof truss clips, skewed angles, skewed truss girder hangers, slope/skew connectors, truss connectors, truss seat snap-in twist straps, truss girder hangers, truss hip/jack girders, deck connectors, nails, screws, gazebo connectors, beam and purlin hangers, double shear joist hangers, formed seat joist hangers, girder hangers, glulam saddle hangers, header hangers, heavy duty joist hangers, joist and furring hangers, light sloped U hangers, light sloped/skewed U hangers, masonry hangers, panel grip groove panelized construction hangers, post frame hangers, speed prong joist hangers, standard joist hangers, truss hangers, anchor bolt to stud holdown, foundation to stud holdown, 9 foundation to rim joist holdowns, insulation supports, hip corner plates, retro plates, tie plates, beam seats, stud shoes, drywall stop, nail stoppers, coiled straps, tie straps, twist straps, brick ties, hurricane ties, pipe ties, seismic ties, tension ties, strap ties, stud plate ties and wedge form ties. The disputed domain name shares the last two words in the Complainant’s business name and many of the Complainant’s federally registered trademarks. The disputed domain name is nearly identical to the Complainant’s primary website. The only difference is that it adds “inc,” which is a commonly understood to mean “incorporated.”
page 4 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. Notably, the Complainant contends that: The disputed domain name is confusingly similar to SIMPSON STRONG-TIE and other trademarks and services marks in which the Complainant has rights. The disputed domain name is confusingly similar to the Complainant’s company name, the Complainant’s website, and the Complainant’s primary brand, which are protected by multiple registered trademarks. The disputed domain name is nearly identical to the Complainant’s primary website. The only difference is that it adds “inc,” which is a commonly understood to mean “incorporated.” Thus, the public and the Complainant’s customers could easily understand it to refer to the Complainant. Given these similarities and the strength of the SIMPSON STRONG-TIE house mark, the disputed domain name is confusingly similar. The Respondent has no rights or legitimate interests in the disputed domain name. There is no evidence the Respondent has ever used the STRONG-TIE name or has offered goods or services in connection with the disputed domain name. Similarly, there is no evidence that the Respondent has ever been commonly known by the disputed domain name. The domain appears to be used for the sole purpose of making fraudulent requests to Complainant’s customers. The Respondent’s use is thus not a fair use. The disputed domain name was registered and is being used in bad faith. The Respondent registered a domain that is confusingly similar to the Complainant’s well established house mark. Further, beginning in mid-April, several customers of the Complainant reported that they had been contacted via email by someone impersonating actual employees of the Complainant. These emails purported to come from someone who works in the Complainant’s billing department and reference the Complainant’s CFO. The emails request follow up on payments supposedly owed to the Complainant. This conduct shows the Respondent is intentionally mimicking the Complainant and its employees in an attempt to secure payments or financial information from the Complainant’s customers. This is bad faith use. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7. The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. One of the marks is STRONG-TIE, U.S. Reg. No. 801188, registered January 4, 1966. The entirety of this mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is identical and/or confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. The only difference is between the mark that is reproduced within the disputed domain name is that it includes a hyphen, i.e., strong-tie, whereas the disputed domain name does not, i.e., strongtie. The Panel finds that this difference is insignificant and irrelevant to the analysis.
page 5 Furthermore, although the addition of other terms here, “inc,” may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. Panels have held that the use of a domain name for illegal activity here, fraud by impersonation/passing off the Respondent as representing the Complainant can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1. The Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. In the present case, the Panel notes that the Respondent not only registered a domain name that is confusingly similar to the Complainant’s trademarks but then used it to send emails to the Complainant’s customers while impersonating actual employees of the Complainant. These emails purported to come from someone who works in the Complainant’s billing department and referenced the Complainant’s CFO. The emails requested follow up on payments supposedly owed to the Complainant. This conduct shows the Respondent is intentionally mimicking the Complainant and its employees in an attempt to secure payments or financial information from the Complainant’s customers. This is clearly bad faith. Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1. Panels have held that the use of a domain name for illegal activity here, claimed as fraud by impersonation/passing off the Respondent as representing the Complainant, constitutes bad faith.
page 6 WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy. The Panel finds that the 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 the Complainant. /R. Eric Gaum/ R. Eric Gaum Sole Panelist Date: June 11, 2024
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