ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Championx LLC v. Name redacted Case No. D2024-1899 1. The Parties The Complainant is Championx LLC, United States of America (“United States”), represented by TechLaw Ventures, PLLC, United States. The Respondent is Name redacted.1 2. The Domain Name and Registrar The disputed domain name is registered with GoDaddy.com, LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 3, 2024. On May 6, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 6, 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 (Domains By Proxy, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on May 10, 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 amendment to the Complaint on May 10, 2024. 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”). 1 The Respondent appears to have used the name of a third party when registering the disputed domain names. 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Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this decision shall not be published due to the exceptional circumstances of this case.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 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 13, 2024. In accordance with the Rules, paragraph 5, the due date for Response was June 2, 2024. A third party sent email communications to the Center on May 16, 2024. On June 3, 2024, the Center informed the Parties that it would proceed with panel appointment. The Center appointed W. Scott Blackmer as the sole panelist in this matter on June 7, 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 The Complainant is a limited liability company established under the laws of the State of Delaware, United States and headquartered in Sugar Land, Texas, United States. The Complainant is a global provider of oilfield technology solutions operating in more than 60 countries. Shares of its parent company, ChampionX Corporation, are traded on the NASDAQ stock exchange. The group operates a website at “www.championx.com”. The Complainant holds United States Trademark Registration Number 7043666 (registered on May 2, 2023) for a figurative mark consisting of the word CHAMPIONX in stylized letters with spacing, for artificial lift systems in wellsite automation and related software in International Classes 7 and 9. The WhoIs reports that the disputed domain name was created on April 1, 2024, in the name of a domain privacy service. After receiving notice of the Complaint in this proceeding, the Registrar identified the underlying registrant as [Name redacted], listing no organization and showing a postal address in the United States and a contact email address at a domain name that resolves to a third party’s professional website. A screenshot dated May 2, 2024, attached to the Complaint, shows that the disputed domain name resolved to a landing page “parked free, courtesy of GoDaddy.com” with a button for persons interested in acquiring the disputed domain name and pay-per-click (“PPC”) advertising links to a variety of unrelated third parties. This continues to be the case at the time of this Decision. However, according to the evidence provided by the Complainant, the disputed domain name was used for an email scam initiated on April 1, 2024, the same day that the disputed domain name was registered. On that day, an email was sent from an address created with the disputed domain name to one of the Complainant’s customers, purportedly from a representative of the Complainant and including the Complainant’s name, its trademarked logo, and its postal address. The email attached an invoice from the Complainant for USD 108,462.32 for a purchase order that was “delivered this morning” and asked to have a purchase order sent again by return email, apparently in an attempt to gather payment information from the customer. Fortunately, the customer contacted the Complainant directly for confirmation. After receiving notice of the Complaint in this proceeding, a third party sent two emails to the Center saying that it had been “hacked” and denying that it was the person who had registered the disputed domain name. The Center informed the Parties that it is not in a position make a substantive assessment on the merits of its claims, and that is the role of the independent Administrative Panel (on appointment). 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.
page 3 Notably, the Complainant contends that the disputed domain name is confusingly similar to its CHAMPIONX mark, consisting of a slight misspelling of the mark (transposing the letters “m” and “n”). The Respondent has not used the disputed domain name for an active website, and there is no evidence that the Respondent is commonly known by a corresponding name. The Complainant attaches the results of an Internet search showing no business with a corresponding name, and the results of a United States trademark office search showing that the Respondent has no corresponding trademark registration or application. The disputed domain name has been used in connection with a fraudulent email scam, which points to bad faith in the registration and use of the domain name. B. Respondent The Respondent did not reply to the Complainant’s contentions. As mentioned above, a third party communicated to the Center that the disputed domain name “was procured by a hacker along with many other bogus accounts in my name.” The third party asked the Center to “[k]indly discontinue this inquiry”. The Panel, of course, must proceed to a decision, but based on the facts as described above, it appears that a third party is likely the victim of identity theft and in any event asserts no interest in the disputed domain name. Accordingly, the Respondent’s name has been redacted from this decision. By “the Respondent” the Panel refers hereafter in this Decision to the unknown person who actually registered the disputed domain name and employed it in a fraudulent email scheme. 6. Discussion and Findings Paragraph 4(a) of the Policy provides that a complainant must demonstrate each of the following: (i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (ii) and the respondent has no rights or legitimate interests in respect of the domain name; (iii) and the domain name has been registered and is being used in bad faith. Under paragraph 15(a) of the Rules, “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. 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 (the registered CHAMPIONX mark) for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The Panel finds the mark is recognizable within the disputed domain name. The mark is a drawing with stylized letters but clearly recognizable as the name CHAMPIONX. The disputed domain name simply transposes the letters “n” and “m”, which are visually similar. As the disputed domain name was used for a fraudulent email scheme, it is likely that this visual similarity was intentional and meant to be overlooked. Accordingly, the Panel finds that the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, sections 1.7 and 1.9. The Panel finds the first element of the Policy has been established.
page 4 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. In fact, a third party expressly denies any interest in the disputed domain name and attributes its registration to a “hacker”, which is entirely plausible given that the disputed domain name was immediately used in a fraudulent email scheme. Panels have held that the use of a domain name for illegal activity (here, claimed with supporting evidence to entail impersonation in a fraudulent email scheme) 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. The use of the disputed domain name to misdirect Internet users for commercial gain to other websites, as occurs in this case with PPC advertising, meets one of the examples of bad faith given in the Policy, paragraph 4(b)(iv). While paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and is being used in bad faith, other circumstances also 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. In the present case, the Panel notes that a third party claims to have been hacked. Whoever registered the disputed domain name was clearly aware of the Complainant’s mark, using the Complainant’s trademarked logo on a scam email sent with the disputed domain name on the same day it was registered in an apparent effort to impersonate the Complainant and defraud one of the Complainant’s customers. Panels have held that the use of a domain name for illegal activity (here, the fraudulent email scheme) constitutes bad faith. WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel finds the 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.
page 5 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. /W. Scott Blackmer/ W. Scott Blackmer Sole Panelist Date: June 21, 2024
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