ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION CoorsTek, Inc. v. yonti lute, hgg ltd Case No. D2024-3531 1. The Parties The Complainant is CoorsTek, Inc., United States of America, represented by Greenberg Traurig, LLP, United States of America. The Respondent is yonti lute, hgg ltd, Germany. 2. The Domain Name and the Registrar The disputed domain name is , and it is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History According to the information and documents provided by the WIPO Arbitration and Mediation Center (the “Center”), the history of this proceeding is as follows: - The Complainant filed the Complaint with the Center on August 30, 2024. The Complaint identified the registrant of the disputed domain name as– “Redacted for Privacy, Privacy service provided by Withheld for Privacy ehf”. - On September 2, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 2, 2024, the Registrar transmitted by email to the Center its verification response disclosing the name of the registrant of the disputed domain name – “yonti lute, hgg ltd” – and their contact information – “yug gyjk oltv yuhg, onta, gggh, 40001, Germany”. - On September 3, 2024, the Center sent to the Complainant an email providing the name and contact information of the beneficial registrant of the disputed domain name as disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. - The Complainant filed an amended Complaint with the Center on September 5, 2024. The amended complaint identifies the respondent as both “Redacted for Privacy, Privacy service provided by Withheld for Privacy ehf” and “yonti lute, hgg ltd”.
page 2 - The Center verified that the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 Rules paragraphs 2 and 4, the Center sent a Notification of the Complaint to the Respondent, and this proceeding commenced on September 9, 2024. The Notification attached the Complaint and the amended Complaint (including its annexes), and advised the Respondent that, in accordance with Rules paragraph 5, the due date for a Response was September 29, 2024. - The Center sent the Notification of the Complaint to the Respondent by email to several email addresses (including the Respondent’s email address disclosed by the Registrar in its verification response) and by courier to the Respondent’s postal address disclosed by the Registrar in its verification response. The Notification of the Complaint sent by email to the Respondent appears to have been successfully delivered to at least one of the Respondent’s email addresses (the address specified by the Registrar in its verification response). The Notification of the Complaint sent by courier appears to have not been delivered because the Respondent’s postal address specified by the Registrar in its verification response is not a valid address. - The Respondent did not file a Response by the specified due date or at any time thereafter. - On October 3, 2024, the Center sent a Notification of Respondent Default to the Respondent by email to the Respondent’s email addresses (including the one specified by the Registrar in its verification response). - The Center appointed Bradley J. Freedman as the sole panelist in this proceeding on October 14, 2024. The Panel submitted a Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with Rules paragraph 7. Based on the information and documents in the case file, the Panel finds that the Panel was properly constituted and appointed in accordance with the Rules and the Supplemental Rules, and that all technical requirements for this proceeding have been met. The language of the Registrar’s registration agreement for the disputed domain name is English. Consequently, the language of this proceeding is English. (See Rules paragraph 11(a).) 4. Factual Background The following information is derived from the Complaint and supporting documentary evidence submitted by the Complainant: - The Complainant is a 110-year-old materials science company that develops proprietary technical ceramic material formulations. The Complainant has manufacturing, sales, and research facilities around the world, and services a wide variety of essential industries. - The Complainant has used the COORSTEK trademark since at least as early as April 2000. - The Complainant owns registrations for the COORSTEK trademark in over 40 jurisdictions, including Canada (No. TMA688302, registered on May 25, 2007), China (International Trademark Reg. No. 846477, registered on April 8, 2004), European Union (No. 003470648, registered on May 25, 2005), the United Kingdom (No. UK00903470648, registered on May 25, 2005) and the United States of America (No. 2962220, registered on June 14, 2005).
page 3 - The Complainant uses the domain name for its primary website and for all official email addresses. - The disputed domain name was registered on December 15, 2023, over 20 years after the Complainant began using its COORSTEK trademark. - The publicly available information for the disputed domain name identifies the registrant as “Redacted for Privacy, Privacy service provided by Withheld for Privacy ehf” with an address in Reykjavik, Iceland. The Registrar disclosed the beneficial registrant to be “yonti lute, hgg ltd” with an address in Germany. - The Respondent registered and is using the disputed domain name without the Complainant’s authorization, consent, or license. - The Respondent used the disputed domain name for deceptive email addresses that were used to send fraudulent emails (which display the Complainant’s branding) and invoices to the Complainant’s customers to attempt to deceive them into making payments to the Respondent’s bank account instead of to the Complainant’s bank account. The fraudulent emails purported to be from one of the Complainant’s inside sales representatives and displayed the Complainant’s branding. - The Respondent also used the disputed domain name for a domain parking page that displayed pay-per-click search links for “Protein Mass Spectroscopy”, “Protein Lc Ms”, and “Waters Chromatography Columns”. - To the Complainant’s knowledge, the Respondent does not have any trademark applications or registrations anywhere in the world for any mark that incorporates the word “COORSTEK”. - The name and registered address of the beneficial registrant of the disputed domain name disclosed by the Registrar are false. The Complainant’s investigations were not able to identify a company named “hgg ltd” in Germany, and the postal address appears to be gibberish. - On August 22, 2024, the Complainant’s legal counsel sent an email to the Registrar providing details of the Respondent’s fraudulent use of the disputed domain name. In response to the email, the Registrar advised that it had suspended the disputed domain name. 5. Parties’ Contentions A. Complainant The Complainant asserts as follows: - The Complainant is the owner of the COORSTEK trademark, and the disputed domain name is confusingly similar to the COORSTEK trademark. - The Respondent has no rights or legitimate interests in respect of the disputed domain name and does not have any right to use the Complainant’s COORSTEK trademark. - The Respondent registered and is using the disputed domain name in bad faith because: (1) the disputed domain name is a deliberate misspelling of the Complainant’s trademark; (2) the Respondent registered the disputed domain name using a false name, incorrect contact information, and a privacy service; (3) the Respondent used the disputed domain name to send fraudulent emails and invoices to the Complainant’s customers; and (4) the Respondent used the disputed domain name to attract Internet users to a pay-per-click search website.
page 4 B. Respondent The Respondent has not filed a Response to the Complaint or answered the Complainant’s assertions or evidence in any other manner. 6. Discussion and Findings The Policy is narrow in scope. It applies only to disputes involving alleged bad faith registration and use of a domain name. The Policy does not apply to any other kind of dispute between a trademark owner and a domain name registrant. To be entitled to relief under the Policy, a complainant must assert and prove the following requirements set out in Policy paragraph 4(a): (i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (ii) the registrant has no rights or legitimate interests in respect of the domain name; and (iii) the domain name has been registered and is being used in bad faith. Rules paragraph 10(b) requires that the Panel ensure that the parties are treated with equality and that each party is given a fair opportunity to present its case. The Center discharged its responsibility under Rules paragraph 2(a) to employ reasonably available means calculated to give the Respondent actual notice of the Complaint. Further, the Registrar’s Domain Registration Agreement (sections 8, 14, and 16) requires the Respondent to provide current, complete, and accurate contact information, and to update the contact information as needed to keep it current, complete, and accurate. The Respondent cannot hide behind its provision to the Registrar of incorrect or out-of-date contact information in breach of the Registrar’s Domain Registration Agreement. In the circumstances, the Panel finds that the Respondent has been given notice of this proceeding in accordance with Rules paragraph 2 and has been given a fair opportunity to answer the Complaint and present its case. In accordance with Rules paragraph 14(a), the Panel will proceed to a decision on the Complaint. The Respondent’s failure to file a Response to the Complaint 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). Rules paragraph 15(a) requires the Panel to decide the Complaint based on the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that the Panel deems applicable. In accordance with Rules paragraph 14(b), the Panel may draw inferences as the Panel considers appropriate from the Respondent’s failure to file a Response to the Complaint (see section 4.3 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). In the circumstances, the Panel’s decision is based on the Complainant’s assertions and evidence as well as inferences drawn from the Respondent’s failure to file a Response, all as set out in this decision. The Complainant’s amended Complaint identifies both “REDACTED FOR PRIVACY, Privacy Service provided by Withheld for Privacy ehf” (the information available on the publicly available Whois) and “yonti lute, hgg ltd” (the registrant of the disputed domain name disclosed by the Registrar in its verification response). Rules paragraph 1 defines the respondent as “the holder of a domain name registration against which a complaint is initiated”. Further, paragraph 3.7.7.3 of the ICANN Registrar Accreditation Agreement provides that a Whois-listed registrant accepts liability for any use of the disputed domain name unless the listed registrant timely discloses the contact information of any underlying beneficial registrant. Accordingly, in this decision references to “the Respondent” are references to “yonti lute, hgg ltd”, the beneficial registrant of the disputed domain name disclosed by the Registrar in its verification response. See WIPO Overview 3.0, section 4.4.5.
page 5 A. Identical or Confusingly Similar to Complainant’s Trademark The Complainant asserts that it is the owner of the COORSTEK trademark registered many years before the disputed domain name was registered, and has provided documentary evidence of the COORSTEK trademark registration in the United States of America. The Respondent has not contested the Complainant’s assertions. In the circumstances, the Panel finds that the Complainant has rights in the COORSTEK trademark for the purpose of the Policy. See WIPO Overview 3.0, section 1.2.1. The Policy requires that a disputed domain name be “identical or confusingly similar” to the complainant’s trademark. Neither the Policy nor the Rules provide any explicit guidance with respect to the test to be applied regarding the confusing similarity requirement of the Policy. The consensus reflected in previous Policy decisions is that the appropriate test for confusing similarity typically involves a side-by-side comparison of the disputed domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. In 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 to the trademark. See WIPO Overview 3.0, section 1.7. In this case, the disputed domain name is comprised of the entirety of the Complainant’s COORSTEK trademark, an additional letter “k” at the end of the trademark, and the “.com” generic Top-Level Domain (“gTLD”). The “.com” gTLD is typically disregarded for the purpose of determining whether a domain name is identical or confusingly similar to a trademark, because the gTLD is a registration requirement and does not distinguish the domain name from the relevant trademark. See WIPO Overview 3.0, section 1.11.1. The disputed domain name appears to be a purposeful misspelling of the Complainant’s COORSTEK trademark by adding an additional letter “k”. The consensus reflected in previous Policy decisions is that a domain name that consists of a common, obvious, or intentional misspelling of a trademark is considered confusingly similar to the trademark. See WIPO Overview 3.0, section 1.9. In the absence of any explanation or rationale by the Respondent for its registration and use of the disputed domain name, the Panel infers that the domain name was intended by the Respondent to be confusingly similar to the Complainant’s COORSTEK trademark. For those reasons, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s COORSTEK trademark. Accordingly, the Panel finds that the Complainant has satisfied the first element required by the Policy. B. Rights or Legitimate Interests The second element required by Policy paragraph 4(a) – the registrant has no rights or legitimate interests in respect of the domain name – requires a complainant to prove a negative proposition, which can be particularly difficult. The consensus reflected in previous Policy decisions is that a complainant’s burden of proof regarding this element must be applied in light of the fact that the nature of the registrant’s rights or legitimate interests, if any, in a domain name lies most directly within the registrant’s knowledge. Accordingly, as a practical matter, once a complainant makes a prima facie showing that a registrant does not have rights or legitimate interests in a domain name, the evidentiary burden shifts to the registrant to provide evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1. The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name because: (1) the Complainant has not authorized, consented, or licensed the Respondent to use the COORSTEK trademark; (2) the Respondent registered the disputed domain name using a false
page 6 name and an incorrect address; (3) the disputed domain name does not have any relation to the Respondent’s stated name; and (4) the Respondent used the disputed domain name as part of an email address used to send fraudulent emails and invoices to the Complainant’s customers and for a pay-per-click search website. The circumstances of this case and the evidence presented by the Complainant – the distinctive nature of the Complainant’s registered COORSTEK trademark, the Respondent’s use of a false name and an incorrect address to register the disputed domain name, the Respondent’s use of the disputed domain name as part of a deceptive email address used to send fraudulent emails and invoices to the Complainant’s customers and for a pay-per-click search website – together with an adverse inference from the Respondent’s failure to respond to the Complaint or provide any justification for the registration and use of the disputed domain name are sufficient to satisfy the Complainant’s evidentiary burden. Even though the Respondent has not filed a Response to the Complaint and has not contested the Complainant’s assertions, the Panel is obligated to consider whether the Respondent’s use of the disputed domain name demonstrates rights or legitimate interests in the disputed domain name. See WIPO Overview 3.0, section 4.3. According to Policy paragraph 4(c), each of the following circumstances, if proved, demonstrate a registrant’s rights to or legitimate interests in a domain name: (i) the registrant used or demonstrably prepared to use the domain name or a corresponding name in connection with a bona fide offering of goods or services prior to notice of the dispute; (ii) the registrant has been commonly known by the domain name, even if it has not acquired trademark rights; or (iii) the registrant 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 complainant’s mark. Policy paragraph 4(c)(i) is not applicable because the Respondent does not assert, and there is no evidence, that the Respondent is using the disputed domain name in connection with any legitimate offering of goods or services. To the contrary, the evidence establishes that the Respondent used the disputed domain name as part of a deceptive email address used to send fraudulent emails and invoices to the Complainant’s customers and for a pay-per-click search website. The use of a domain name for illegal activity does not confer rights or legitimate interests on a registrant and is not a bona fide offering of goods or services. Also, the use of a domain name to host a website page providing pay-per-click searches is not a bona fide offering of goods or services. WIPO Overview 3.0, sections 2.9 and 2.13.1. Policy paragraph 4(c)(ii) is not applicable because the Respondent does not assert, and there is no evidence, that the Respondent has been commonly known by the disputed domain name or that the disputed domain name is derived from the Respondent’s trademark or trade name. Policy paragraph 4(c)(iii) is not applicable because the Respondent does not assert, and there is no evidence, that the Respondent is making a non-commercial or fair use of the disputed domain name. To the contrary, the evidence establishes that the Respondent used the disputed domain name as part of a deceptive email address used to send fraudulent emails and invoices to the Complainant’s customers and for a pay-per-click search website. In addition, the Panel draws an adverse inference from the Respondent’s failure to provide any explanation or rationale for its registration and use of the disputed domain name. For those reasons, the Panel finds that the Respondent does not have any rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith Policy paragraph 4(a)(iii) requires the Complainant to prove that the Respondent registered and is using the disputed domain name in bad faith. The language of Policy paragraph 4(a)(iii) is conjunctive and requires
page 7 the Complainant to prove both bad faith registration of the disputed domain name and bad faith use of the disputed domain name. Policy paragraph 4(b) provides that each of the following circumstances is evidence that a registrant registered and is using a domain name in bad faith: (i) the registrant registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant registered the domain name to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or (iii) the registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. In addition, the Policy expressly states that the circumstances listed in Policy paragraph 4(b) are non-exhaustive. See WIPO Overview 3.0, section 3.2. Consequently, to establish that a registrant registered and is using the disputed domain name in bad faith, a complainant need only establish one of the four non-exhaustive criteria set forth in Policy paragraph 4(b) or an alternative circumstance of bad faith registration and use. The consensus reflected in previous Policy decisions is that the use of a domain name as part of an email address to send deceptive or fraudulent emails, or to solicit payment of fraudulent invoices, constitutes bad faith registration and use of the domain name. See Graybar Services Inc. v. Graybar Elec, Grayberinc Lawrenge, WIPO Case No. D2009-1017; Arkema France v. Pepi Robert, WIPO Case No. D2014-1055; GEA Group Aktiengesellschaft v. J. D., WIPO Case No. D2014-0357; Statoil ASA v. Registration Private, Domains By Proxy, LLC / Eldar Saetre, WIPO Case No. D2018-0563; and WIPO Overview 3.0, sections 3.1.4 and 3.4. The practice of registering a domain name based on a misspelling of a trademark for the purpose of diverting Internet users to website that generates advertising revenue is considered bad faith. See Ducoco Alimentos S/A v. Domain Privacy LTD, WIPO Case No. D2012-1949; Pixabay GmbH v. Privacy Administrator, Anonymize, Inc., WIPO Case No. D2022-2370; and WIPO Overview 3.0, section 3.5. The registration of a disputed domain name using false contact information can also be an indication of bad faith. See Inkkas, LLC v. Katherine Garcia, WIPO Case No. D2017-1992; Statoil ASA v. Registration Private, Domains By Proxy, LLC / Eldar Saetre, WIPO Case No. D2018-0563; and WIPO Overview 3.0, section 3.2.1. In this case, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith because: (a) the disputed domain name appears to be a deliberate misspelling of, and is confusingly similar to, the Complainant’s distinctive, previously registered COORSTEK trademark; and (b) the Respondent used the disputed domain name as part of a deceptive email address used to send deceptive emails and fraudulent invoices to the Complainant’s customers to attempt to deceive them into making payments to the Respondent.
page 8 Further and in addition, the Panel also finds that the Respondent registered and is using the disputed domain name in bad faith because: (a) the disputed domain name appears to be a deliberate misspelling of, and is confusingly similar to, the Complainant’s distinctive, previously registered COORSTEK trademark; (b) the Respondent registered the disputed domain name using false contact information; and (c) the Respondent used the disputed domain name for a pay-per-click search website without any apparent legitimate justification. In the circumstances, the Panel need not consider whether there are other grounds for finding that the Respondent registered and is using the disputed domain name in bad faith. For those reasons, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith. 7. Decision The Complainant has established each of the three requirements set out in Policy paragraph 4(a): (i) the disputed domain name is confusingly similar to the Complainant’s COORSTEK trademark; (ii) the Respondent does not have any rights to or legitimate interests in the disputed domain name; and (iii) the Respondent registered and is using the disputed domain name in bad faith. For those reasons, in accordance with Policy paragraph 4(i) and Rules paragraph 15, the Panel orders that the disputed domain name be transferred to the Complainant. /Bradley J. Freedman/ Bradley J. Freedman Sole Panelist Date: October 28, 2024
Full & Egal Universal Law Academy