The Complainant is TF Woollam & Son Pty Ltd trading as Woollam Constructions, Australia, represented by McCullough Robertson Lawyers, Australia.
The Respondent is Andy Smith, NRW Holdings Limited, Australia. 2. The Domain Name and Registrar
The disputed domain name (“Domain Name”) is registered with Tucows Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 24, 2019. On June 24, 2019, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the Domain Name. On June 24, 2019, Tucows Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy” or “.auDRP”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 1, 2019. In accordance with the Rules, paragraph 5(a), the due date for Response was July 21, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 22, 2019.
The Center appointed Nicholas Smith as the sole panelist in this matter on July 25, 2019. 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 commercial design and construction firm in Australia, founded in 1883 by Thomas Woolam. The Complainant is the owner of an Australian trade mark registration for a word mark consisting of the words “woollam constructions” (the “WOOLLAM CONSTRUCTIONS Mark”). The WOOLLAM CONSTRUCTIONS Mark (trade mark No. 1170522) was registered from April 11, 2007, for various services relating to construction and design in classes 37 and 42. The Complainant owns the domain name from which it operates a website.
According to the verification provided by Tucows, Inc., the Domain Name, , was registered on November 14, 2018. The Domain Name presently resolves to a website with a series of pay-per-click links to companies offering building and construction services but, prior to the notification of the Complaint, the Domain Name had resolved to either the Complainant’s website at “www.” or a blank page with a copyright notice. The evidence in the Complaint is that the Domain Name is used to create an email address (“[...]@”) which is used as part of fraudulent communications to the Complainant’s customers. These communications are sent by the Respondent but purport to be official communications from representatives of the Complainant, giving directions for the payment of funds to accounts unconnected to the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant’s WOOLLAM CONSTRUCTIONS Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the WOOLLAM CONSTRUCTIONS Mark having registered the WOOLLAM CONSTRUCTIONS Mark in Australia. The Domain Name is identical and confusingly similar to the WOOLLAM CONSTRUCTIONS Mark as it consists of the WOOLLAM CONSTRUCTIONS Mark with the addition of the suffix “.”.
There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Complainant has not granted any license or authorization for the Respondent to use the WOOLLAM CONSTRUCTIONS Mark. The Respondent does not use the Domain Name for a bona fide purpose or legitimate noncommercial purpose. Rather the Domain Name is used to create an email address as part of communications impersonating the Complainant, which does not grant the Respondent rights or legitimate interests in the Domain Name.
The Domain Name was registered and is being used in bad faith. The Domain Name is being used, amongst other things, as part of a scheme to impersonate the Complainant for the purpose of directing that amounts be paid to bank accounts other than those operated by the Complainant. This amounts to an attempt to perpetuate fraud. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
To prove this element, the Complainant must have a name, trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s name, trade or service mark.
The Complainant is the owner of the WOOLLAM CONSTRUCTIONS Mark, having registrations for the WOOLLAM CONSTRUCTIONS Mark as a trade mark in Australia.
The Domain Name reproduces the WOOLLAM CONSTRUCTIONS Mark in its entirety (absent the space between the words, which is a necessary requirement of the Domain Name System) and the country code Top-Level Domain (“ccTLD”) “.”. Disregarding the ccTLD as a necessary element of the Domain Name System, the Panel finds that the Domain Name is identical to the WOOLLAM CONSTRUCTIONS Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, is to be taken to demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the subject matter of the dispute, your bona fide use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with an offering of goods or services (not being the offering of domain names that you have acquired for the purpose of selling, renting or otherwise transferring); or
(ii) you (as an individual, business, or other organisation) have been commonly known by the domain name, even if you have acquired no trade[]mark or service mark rights; or
(iii) you are making legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the name, trade[]mark or service mark at issue.”
The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the WOOLLAM CONSTRUCTIONS Mark or a mark similar to the WOOLLAM CONSTRUCTIONS Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial use. Rather it appears from the evidence submitted by the Complainant that the Respondent is using the Domain Name as part of a broader scheme to send communications to the Complainant’s customers passing itself off as the Complainant and directing that payments be made to particular accounts unconnected to the Complainant. Such conduct is fraudulent and is not a bona fide offering of goods or services. Nor does any apparent right or legitimate interest arise from the use of the Domain Name to resolve to particular websites (either the Complainant’s website or to a website consisting of a copyright notice).
The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has had an opportunity to rebut the prima facie case that it lacks rights or legitimate interests but has chosen not to do so. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy. C. Registered or Subsequently Used in Bad Faith
For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to another person, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) the Respondent has registered the Domain Name in order to prevent the owner of the name, trade mark or service mark from reflecting the name or mark in a corresponding domain name; or
(iii) the Respondent has registered the Domain Name primarily for the purpose of disrupting the business or activities of another person; or
(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s name or mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on Respondent’s website or location; or
(v) if any of the Respondent’s representations or warranties as to eligibility or third party rights given on application or renewal are, or subsequently become, false or misleading in any manner.
The Panel notes that the Policy only requires that a complainant show that a respondent registered or subsequently used the disputed domain name in bad faith, however in the interest of completeness the Panel has considered both whether the Domain Name has been registered and used in bad faith.
The Panel finds that the Respondent was aware of the Complainant at the time the Domain Name was registered. The Domain Name has been used to create an email account as part of a broader scheme where the Respondent sends communications purporting to be from the Complainant. The Respondent does not provide, nor is it apparent to the Panel, any reason why the Domain Name was registered other than by reference to the Complainant. The registration of the Domain Name in awareness of the Complainant and its rights in the WOOLLAM CONSTRUCTIONS Mark and in the absence of rights or legitimate interests amounts to registration in bad faith.
The Respondent is using the Domain Name as part of a broader scheme seeking to mislead recipients as to the identity of the sender for its own commercial gain. Such conduct is deceptive, illegal, and in previous UDRP decisions has been found to be evidence of registration and use in bad faith, see The Coca-Cola Company v. Marcus Steiner,WIPO Case No. D2012-18041 . The Panel finds that the Respondent is using the Domain Name in bad faith.
Accordingly, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith under paragraph 4(a)(iii) of the Policy. 7. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be cancelled.
Nicholas Smith
Sole Panelist
Date: July 31, 2019
1 Noting the substantial substantive similarities between the Policy and the Uniform Domain Name Dispute Resolution Policy (“UDRP”), the Panel has referred to prior UDRP cases, where appropriate.
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