The Complainant is Gerber Technology LLC, United States of America (“United States”), represented by Day Pitney LLP, United States.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Nazareth Barsoumian, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 9, 2020. On July 10, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 10, 2020, 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on July 14, 2020, 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 July 19, 2020. 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 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 July 20, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 9, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 11, 2020. The Center appointed William F. Hamilton as the sole panelist in this matter on August 21, 2020. 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 an internationally recognized supplier of software and hardware to the textile industry and owner of United States registered marks (the “Mark”) dating back to 2007. Complainant owns the registered marks GERBER, United States Reg. No. 3,282,346 (registered August 21, 2007), and GERBER TECHNOLOGY, United States Reg. No. 5,500,719 (registered June 26, 2018). In early 2020, the Respondent, or co-conspirators of the Respondent, apparently hacked into the email system of one of Complainant’s customers. The Respondent then registered the disputed domain name on April 13, 2020, and on April 14, 2020, and April 15, 2020, sent a fraudulent email invoice to Complainant’s customer utilizing the disputed domain name. The Complainant’s customer paid the fraudulent invoice causing a substantial loss. 5. Parties’ Contentions A. Complainant The Complainant asserts the disputed domain name is confusingly similar to the Complainant’s Mark because the disputed domain name is composed entirely of the Complainant’s Mark plus the country code Top-Level Domain (“ccTLD”) “.co” (which closely resembles the commonly used generic Top-Level Domain ("gTLD") “.com”). The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name as the Respondent has never conducted any bona fide commercial business or activity utilizing the disputed domain name. The Complainant further asserts that the disputed domain name was registered and used in bad faith as a part of a hacking scheme to steal money from the Complainant’s customer. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, to succeed the Complainant must satisfy the Panel that: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name was registered and is being used in bad faith. A. Identical or Confusingly Similar The Panel finds the disputed domain name is confusingly similar to the Complainant’s Mark. See section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The TLD of the disputed domain name is not relevant to the analysis of confusing similarity. V&S Vin & Sprit AB v. Canal Prod Ltd.,WIPO Case No. D2002-0437. See section 1.11 of the WIPO Overview 3.0. The Complainant has met its burden under paragraph 4(a)(i) of the Policy B. Rights or Legitimate Interests The Panel finds the Respondent has no rights or legitimate interests in the disputed domain name. The Panel finds that the Complainant has specifically disavowed providing the Respondent with a license or permission to use the Mark. The Respondent has also provided evidence that the Respondent is using the disputed domain name in a fraudulent scheme, thus making out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Chase Manhattan Corporation et al. v. John Whitely,WIPO Case No. D2000-0346. Such prima facie case having been put forward, the burden of production then shifted to the Respondent to rebut the Complainant’s assertion or to demonstrate bona fide use of the disputed domain name. Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455. The Respondent has failed to come forward with any evidence demonstrating any bona fide use of the disputed domain name. The Complainant has met its burden under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Panel finds the disputed domain was registered and used in bad faith. The Complainant has demonstrated that the Respondent utilized email addresses associated with the disputed domain name to trick Complainant’s unsuspecting customer into paying a fraudulent invoice. The Respondent’s fraudulent conduct demonstrates that the disputed domain name was registered and used in bad faith. L’ Oréal v. Cimpress Schweiz GmbH,WIPO Case No. DCO2017-0021; Syngenta Participations AG v. Simon Laidler / Who Is Agent, WhoIs Privacy Protection Service, Inc.,WIPO Case No. D2014-1702; Starwood Hotels & Resorts Worldwide, Inc., Sheraton LLC, Sheraton International Inc. v. Isaac Isaac,WIPO Case No. D2011-1275; Accor v. SANGHO HEO / Contact Privacy Inc.,WIPO Case No. D2014-1471; Accenture Global Services Limited v. Patel Holdings,WIPO Case No. D2016-0367. The Complainant has met its burden under paragraph 4(a)(iii) 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 William F. Hamilton
Sole Panelist
Date: August 26, 2020
Full & Egal Universal Law Academy