ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Itron, Inc. v. paula mazda Case No. DCO2024-0035 1. The Parties Complainant is Itron, Inc., United States of America (“United States”), represented by Lee & Hayes, PC, United States. Respondent is paula mazda, United States. 2. The Domain Name and Registrar The disputed domain name, , is registered with NameCheap, Inc. (“Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (“Center”) on May 7, 2024. After noting a discrepancy between the disputed domain name in the Complaint and information in one of the Annexes to the Complaint, on May 17, 2024, the Center requested clarification from Complainant. On the same day, Complainant filed an amended Complaint clarifying the disputed domain name. On May 20, 2024, the Center transmitted by email to Registrar a request for registrar verification in connection with the disputed domain name. On May 20, 2024, Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from that in the Complaint (e.g., the Complaint identified Redacted for Privacy as Respondent). The Center sent an email communication to Complainant on May 21, 2024, providing the registrant and contact information disclosed by Registrar and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on May 29, 2024 adding “paula mazda” as Respondent. The Panel determines that “paula mazda” is the appropriate Respondent. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 4.4.5 (in cases involving a privacy service, Panel has discretion to determine appropriate respondent). The Center verified that the May 17, 2024 amended Complaint together with the May 29, 2024 amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (“Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”).
page 2 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 31, 2024. In accordance with the Rules, paragraph 5, the due date for Response was June 20, 2024. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 21, 2024. The Center appointed Debra J. Stanek as the sole panelist in this matter on June 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, which was incorporated 47 years ago, is a technology company that offers goods and services related to energy and water resource management. It owns trademark registrations around the world for its ITRON mark, including two United States federal trademark registrations for the mark ITRON, Reg. No. 4,834,754 for a variety of computer hardware and software and related products (registered October 20, 2015), and Reg. No. 1,534,650 (registered April 11, 1989) for repair and maintenance of computer hardware and software systems. Complainant owns and operates a website at the domain name, which it created in 1993. The disputed domain name was created on March 5, 2024. Both at the time the Complaint was filed and at the time of this decision, it resolves to an inactive website that offers the domain name for sale. According to the Complaint, Respondent used the disputed domain name to create email addresses which were used to impersonate Complainant in an email fraud scheme to steal personal and financial information from Complainant’s customers. 5. Parties’ Contentions A. Complainant Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. In particular: - The disputed domain name incorporates the majority of the ITRON mark, substituting the lowercase letter “l” for the uppercase “i,” creating an insignificant change in the appearance of the mark. - Complainant provided copies of communications (albeit heavily redacted) sent from an email address using the disputed domain name. The messages purport to provide “new” banking information and to request payment and confirmation of payment. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings To prevail under the Policy a complainant must prove, as to the domain name at issue, that: (a) it is identical or confusingly similar to a mark in which the complainant has rights, (b) respondent has no rights or legitimate interests in respect to it, and (c) it has been registered and is being used in bad faith. Policy,
page 3 paragraph 4(a). A respondent’s failure to respond does not automatically result in a finding for the complainant; the complainant continues to have the burden of establishing each element. See WIPO Overview 3.0, section 4.3. The Panel may, however, draw appropriate inferences from the default. See Rules, paragraph 14(b). 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 Complainant’s trademark and the disputed domain name. WIPO Overview 3.0, section 1.7. Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. Rules, paragraphs 3(b)(viii) and 3(b)(xiv); WIPO Overview 3.0, section 1.2.1. Complainant’s mark is not identical to the disputed domain name; however, the substitution of a lowercase “l” for “i” (particularly, as here, at the beginning of the disputed domain name) renders it virtually identical visually. The Panel finds the mark is recognizable within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. 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 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. The Panel finds Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Complainant has provided evidence that Respondent used the disputed domain name in email communications to obtain a payment and other information1. The use of a domain name for such activity does not confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1. Respondent has not rebutted 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. The Panel finds the second element of the Policy has been established. 1 Complainant’s heavily-redacted email thread does not directly support the allegations regarding “impersonation” (e.g., evidence other than use of the disputed domain name in a sender’s email address, such as a signature line, use of the ITRON mark or logo, etc.). The Panel is mindful that reasonable redaction may be appropriate to protect privacy and personal data of a third party or to protect confidential information but, in the Panel’s view, the better practice would have been to provide the basis for the redactions and greater context for the email exchanges.
page 4 C. Registered and Used in 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. In the present case, the Panel finds that under the totality of the circumstances, including among other things, the distinctiveness of Complainant’s mark, Respondent’s failure to respond, Respondent’s having concealed its identity, the lack of evidence of use of the disputed domain name other than in an email address combined with the likelihood that that use was for deceptive activity, constitutes registration and use in bad faith under the Policy. See WIPO Overview 3.0, section 3.3. The Panel finds the third element of the Policy has been established. 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 Complainant. /Debra J. Stanek/ Debra J. Stanek Sole Panelist Date: July 11, 2024
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