ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Ideals Solutions Operations Limited v. Timothy Monson Monson, joyt Case No. DCO2024-0036 1. The Parties The Complainant is Ideals Solutions Operations Limited, Malta, represented by Schoenherr Halwa sp.k Law Firm, Poland. The Respondent is Timothy Monson Monson, joyt, United States of America (“USA”). 2. The Domain Name and Registrar The disputed domain name is registered with Key-Systems GmbH (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 8, 2024. On May 8, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 10, 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 (respondent unknown) 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 13, 2024. The Center verified that the Complaint [together with the amendment to the Complaint/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 May 16, 2024. In accordance with the Rules, paragraph 5, the due date for Response was June 5, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 12, 2024. The Center appointed Marina Perraki as the sole panelist in this matter on June 18, 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.
page 2 4. Factual Background Complainant and its group of companies provide data room software solutions under the brand IDEALS. Complainant’s group has international presence with offices in the USA, United Kingdom and China, European Union and Brazil, among others. Complainant was established in 2018 and the IDEALS group of companies has been active since 2008. Complainant’s group owns trademark registrations for IDEALS, including: - the United States of America trademark registration no 4427448, IDEALS (word), filed on May 2, 2012 and registered on November 5, 2013 for goods and services in international classes 9, 39, 38 and 42; - the European Union trademark registration no 017992437, IDEALS (word), filed on November 27, 2018 and registered on May 22, 2019, for goods and services in international classes 9, 38, 42; and - the United Kingdom trademark registration no UK00917992437 IDEALS (word), filed on November 26, 2018 and registered on May 22, 2019 for goods and services in international classes 9, 38 and 42. Complainant is the exclusive licensee of the above marks. Complainant is also the holder of the domain name registration , which is used as an email address for internal communications within Complainant’s group. The Domain Name was registered on January 24, 2024, and currently leads to an inactive website. At the time of filing of the Complaint it was used to create an email address and send fraudulent emails. On January 25, 2024, namely one day after the registration of the Domain Name, a client of Complainant, received an email from the following email address […]@idealscorp.co, mimicking almost completely an existing email address of a Complainant’s existing employee […]@idealscorp.com, by which the sender impersonated such Complainant employee and claimed that the bank account details of Complainant had been altered and requested an update, with a new invoice on client’s end. The sender sought to cause a payment into a third party’s bank account. On January 29, 2024, the perpetrators, still impersonating Complainant’s employee and using the above email address with the Domain Name, claimed there was a need to make an additional payment. The client notified Complainant accordingly and the scam was revealed. On January 31, 2024, the security team of Complainant notified the Registrar and the Domain Name was suspended. 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. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
page 3 (iii) the Domain Name has been registered and is being used in bad faith 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 for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The entirety of the mark is reproduced 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. Although the addition of other terms here, “corp” may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. The country code Top-Level Domain (“ccTLD”) “.co” is disregarded, as ccTLDs typically do not form part of the comparison on the grounds that they are required for technical reasons only. WIPO Overview 3.0, section 1.11.1. 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 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. Complainant demonstrated that Respondent used the Domain Name for the purpose of initiating a fraudulent scheme, namely, to send fraudulent emails to a client of Complainant impersonating a current employee of Complainant for the only purpose of a scam. The use of the Domain Name for an illegal activity such as constructing an email composition containing the Domain Name for deceiving purposes cannot confer rights or legitimate interests on Respondent (L’Oréal v. Cimpress Schweiz GmbH, WIPO Case No. DCO2017-0021). Panels have held that the use of a domain name for illegal activity here, claimed impersonation/passing off, or other types of fraud can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1.
page 4 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. 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. The Panel concludes that Respondent has registered and used the Domain Name in bad faith. Because the IDEALS mark had been used and registered at the time of the Domain Name registration by Complainant, the Panel finds it more likely than not that Respondent had Complainant’s mark in mind when registering this Domain Name (Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc., WIPO Case No. D2014-1754). Furthermore, the Domain Name incorporates in whole Complainant’s mark plus the additional term “corp” and corresponds to an existing domain name of Complainant, namely . This further indicates that Respondent knew of Complainant and chose the Domain Name with knowledge of Complainant and its business. Lastly, it is apparent that Respondent was aware of Complainant and Complainant’s mark IDEALS when registering the Domain Name. As Complainant demonstrated, Respondent used the Domain Name, one day after the day it was registered, to create an email address and send a fraudulent email to one of Complainant’s customers. As regards bad faith use, Complainant demonstrated that the Domain Name was used to create an email address similar to a real email address of an employee of Complainant and send emails, impersonating a current employee of Complainant, to a third party inviting it, inter alia, to make payments. The first email was sent one day after the date that the Domain Name was registered. The purpose of this email was to trick its recipient into believing that they were dealing with Complainant and, thus, providing the requested information. Use of a domain name for purposes other than to host a website may also constitute bad faith. Such purposes include sending deceptive emails, phishing, identity theft, or malware distribution (WIPO Overview 3.0, section 3.4). This pattern can be used in support of bad faith registration and use (L’Oréal v. Cimpress Schweiz GmbH, WIPO Case No. DCO2017-0021 and WIPO Overview 3.0, sections 3.3 and 3.4). Panels have held that the use of a domain name for illegal activity, here, claimed impersonation/passing off, or other types of fraud, constitutes bad faith. WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy. Furthermore, Panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. Having reviewed the available record, the Panel finds the non-use of the disputed domain name does not prevent a finding of bad faith in the circumstances of this proceeding. Although panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, and (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement). WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes the composition of the disputed domain name and its prior use and finds that in the circumstances of this case the passive holding of the disputed domain name does not prevent a finding of bad faith under the Policy.
page 5 The Panel finds that the Complainant has established the third element 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 be transferred to the Complainant. /Marina Perraki/ Marina Perraki Sole Panelist Date: July 2, 2024
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