WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Roper Industries, Inc. v. VistaPrint Technologies Ltd.
Case No. D2014-1828
1. The Parties
The Complainant is Roper Industries, Inc. of Sarasota, Florida, United States of America ("US"), represented by Caesar, Rivise, Bernstein, Cohen, & Pokotilow, Ltd., US.
The Respondent is VistaPrint Technologies Ltd. of Hamilton, Bermuda, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland ("UK").
2. The Domain Name and Registrar
The disputed domain name <ropenind.com> is registered with Tucows Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 20, 2014. On October 20, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 20, 2014, the Registrar 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 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 31, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 20, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 21, 2014.
The Center appointed Andrew Brown Q.C. as the sole panelist in this matter on December 2, 2014. 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 states in affidavit evidence that:
(a) It has, since 1957 through its predecessors, carried on the business of manufacturing and marketing a variety of engineered products and solutions. Its products include medical and scientific imaging products, software, radio frequency products, services and application software, industrial technology products and energy systems, and controls products and solutions.
(b) It is one of the leading technology companies in the world and is well-known in the investment community and in the industries in which it is involved. It has been and is a constituent of the S&P 500, Fortune 1000 and Russell 2000 indices. It has been recognized by Forbes magazine as one of the Top 100 "World's most innovative companies" and as one of its "Global 2000" "World's biggest public companies".
(c) From 1957 to the present the Complainant has used the name and mark ROPER to identify its business and to distinguish it from the businesses of others. The level of use has been significant. Among other things, it has prominently displayed the name and mark ROPER in all of its printed materials, which have been extensively and widely distributed throughout the US.
(d) It has a strong presence on the Internet by way of a website located at "www.roperind.com" which has since as early as 1999 prominently used and displayed the name and mark ROPER.
(e) From 2009 to 2013 the Complainant made annual net sales of USD 2 billion, USD 2.4 billion, USD 2.8 billion, USD 3 billion and USD 3.2 billion, respectively.
(f) As a result of its use of the name and mark ROPER, and its wide recognition and success, the name and mark ROPER has developed and acquired a secondary and distinctive trademark meaning to the investment community and trade. The name and mark ROPER has become an extremely valuable symbol of the Complainant, its enterprise, and its goodwill.
The disputed domain name was registered by the Respondent on October 8, 2014. Evidence shows that as at October 20, 2014, the disputed domain name resolved to a holding page, displaying the logo mark "VISTAPRINT MAKE AN IMPRESSION", together with brief promotional copy for the Respondent's website creation services, and a link to the Respondent's website located at "www.vistaprint.com".
The Respondent's website located at "www.vistaprint.com" states that:
- the Respondent offers website hosting services;
- typically a Vistaprint legal entity (i.e., and not the Vistaprint customer) is listed as the registrant of a Vistaprint hosted website;
In a previous decision under the Policy, namely Maxim Healthcare Services, Inc. v. Vista Print Technologies Ltd, WIPO Case No. D2009-1168, the panel records the "Respondent's explanation that it is in the business of providing international print and electronic services for small business customers, including web hosting and domain name registration. As part of that service, the Respondent stated, a customer may through an automated process cause the Respondent's system to apply for registration of a domain name chosen by the customer, based on the customer's representation that such a registration will not infringe the rights of third parties".
Affidavit evidence filed by the Complainant in this case shows that on October 8, 2014 (i.e., the date of creation of the disputed domain name) a fraudulent email was sent to Mr. S., Vice President and controller of the Complainant. Relevantly, that fraudulent email provided a sender email address utilizing the disputed domain name, namely: "[...]@ropenind.com." J. H. is a senior executive of the Complainant.
The email fraudulently directed Mr. S. to wire USD 36,000 to an account with Members First Credit Union of Midland, Michigan, US. The email included a further fictitious email purportedly between senior executives of the Complainant. The Complainant's affidavit evidence confirms that neither the October 8, 2014 email, nor the underlying email, were bona fide.
The Panel notes that two decisions of previous UDRP panels against the present Respondent describe similar fraudulent emails being sent to employees or customers of the respective complainants. In each case the fraudulent emails also provided reply email addresses utilizing the relevant domain names (TVS Motor Company Ltd v. Vista Print Technologies Ltd, WIPO Case No. DCO2014-0007; Tetra Laval Holdings & Finance S.A. v. Vista Print Technologies Ltd, WIPO Case No. D2014-1387). In each of those cases the domain names were transferred to the relevant complainants following findings that these were bad faith registrations.
5. Parties' Contentions
The Complainant asserts that it has satisfied the three elements of paragraph 4(a) of the Policy and requests that the disputed domain name be transferred to it.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following elements with respect to the disputed domain name in order to succeed in this proceeding:
(i) that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant does not rely on any registered trademark rights. Rather the Complainant relies on the unregistered trademark ROPER as well as a reputation and rights in the domain name form <roperind.com>.
Based on the evidence filed (as verified and confirmed by affidavit from the Complainant's Vice President and Controller), the Panel accepts that the Complainant has established rights and goodwill in the unregistered trademarks ROPER and ROPERIND for the purpose of the Policy. This is as a result of:
(a) The prominent use of the name and mark ROPER on all of the Complainant's printed materials which have been extensively and widely distributed through the US.
(b) The Complainant's website located at "www.roperind.com" which has since as early as 1999 prominently used and displayed the name and mark ROPER and ROPERIND and has been in use continuously.
(c) By way of the Complainant's substantial annual net sales between 2009 and 2013 which have risen from USD 2.0 billion in 2009 to USD 3.2 billion in 2013.
The Panel finds that the disputed domain name is confusingly similar to the Complainant's trademarks ROPER and ROPERIND. In particular, the disputed domain name differs from ROPERIND by only one character. The substitution of the letter "n" for the letter "r" in the Complainant's trademark does not sufficiently differentiate the disputed domain name so that threshold confusion will not arise. Furthermore, in the Panel's assessment, the addition of the term "ind", which appears to be an abbreviation of "industry" (the Complainant's name is "Roper Industries, Inc."), is not sufficient to avoid the risk of confusing similarity between the disputed domain name and the Complainant's ROPER mark.
The Panel accordingly finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights and finds that paragraph 4(a)(i) of the Policy is satisfied in favor of the Complainant.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish that it has rights or legitimate interests in the disputed domain name, among other circumstances, by showing any of the following elements:
(i) that before notice of the dispute, the Respondent used or made demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) that the Respondent has been commonly known by the disputed domain name, even if it had acquired no trademark or service mark rights; or
(iii) that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The overall burden of proof for establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name lies with the Complainant.
The Complainant states in affidavit evidence, and the Panel accepts, that the Respondent is not sponsored, endorsed, related to, affiliated or connected with the Complainant.
In the circumstances, the Panel finds that the Complainant has satisfied the burden of showing a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
Accordingly, and in the absence of any formal Response from the Respondent, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied in favor of the Complainant.
C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, are evidence of the registration and use of the disputed domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the disputed domain name; or
(ii) that the Respondent has registered the disputed domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) that the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service on the Respondent's website or location.
In the present case, the true identity of the underlying registrant, being the customer of the Respondent who apparently triggered the creation of the disputed domain name by way of the Respondent's automated processes, is unknown.
The Respondent did not respond to the Complaint, and therefore has not revealed the identity of that underlying registrant. It would not be appropriate if this were to prevent the Panel from deciding this case.
The Panel therefore treats the Respondent as the relevant respondent of record. In this regard, the situation is analogous to one in which a privacy or proxy registration service is used, and that privacy or proxy registration service does not disclose the identity of the underlying registrant in a timely manner. In such a situation it is appropriate to treat the proxy registration service as the respondent of record. This situation is outlined in the WIPO overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), at 3.9:
"Identification by a Registrar or privacy proxy service of another such service as the purported registrant of the domain name may also constitute evidence of cyber flight and bad faith, as may failure in response to a UDRP provider's request to timely confirm the identity and contact information of the registrant of the domain name where the registrant listed in the WhoIs is a privacy or proxy service (although such failure would not prevent a panel from deciding such cases, with the privacy or proxy service typically being regard as the relevant respondent of record)." (Emphasis added).
As already outlined, the Complainant has unregistered rights in ROPER and ROPERIND which well predate the registration of the disputed domain name. The Panel is satisfied that the disputed domain name was registered in bad faith. In this regard, the Panel relies on the following:
(a) The disputed domain name is a close typo-variant of the Complainant's trademark ROPERIND;
(b) The disputed domain name was, on October 8, 2014, being the date of its creation, used as the return email address in fraudulent correspondence sent to the Complainant. The fact that the fraudulent email was sent to the Complainant's Vice President, Mr. S. at the correct email address for the Complainant shows that the Respondent was clearly aware of the identity and reputation of the Complainant at the time of registration of the disputed domain name.
(c) The Respondent failed to respond to the Complainant (from which the Panel is entitled to draw adverse inferences).
As to the second limb of the third element, the Panel is also satisfied that the disputed domain name has been and is being used in bad faith. In this regard, the Panel relies on the following:
(a) The disputed domain name was, on October 8, 2014, being the date of its creation, used as the return email address in fraudulent correspondence sent to the Respondent, seeking to dupe the Complainant into sending money to a stated banking account. Affidavit evidence from the Complainant has clearly established that none of the correspondence was bona fide but instead was an attempt to commit fraud and deceptively steal money from the Complainant. There appears to be a pattern of such activity since it is the same modus operandi as disclosed in TVS Motor Company Ltd v. Vista Print Technologies Ltd, WIPO Case No. DCO2014-0007; Tetra Laval Holdings & Finance S.A. v. Vista Print Technologies Ltd, WIPO Case No. D2014-1387;
(b) The Respondent failed to respond to the Complainant (from which the Panel is entitled to draw adverse inferences).
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 <ropenind.com> be transferred to the Complainant.
Andrew Brown Q.C.
Date: December 11, 2014