WIPO Arbitration and Mediation Center
ADMINISTRATIVE THE PANEL DECISION
Magna International Inc. v. Mustafa Mashari
Case No. D2015-0645
1. The Parties
Complainant is Magna International Inc., Ontario, Canada, represented by Gowling Lafleur Henderson LLP, Canada.
Respondent is Mustafa Mashari, Dubai, United Arab Emirates.
2. The Domain Name and Registrar
The disputed domain name <magnahr.info> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 10, 2015. On April 10, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 10, 2015, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on April 15, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 5, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 19, 2015.
The Center appointed Jeffrey D. Steinhardt as sole panelist in this matter on May 19, 2015. 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 owns a large number of trademarks in many countries which include the term “magna,” for example MAGNA (word mark), United States Trademark Registration No. 1837713 in classes 7, 9, 40 and 42, registered May 31, 1994 and Community Trademark Registration No. 010109221 in classes 37, 40 and 42, registered December 7, 2011.
The disputed domain name was registered February 2, 2015 and routes to a parking page displaying sponsored link advertising that relates to several commercial areas, none of which appear to involve Complainant’s business.
5. Parties’ Contentions
The Complaint avers that, in association with the MAGNA mark, Complainant’s company employs 131,000 employees, with 313 manufacturing operations and 84 product development, engineering, and sales centers across 28 countries and five continents. Complainant avers that its MAGNA mark has been in use for more than forty years.
The Complaint avers that Respondent and/or other persons acting on his behalf have sent third parties fraudulent phishing emails purportedly offering employment with the “Magna” business and soliciting employment applications and other materials from these third parties.
It is averred that in February 2015, Complainant was contacted by an individual who had received an offer of employment from “Magna, Inc.” The email offer was sent from “Edsel G. Carl” and listed a fictitious postal address in Germany. In the solicitation email, the recipient is instructed to complete an attached Employment Contract and return a copy by email to “firstname.lastname@example.org.” The employment materials include certificates and other items, including an employee identification card bearing the MAGNA trademark. Completion requires applicants to provide confidential personal and financial information, including personal banking information. Materials also include the URL of Complainant’s real website.
The third-party recipient who advised Complainant of the allegedly fraudulent employment offer claimed that she was required to pay a EUR 60 fee which she had not been able to recover.
Complainant alleges that it does not employ “Edsel G. Carl” and that the materials are intended to deceive Internet users, particularly prospective employees, into providing Respondent with confidential personal and financial information, and to collect funds from applicants.
The Complaint also provides documentation from various third-party websites about fraudulent phishing email solicitations allegedly sent on behalf of a variety of employers, which have also made use of very similar language and materials; they also include references to a purported employee named “Edsel G. Carl.” The phishing scams described on the third-party websites detail attempts to solicit bank information through the completion of Employment Contracts and to solicit cash payments for the download of software allegedly required for the recipient to begin employment.
In legal contentions, the Complaint alleges that (1) the disputed domain name is identical or confusingly similar to Complainant’s trademarks, (2) Respondent has no rights or legitimate interests in the disputed domain name, and (3) the disputed domain name was registered and is being used in bad faith, all in violation of the Policy. With respect to the latter, the Complaint provides a list of nine other domain names allegedly registered by Respondent, all of which contain the letters “hr” and are based on trademarks of third parties.
On this basis, Complainant requests transfer.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
The Panel must render its Decision on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Rules, paragraph 15(a). Complainant must establish each element of paragraph 4(a) of the Policy, namely:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Complaint must establish these elements even if Respondent does not reply. See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064. In the absence of a Response, the Panel may also accept as true the reasonable factual allegations in the Complaint. E.g., ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000 0009).
A. Identical or Confusingly Similar
Although the disputed domain name <magnahr.info> is not identical to Complainant’s trademarks, the Panel agrees that the disputed domain name is confusingly similar to Complainant’s MAGNA trademark.
UDRP panels usually disregard the domain name suffix in evaluating confusing similarity. E.g., VAT Holding AG v. VAT.com, WIPO Case No. D2000 0607; Shangri La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006 1315.
Omitting the “.info” generic Top-Level Domain (“gTLD”) suffix, the disputed domain name adopts Complainant’s trademark in its entirety, adding only the characters “hr,” initials commonly understood to relate to human resources or the employment department of an enterprise. The Panel finds that Respondent’s addition of the two letters “h” and “r” does not negate the confusion created by Respondent’s complete inclusion of the MAGNA trademark in the disputed domain name. E.g., Sanofi aventis, Sanofi-aventis Deutschland GmbH v. Andrey Mitrofanov, WIPO Case No. D2007 1772; Giata Gesellschaft für die Entwicklung und Vermarktung interaktiver Tourismusanwendungen mbH v. Keyword Marketing, Inc., WIPO Case No. D2006 1137; Hoffmann La Roche Inc. v. Aneko Bohner, WIPO Case No. D2006 0629. In fact, as the Complaint points out, the addition of the two letters and the manner in which the website is apparently being used adds to confusion, creating the impression that Internet users sending emails to “email@example.com” will be communicating with Complainant’s HR department. See Wim Bosman Holding B.V. v. Ipower, Inc., WIPO Case No. D2014-0556.
The Panel finds therefore that the disputed domain name is confusingly similar to the registered trademarks of Complainant and that the requirements of paragraph 4(a)(i) of the Policy are fulfilled.
B. Rights or Legitimate Interests
The Panel also concludes that Respondent has no rights or legitimate interests in the disputed domain name.
The Policy contains a non exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in a domain name. The list includes: (1) using, or making demonstrable preparations to use, the domain name in connection with a bona fide offering of goods and services; (2) being commonly known by the domain name; or (3) making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers. Policy, paragraphs 4(c)(i)-(iii).
A complainant must make a prima facie case that a respondent lacks rights or legitimate interests in a domain name, after which the burden of production shifts to the respondent. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003 0455. The absence of rights or legitimate interests is established if a complainant makes out a prima facie case and the respondent enters no response. Id., (citing De Agostini S.p.A. v. Marco Cialone, WIPO Case No. DTV2002 0005).
The Panel accepts the Complaint’s undisputed allegations that Respondent has no authorization to use Complainant’s trademarks and that Respondent is not commonly known by the disputed domain name. Similarly, the Panel accepts the allegations that Respondent is not making a bona fide use of the disputed domain name under the Policy.
The Complaint alleges that Respondent is using the disputed domain name in an elaborate scheme to defraud third parties. Based on the submissions, the Panel agrees.
The Panel therefore finds that Respondent’s use of the disputed domain name demonstrates Respondent’s lack of a legitimate noncommercial interest in, or fair use of, the disputed domain name, without intent for commercial gain to misleadingly divert consumers.
The Complaint makes out a prima facie case. Filing no Response, Respondent has not rebutted Complainant’s prima facie case or invoked any of the circumstances of paragraph 4(c) of the Policy to support the existence of rights or legitimate interests in the disputed domain name.
Accordingly, the Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
The Panel finds that the third element of paragraph 4(a) of the Policy, bad faith registration and bad faith use, is also established, as elaborated below.
Complainant concedes that it is unaware of the relationship between Respondent and “Edsel G. Carl” or the senders of the emails directing applicants to forward their confidential data and funds to the address hosted at the disputed domain name. Respondent had the opportunity to clarify the relationship but refrained from responding to the Complaint.
The Panel finds that it is fair to infer that the solicitations are attributable to Respondent, or at the very least, to individuals acting in concert with Respondent. The Panel bases this finding on (1) the fact that the website appears to be used only as a parking page and to host the above-mentioned email address, and (2) Respondent’s pattern of registering third-party trademarks for other domain names in combination with the term “hr.”
With respect to bad faith, the Complaint mainly relies upon three grounds listed in the Policy: paragraph 4(b)(ii) (respondents engaging in a pattern of registering domain names for the purpose of preventing trademark owners from registering them), paragraph 4(b)(iii) (disrupting the business of a competitor), and paragraph 4(b)(iv) (intentionally attracting Internet users by creating a likelihood of confusion, for commercial gain).
Under the circumstances, it is unnecessary for the Panel to consider whether bad faith is established under paragraphs 4(b)(ii) and 4(b)(iii) of the Policy. This is because the phishing scam evidenced by the materials submitted with the Complaint provides ample support for finding bad faith on the ground that Respondent has sought to intentionally attract Internet users, for commercial gain, by creating a likelihood of confusion. Not only has Respondent used a misleading disputed domain name, Respondent (or others acting in concert with him) has also reproduced in its solicitations Complainant’s trademarks and the URL of one of Complainant’s websites.
Respondent was undoubtedly aware of Complainant’s MAGNA mark, which had been registered and enjoyed widespread international use for many years before Respondent registered the disputed domain name. The Panel finds that Respondent deliberately included the mark in the disputed domain name to create confusion and attract Internet users to its website for commercial gain. This is evidence of bad faith registration and bad faith use. Policy, paragraph 4(b)(iv). See, e.g., L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005 0623.
The Panel further finds that Respondent’s failure to reply to the Complaint is cumulative evidence of use in bad faith.
Consequently, the Panel concludes that the requirements of the third element of Policy paragraph 4(a) are fulfilled.
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 <magnahr.info> be transferred to Complainant.
Jeffrey D. Steinhardt
Date: May 28, 2015