WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Nordic Waterproofing AB v. Kenneth Pearce

Case No. D2017-1122

1. The Parties

The Complainant is Nordic Waterproofing AB of Höganäs, Sweden, represented by Ports Group AB, Sweden.

The Respondent is Kenneth Pearce of Pittsfield, Maine, United States of America (“US”).

2. The Domain Name and Registrar

The disputed domain name <nordicwatarproofing.com> is registered with 1&1 Internet AG (the “Registrar”).

3. Procedural History

The Complaint was filed by Trelleborg Waterproofing AB with the WIPO Arbitration and Mediation Center (the “Center”) on June 8, 2017. On June 8, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 9, 2017, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 29, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 19, 2017. Due to an administrative oversight, the Complaint was re‑notified to the Respondent, copying the Complainant, on July 28, 2017, granting the Respondent to August 4, 2017 to submit a Response. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 10, 2017.

The Center appointed Anne-Virginie La Spada-Gaide as the sole panelist in this matter on August 24, 2017. 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.

On September 15, 2017, the Panel issued Procedural Order no. 1, requesting that the Complainant submit evidence regarding the ownership of the European Union Trademark cited in support of the Complaint. The Panel had indeed noted that the exhibits submitted with the Complaint did not include information on the ownership of the EU trademark. Furthermore, the Panel had noted that as a result of a transfer of ownership recorded on June 22, 2017, the current holder of the trademark was not the company initially named as the Complainant, namely Trelleborg Waterproofing AB, but the company Nordic Waterproofing Group AB. The Complainant was also required to provide information regarding such transfer, and regarding the relationship between Trelleborg Waterproofing AB and Nordic Waterproofing Group AB. The Respondent was also invited to submit its comments (if any).

The Complainant replied to the Procedural Order no. 1 on September 18, 2017. The Complainant explained that the company Trelleborg Waterproofing AB was the registered owner of the mark at the time of filing of the Complaint. The company had changed its name a few years before into Nordic Waterproofing AB. Nordic Waterproofing AB assigned the trademark to Nordic Waterproofing Group AB and the transfer was recorded after the filing of the complaint. The two companies belong to the same group. With its reply to the Procedural Order, the Complainant submitted an amended Complaint naming Nordic Waterproofing AB as the Complainant. The Respondent did not submit any comments.

4. Factual Background

Nordic Waterproofing Group AB is the holder of a European trademark registration NORDICWATERPROOFING no. 009672064, filed on March 29, 2011 and registered on August 26, 2011 in classes 17 and 19.

The Respondent is an individual with an address in the US. The disputed domain name <nordicwatarproofing.com> was registered on May 10, 2017.

On May 10, 2017, an employee of the Complainant received an email from someone with an email address identical to the disputed domain name, namely from [xxx]@nordicwatarproofing.com. The author of such email pretended that he needed to carry out an urgent invoice payment, and asked the Complainant’s employee to assist with such payment. Obviously, the purpose of the email was to lead the Complainant to make a false payment.

The Complainant sent a cease-and-desist letter to the Respondent by emails dated May 15, 2017 and May 29, 2017, informing the Respondent about its trademark rights and stating that the disputed domain name was infringing its rights. The Complainant also emphasized that the Respondent’s behavior was fraudulent and requested the Respondent to transfer the disputed domain name. The Respondent did not reply to such emails.

At some point before the filing of the Complaint, the disputed domain name <nordicwatarproofing.com> resolved to a parking website containing sponsored links. It does not currently resolve to an active website.

5. Parties’ Contentions

A. Complainant

The Complainant’s submissions can be summarized as follows:

The Complainant is one of Europe’s leading producers and suppliers of waterproofing products and services for buildings and infrastructures.

The disputed domain name <nordicwatarproofing.com> is confusingly similar to the trademark NORDICWATERPROOFING as only the letter “e” in the word “water” has been changed into the letter “a”.

The Respondent does not have any rights in the domain name, nor is the Respondent a licensee of the Complainant. The Complainant never authorized the Respondent in any manner to register the domain name. The Respondent has therefore no legitimate interest in the disputed domain name.

The disputed domain name resolved to a website displaying sponsored links, which does not in itself confer a legitimate interest in the disputed domain name.

The disputed domain name contains terms that are related with the Complainant’s business activities. This indicates that the Respondent registered the disputed domain name with the Complainant’s trademark in mind.

In addition, the Respondent used the domain name to send a fraudulent email to the Complainant with the clear purpose to mislead the Complainant into making false payments.

Finally, the Respondent did not reply to the Complainant’s cease and desist letter requesting the transfer of the disputed domain name.

The above circumstances strongly suggest that the disputed domain name has been registered and used in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, a complainant must assert and prove each of the following:

(i) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name registered by the respondent has been registered and is being used in bad faith.

A. Preliminary issue regarding the Complainant’s trademark

In the Panel’s opinion, the Complainant has submitted evidence that the company initially named as the Complainant, namely Trelleborg Waterproofing AB, changed its name into Nordic Waterproofing AB. Nordic Waterproofing AB and Nordic Waterproofing Group AB (the current registered holder of the trademark cited in support of the Complaint) belong to the same group and are therefore affiliated companies. The Respondent did not dispute this allegation or the relevance of the exhibits submitted by the Complainant.

According to a consensus view among UDRP panels, a related company such as a subsidiary or parent to the registered holder of a trademark is in most circumstances considered to have rights in a trademark under the UDRP (Section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). Accordingly, the Panel finds the Complainant named in the amended Complaint (Nordic Waterproofing AB) has standing to bring a complaint against the Respondent. The Panel therefore accepts Nordic Waterproofing AB as the Complainant in this administrative procedure.

B. Identical or Confusingly Similar

Nordic Waterproofing Group AB has EU trademark rights for NORDICWATERPROOFING. As explained above, the Complainant and Nordic Waterproofing Group AB are affiliated companies; therefore the Complainant has rights in the trademark NORDICWATERPROOFING for the purposes of the Policy.

The disputed domain name <nordicwatarproofing.com> almost reproduces the Complainant’s trademark in its entirety except from the letter “e” that was replaced by the letter “a” in the word “water”. This minor modification does not prevent confusion, especially as the word “water” is in the middle of the disputed domain name and is therefore not conspicuous.

In fact, panels have found that “the deletion or addition of one letter is an insignificant change for the purposes of Policy 4(a)(i)” (See Staples, Inc., Staples Contract & Commercial, Inc., Staples The Office Superstore, Inc. v. John Sansone, WIPO Case No. D2004-0018). In addition, the one-letter difference renders the disputed domain name nonsensical, suggesting that the Respondent chose the domain name containing the minor difference specifically because it is confusingly similar to the Complainant’s trademark (See Reuters Limited. v. Global Net 2000, Inc., WIPO Case No. D2000-0441).

Furthermore, the adjunction of the extension “.com” should be ignored for the purposes of assessing the confusing similarity. The Panel accordingly finds that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights.

The Complainant has thus satisfied the condition set forth in paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving that a respondent lacks rights or legitimate interests in a domain name may result in the often impossible 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 proof for this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element (according to Section 2.1 of the WIPO Overview 3.0.

In this particular case, the Complainant makes the following undisputed allegations:

- There is no relationship between the Respondent and the Complainant that would give rise to any license, permission or authorization for the Respondent to use or register the disputed domain name.

- There is no evidence of bona fide use by the Respondent of the disputed domain name, no evidence that the Respondent has been commonly known by the disputed domain name nor evidence of legitimate use.

- The Respondent used the disputed domain name in relation with a parking website containing sponsored links.

The Panel is of the view that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.

Finally, as mentioned above, the Respondent did not reply to the Complainant’s cease-and-desist letter, nor did the Respondent file a Response to the Complaint. According to the Rules, paragraph 14(b), the Panel may draw from the lack of a response the inferences that it considers appropriate. In the case at hand, it is the Panel’s inference that the Respondent’s silence corroborates the Complainant’s assertion that the Respondent lacks rights or legitimate interests in the disputed domain name.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and that the Complainant has satisfied the condition set out in paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

Considering that the disputed domain name is practically identical to the trademark NORDICWATERPROOFING and that the disputed domain name was registered well after the Complainant’s European Union trademark, the Panel is of the view that the Respondent knew, or should have known, of the Complainant’s trademark when it registered the disputed domain name.

In such circumstances, the minor modification of the NORDICWATERPROOFING trademark within the disputed domain name can hardly be the result of a coincidence, and shows in the Panel’s view that the Respondent was aware of and targeted the Complainant’s rights and activities.

This is all the more true since the Respondent used an email address corresponding to the disputed domain name to contact the Complainant by email, pretending to be someone from the Complainant’s organization, and to try to induce the Complainant to operate a false payment.

Panels have previously found that such fraudulent conduct constitutes bad faith (See SAP SE v. Name Redacted / Domains By Proxy, LLC, WIPO Case No. D2016-0410; Halliburton Energy Services, Inc. v. Whois Privacy Protection Service, Inc. / KEEP MOUTH, WIPO Case No. D2016-0413).

The fact that the disputed domain name does currently not resolve to an active webpage does not change the Panelist’s opinion on the existence of bad faith. In fact, passive holding of a domain name can also be considered, under certain circumstances, as bad faith (Section 3.3 of the WIPO Overview 3.0; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). In the present case, the fact that the Respondent tried to mislead the Complainant into proceeding to a false payment is sufficient to consider that such passive holding constitutes bad faith.

According to the above and with respect to the Respondent’s fraudulent behavior, the Panel finds that the disputed domain name was registered and used in bad faith.

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 <nordicwatarproofing.com> be transferred to the Complainant.

Anne-Virginie La Spada-Gaide
Sole Panelist
Date: September 26, 2017