WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Select Equity Group, L.P. v. Cimpress Schweiz GmbH

Case No. D2017-1140

1. The Parties

The Complainant is Select Equity Group, L.P. of New York, New York, United States of America (“United States”), represented by Andrews Kurth Kenyon LLP, United States.

The Respondent is Cimpress Schweiz GmbH of Zurich, Switzerland.

2. The Domain Name and Registrar

The disputed domain name <selecteqiuty.com> (“the Disputed Domain Name”) is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 9, 2017. On June 12, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On the same day, 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 14, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 4, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 5, 2017.

The Center appointed Isabel Davies as the sole panelist in this matter on July 11, 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.

4. Factual Background

The Complainant has been offering investment management and investment advisory services to investors under the SELECT EQUITY trademark for nearly three decades.

Since September 5, 2006, the Complainant has owned United States trademark Registration No. 3,138,522 in Class 36 for SELECT EQUITY and design .

On September 22, 2012, The United States Patent and Trademark Office accepted the Complainant’s Combined Declaration of Use and Incontestability (“the Section 8/15Declaration”) in relation to the Registration.

The Respondent registered the Disputed Domain Name on April 20, 2017.

The Disputed Domain Name resolves to the website located at “www.selecteqiuty.com”.

As of May 16, 2017, the website did not contain any content.

On or about May 19, 2017, the website began displaying pay-per-click advertising with “Related Links” that would interest the Complainant’s customers, since these links relate to the Complainant’s financial services, e.g.: “High Yield Bonds” and “Derivatives Market”.

5. Parties’ Contentions

A. The Complainant

(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has long-established rights.(Policy, paragraph 4(a)(i), Rules, paragraphs 3(b)(viii), (b)(ix)(1)).

The Complainant contends that the Disputed Domain Name is either identical or confusingly similar the Complainant’s SELECT EQUITY marks which have been used extensively for over three decades and now has USD 21 billion under its management, for at least three reasons.

First, the Disputed Domain Name appropriates the entirety of the Complainant’s SELECT EQUITY word mark. The only “difference” between the two is that the letter “u” appears before the letter “i” in this word mark, whereas the letter “i” appears before the letter “u” in the Disputed Domain Name (i.e., <selecteqiuty.com>). This one-letter difference, the Complainant submits is, however, immaterial, and does not distinguish or otherwise differentiate the Disputed Domain Name from the Complainant’s SELECT EQUITY marks. It contends that the Disputed Domain Name is nearly identical to the Complainant’s SELECT EQUITY marks in sight, sound, meaning, and commercial impression.

Accordingly, the Complainant submits, the Disputed Domain Name is confusingly similar to the Complainant’s SELECT EQUITY marks.

Secondly, the Complainant contends, the transposed letters “u” and “i” are next to one another on English-language keyboards and this constitutes “typosquatting” and UDRP panels routinely hold that domain names created via typosquatting are confusingly similar to a complainant’s marks.

Thirdly, the addition of the generic Top-Level Domain (“gTLD”) “.com” to the Disputed Domain Name is not a distinguishing factor.

For the reasons set forth above, the Complainant submits that the Disputed Domain Name is identical or confusingly similar to the Complainant’s SELECT EQUITY Marks.

(ii) The Respondent has no rights or legitimate interests in respect to the Disputed Domain Name.(Policy, paragraph 4(a)(ii), Rules, paragraph 3(b)(ix)(2)).

(a) The Respondent is not using the Disputed Domain Name for a bona fide offering of goods or services, nor is the Respondent making a legitimate noncommercial or fair use of the Disputed Domain Name.

The Complainant states that the Respondent has no established rights or legitimate interests in the Disputed Domain Name.

The Respondent used the Disputed Domain Name to create a fake email account in the name of the Complainant’s Principal. The Respondent then used this fake email account to send emails requesting payment assistance (ostensibly to commit financial fraud), and signed the emails with the name of the Complainant’s Principal. The Complainant states that this does not constitute the offering of bona fide goods or services, or a legitimate noncommercial or fair use of the Disputed Domain Name.

The Complainant states that Disputed Domain Name resolved to a blank website and submits that this is evidence that the Respondent was not making use of the Disputed Domain Name in connection with a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the Disputed Domain Name.

The Complainant states that, on or about May 19, 2017, the Respondent began resolving the Disputed Domain Name to a website that displays sponsored links to third-party financial websites for services closely related to the Complainant’s financial services. The Complainant submits that, with these actions, the Respondent is not using the Disputed Domain Name for a bona fide offering of goods or services, or making a legitimate noncommercial or fair use of the Disputed Domain Name but is rather using the Disputed Domain Name to trade off the extensive consumer recognition and goodwill enjoyed by the Complainant’s SELECT EQUITY marks and financial services.

The Complainant therefore contends that the Respondent can, therefore, have no rights or legitimate interests in the Disputed Domain Name.

(b) The Respondent began using the Disputed Domain Name with knowledge of the Complainant’s SELECT EQUITY marks.

The Complainant contends that the Respondent cannot claim rights or legitimate interests in the Disputed Domain Name because it had notice of at least the Complainant’s SELECT EQUITY and Design mark before any use or demonstrable preparation to use the Disputed Domain Name.

It states that the SELECT EQUITY trademark registration was issued on September 5, 2006, long before the Respondent created the Disputed Domain Name more than a decade later and that the Respondent therefore had at least constructive notice of it.

(c) There is no evidence that the Respondent has any proprietary or contractual rights in “Select Eqiuty”.

The Complainant states that, to the best of the Complainant’s knowledge, the Respondent does not have any proprietary or contractual rights in any registered trademark for “Select Equity”, “Select Eqiuty”, “Select”, “Equity”, “Eqiuty” or any other similar name, term, phrase, symbol, device, or combination of the foregoing and therefore contends that this means that the Respondent has no legitimate interests in the Disputed Domain Name.

(d) The Complainant has never consented to the Respondent’s use of the SELECT EQUITY marks in connection with any domain name.

The Complainant states that it has never consented to the Respondent’s use of the SELECT EQUITY marks in connection with the Disputed Domain Name and that there is no affiliation or connection between the Complainant and the Respondent. The Complainant submits that the fact that the Respondent created the Disputed Domain Name (and uses it to create fake email accounts) without the Complainant’s consent supports a finding that the Respondent has no legitimate interests in the Disputed Domain Name.

The Complainant states that the Respondent is not commonly known by the Disputed Domain Name and that the Policy requires evidence that the Respondent had rights prior to and not merely following and resulting from the use of the domain name.

(e) The Respondent registered the Disputed Domain Name in Bad Faith.

The Complainant contends that the Respondent registered the Disputed Domain Name in bad faith and this also supports a finding that any use of the Disputed Domain Name would be neither legitimate nor fair.

The Complainant submits that the Respondent has no rights or legitimate interests in the Disputed Domain Name, and is not making a legitimate noncommercial or fair use of the Disputed Domain Name.

(iii) The Disputed Domain Name was registered and is being used in bad faith. (Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3)).

(a) The Respondent’s typosquatting constitutes bad faith Registration.

The Complainant contends that, as indicated above, this a classic case of typosquatting.

(b) The Respondent’s use of the Disputed Domain Name to create a fake email account in the name of the Complainant’s Principal constitutes bad faith use.

The Complainant states that, as discussed above, on the same day that the Respondent created the Disputed Domain Name, it created a fake email account in the name of the Complainant’s Principal, and then sent emails from the fake account to an individual in the Complainant’s financial department, requesting payment of an “outstanding payment” in an effort to create the impression they were from the Complainant’s Principal.

(c) The Respondent is using the Disputed Domain Name to attract consumers to its website for commercial gain by creating confusion with the Complainant’s SELECT EQUITY marks.

The Complainant states that, as discussed above on or about May 19, 2017, and continuing through the filing date of this Complaint; the Respondent began resolving the Disputed Domain Name to a website that contains sponsored links for third-party services closely related to the Complainant’s financial services and this is further evidence that the Respondent registered, and uses the Disputed Domain Name in bad faith.

(d) The Respondent has a history of bad faith domain name registrations and use.

The Complainant states that the Respondent has assisted an entity named VistaPrint Technologies Ltd. (“VPT”) in registering domain names in bad faith. For example, in Halliburton Energy Services, Inc. v. VistaPrint Technologies Ltd., WIPO Case No. D2015-1903, the Respondent retained VPT to provide a web hosting service for the Respondent’s customers. However, the domain names that the Respondent apparently had VPT register were blatant misspellings of the well-known trademark HALLIBURTON, and the registration of these domain names (<halliburrton.com>; <halliburtton.com>; <hailiburton.com>; and <hallibuton.org>) was held to have been done in bad faith. The Respondent therefore contends that the factual similarity to the misspelling in the present case is striking. Furthermore, VPT was the subject of 45 other domain name complaints, all of which found bad faith registration and use.

On the basis of these submissions the Complainant submits that all the requirements are met and it is entitled to have the Disputed Domain Name transferred to it.

B The Respondent

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

6. Discussion and Findings

The Policy establishes three elements, specified in paragraph 4(a) that must be established by the Complainant to obtain relief. These elements are:

(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) The Respondent has no rights or legitimate interest in respect of the Disputed Domain Name;

(iii) The Disputed Domain Name has been registered and is being used in bad faith.

Each of these elements will be addressed below.

The Complainant must establish these elements even if the Respondent does not reply (see The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064). However, under paragraph 14(b) of the Rules, the Panel is entitled to draw such inferences as it considers appropriate from a Party’s failure to comply with any provision of or requirement under, the Rules, including the Respondent’s failure to file a Response.

In the absence of a Response, the Panel may also accept as true the reasonable factual allegations in the Complaint (see ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009)).

Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted. As the proceeding is an administrative one, the Complainant bears the onus of proving its case on the balance of probabilities. The Complainant must therefore establish all three of the elements specified in paragraph 4(a) of the Policy on the balance of probabilities before a decision can be made to cancel or transfer the Disputed Domain Name.

A. Identical or Confusingly Similar

The Panel accepts that the Complainant has a significant business in asset management under the name “Select Equity” and that it has a reputation in that name separate from the Complainant’s trademarks with the design element shown above. The Panel accepts that the word mark SELECT EQUITY has been used in the Complainant’s domain name and on its website and has acquired a secondary meaning. The only difference between the Disputed Domain Name and the word element of the Complainant’s marks is that the letter “u” appears before the letter “i” in the latter, whereas the letter “i” appears before the letter “u” in the former, (i.e., <selecteqiuty.com>). The Panel accepts that this one-letter difference is immaterial and does not distinguish or otherwise differentiate the Disputed Domain Name from the Complainant’s SELECT EQUITY word marks.

The Panel accepts that the Disputed Domain Name is confusingly similar to the Complainant’s SELECT EQUITY marks and refers to Electronic Arts Inc. v. John Zuccarini, WIPO Case No. D2003-0141 (<simscity.com> “the domain name differs from [SIMCITY] trademark in only one letter; this small difference establishes the confusingly similarity with [the complainant’s trademark].”

The Panel accepts that the transposed letters “u” and “i” are next to one another on English-language keyboards and that this constitutes “typosquatting”, which creates confusing similarity. The Panel refers to Calvin Klein Trademark Trust, Calvin Klein, Inc. v. Moniker Privacy Services, WIPO Case No. D2015-2305 (wherein the panel held the disputed domain name <calvinklien.com> to be confusingly similar to the complainant’s CALVIN KLEIN trademark; holding the transposition of “‘i” and “e” […] is classic “typosquatting”—the practice of exploiting a trademark by creating a domain name with insignificant typographical differences).

The Panel accepts that the addition of the gTLD “.com” to the Disputed Domain Name is not a distinguishing factor and refers to Orbis Holdings Ltd. v. Lu A. Feng, WIPO Case No. D2007-0515 (“It is an accepted principle that the addition of suffixes such as ‘.com’ being a generic top-level domain is not a distinguishing factor and consequently, the Panel finds that the disputed domain name is identical to the Complainant’s trade mark.”)

The Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s SELECT EQUITY Marks.

B. Rights or Legitimate Interests

The Panel finds that the Respondent is not using the Disputed Domain Name for a bona fide offering of goods or services, nor is the Respondent making a legitimate noncommercial or fair use of the Disputed Domain Name.

The Panel accepts that the Respondent has no established rights or legitimate interests in the Disputed Domain Name.

It accepts that the Respondent used the Disputed Domain Name to create a fake email account in the name of the Complainant’s Principal and then used this fake email account to send emails requesting payment assistance (ostensibly to commit financial fraud), and signed the emails with the name of the Complainant’s Principal. The Panel accepts that this does not constitute the offering of bona fide goods or services, or a legitimate, noncommercial or fair use of the Disputed Domain Name and refers to TVS Motor Co. Ltd. v. VistaPrint Techs., Ltd., WIPO Case No. DCO2014-0007 (ordering the transfer of the disputed domain name; holding that use of the disputed domain name to create email accounts purporting to be email accounts of the complainant’s officers, and then using fake email accounts to solicit financial information “plainly does not qualify as a bona fide offering of goods under the Policy”).

The Panel accepts that, as of May 16, 2017, the Disputed Domain Name resolved to a blank website which is evidence that the Respondent was not making use of the Disputed Domain Name in connection with a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the Disputed Domain Name as was also the case in Akçansa Çimen Sanayi ve Ticaret Anonim Şirketi v. Moniker Privacy Services / Fatih Avci, WIPO Case No. D2016-2106.

The Panel accepts that, on or about May 19, 2017, the Respondent began resolving the Disputed Domain Name to a website that displays sponsored links to third-party financial websites for services closely related to the Complainant’s financial services, thereby using the Disputed Domain Name to trade off the consumer recognition and goodwill enjoyed by the Complainant’s SELECT EQUITY marks.

The Panel finds that the Respondent can therefore have no rights or legitimate interests in the Disputed Domain Name and refers to Carfax, Inc. v. Setyo Djoenaaedi, WIPO Case No. D 2001-0986; Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847 (each stating that “use which intentionally trades on the fame of another cannot constitute a ‘bona fide’ offering of goods or service to conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation which is obviously contrary to the intent of the Policy”).

The Panel considers that it is inconceivable that the Respondent began using the Disputed Domain Name without the knowledge of the Complainant’s SELECT EQUITY marks.

The Panel accepts that the Respondent does not have any proprietary or contractual rights in any registered trademark for “Select Equity”, “Select Eqiuty”, “Select”, “Equity”, “Eqiuty” or any other similar name, term, phrase, symbol, device, or combination of the foregoing, that the Complainant has never consented to the Respondent’s use of the SELECT EQUITY marks in connection with any domain name, that the Complainant has never consented to the Respondent’s use of the SELECT EQUITY marks in connection with the Disputed Domain Name, and there is no affiliation or connection between the Complainant and the Respondent.

The Panel also accepts that the Respondent is not commonly known by the Disputed Domain Name.

In the absence of any response from the Respondent, the Panel accepts that the Respondent has never been known by the Disputed Domain Name or any other term that incorporates “Select Equity”, “Select Eqiuty”, “Select”, “Equity” or “Eqiuty” in whole or in part. This supports a finding that the Respondent has no legitimate interests in the Disputed Domain Name and refers to Sanofi v. Marek Zdanowicz, WIPO Case No. D2016-2545.

For the reasons stated above, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name, and is not making a legitimate noncommercial or fair use of the Disputed Domain Name.

C. Registered and Used in Bad Faith

The Panel accepts that the Respondent has transposed two letters next to each other on English-language keyboards (i.e., “u” and “i”) to create the confusingly similar Disputed Domain Name and that this constitutes bad faith; see Halliburton Energy Services, Inc. v. Registration Private, Domains By Proxy, LLC / Name Redacted, WIPO Case No. D2015-2094; the panel finding bad faith, and holding that “[p]rior Panels have found the abusive practice of typosquatting compelling evidence of faith registration and use”. The Panel finds that the Disputed Domain Name was registered in bad faith.

The Panel also finds that the creation and use of a fake email account in the name of the Complainant as referred to above constitutes use in bad faith as found in Halliburton Energy Services, Inc. v. Registration Private, Domains By Proxy, LLC / Name Redacted, supra (“Respondent appears to have used the Disputed Domain Name to engage in a ‘phishing’ identity theft scheme and fraud upon Complainant and its vendors, by sending emails using the Disputed Domain Name and purported to be from Complainant”).

The Panel finds that by the Respondent resolving the Disputed Domain Name to a website that contains sponsored links for third-party services closely related to the Complainant’s financial services this constituted use in bad faith as the Respondent chose the Disputed Domain Name in an effort to free ride off the consumer recognition and goodwill amassed by the Complainant in the SELECT EQUITY marks for its own commercial gain.

The Panel accepts that the Respondent has previously assisted in registering domain names in bad faith as referred to above and that this previous conduct reinforces the Panel’s decision that the Respondent registered, used and is using the Disputed Domain name 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, <selecteqiuty.com>, be transferred to the Complainant.

Isabel Davies
Sole Panelist
Date: July 17, 2017