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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Intersystems Corporation v. Ahmed Shams

Case No. D2017-1385

1. The Parties

1.1 The Complainant is Intersystems Corporation of Cambridge, Massachusetts, United States of America (“United States”), represented by Morrison & Foerster, LLP, United States (the “Complainant”).

1.2 The Respondent is Ahmed Shams of Alexandria, Egypt, self-represented (the “Respondent”).

2. The Domain Name and Registrar

2.1 The disputed domain name <intrsystems.com> (the “Disputed Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 19, 2017. On July 19, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 19, 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.

3.2 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”).

3.3 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 24, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 13, 2017. The Respondent submitted an informal communication on August 12, 2017; however did not submit any formal response. Accordingly, the Center notified the Parties on August 22, 2017 that it would proceed to the Panel appointment.

3.4 The Center appointed Ike Ehiribe as the sole panelist in this matter on August 28, 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

4.1 The Complainant Intersystems Corporation is a company incorporated in the United States with its principal place of business in Cambridge, Massachusetts, United States. The Complainant is described as a leading global technology company focusing on enterprise, connectivity, information exchange and patient management software for business and government entities in the healthcare field. The Complainant is said to also offer data platforms, data management systems, enterprise architecture, health information and exchange software, and patient and practice management software under its numerous INTERSYSYSTEMS Marks including INTERSYSTEMS, INTERSYSTEMS CACHÉ, INTERSYSTEMS ENSEMBLE, INTERSYSTEMS HEALTHSHARE and INTERSYSTEMS TASKFORCE. Furthermore it is stated that the Complainant has operated a website at “www.intersystems.com” in order to promote its products and owns at least seven current trademark registrations in the United States in International Class 9 for computer software and a host of other health related management programs (see, e.g., Registration Number 1,160,437, INTERSYSTEMS, registered on July 7, 1981). The Complainant is also said to own thirty-seven trade mark registrations in Argentina, Australia, Brazil, Chile, China, Czech Republic, the European Union, India, Israel, New Zealand, the Russian Federation, Switzerland and the United Arab Emirates.

4.2 On March 1, 1995, the Complainant is said to have registered the domain name <intersystems.com> which resolves to the Complainant’s website at “www.intersystems.com”.

4.3 The Respondent, according to the publicly available WhoIs records, is known as Ahmed Shams whose stated address is in Alexandria, Egypt.

4.4 The Disputed Domain Name was registered on October 16, 2016, and it resolves to a website in Persian. The Complainant submitted evidence showing that the Disputed Domain Name was inactive at the time of filing of the Complaint and that it was used in connection with a fraudulent email scheme.

5. Parties’ Contentions

A. Complainant

5.1 The Complainant asserts that the Disputed Domain Name is confusingly similar to the Complainant’s INTERSYSTEMS trademark and the Complainant’s domain name associated with the trademark in that the Disputed Domain Name merely omits the letter “e” from the term “intersystems”. The Complainant argues that the use of a trademark in a domain name in which letters have been omitted, added, inverted or substituted, a practice commonly known as “typosquatting” does not negate the confusingly similar aspects of the domain name under the Policy. See Andrey Ternovskiy dab Chatroulette v. RegistrationPprivate, Domains by Proxy, LLC/I S, ICS INC, WIPO Case No. D2016-1916 and First American Financial Corporation v. VistaPrint Technologies Ltd., WIPO Case No. D2016-0008 holding that typosquating exists when a party registers a misspelling of a trade mark, which constitutes bad faith registration and use under the Policy. The Complainant further argues that a domain name that merely omits one letter or makes similar small changes to a registered trade mark is confusingly similar to the mark following a number of previous UDRP decisions including for instance, Media West-LCJ, Inc., Gannet Kentucky Limited Partnership, Gannett, Co, Inc. v. John Zuccarini, RaveClub Berlin, WIPO Case No. D2003-1022 finding the disputed domain names in issue, namely <courierjornal.com>, <courierjounal.com> and <courierjournel.com> to be confusingly similar to the COURIER-JOURNAL trade mark.

5.2 The Complainant asserts that the Respondent has no rights to or legitimate interests in the Disputed Domain Name, in that: (a) the Respondent has not made use of the Disputed Domain Name in connection with a bona fide offering of goods or services; (b) the Respondent is not commonly known by the Disputed Domain Name; and (c) the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name. The Complainant further contends that the Complainant has not authorised or licensed the Respondent to use the INTERSYSTEMS trade mark , nor is Respondent a distributor of the Complainant’s services. Instead it is said the website to which the Disputed Domain Name resolves leads to an error message screen as is supported by a printout of the website retrieved on July 17, 2017. Secondly, it is asserted that the Respondent has not used the Disputed Domain Name in connection with any legitimate business or offering of goods or services. Therefore, the Respondent cannot claim to be commonly known by the Disputed Domain Name following Bell South Corporation v. Bolinhas, WIPO Case No. D2000-0915 where the panel held that “commonly known” means that the person or entity in whose name the domain name is registered was effectively known by third parties by the domain name before the moment of registration.

5.3 On the question of bad faith registration and use it is submitted on behalf of the Complainant that bad faith may be shown where for instance the respondent is aware of a complainant’s well-known trade mark and has no connection to the owner of the trade mark and no authorisation or legitimate purpose to utilise the trade mark following Riemann Trading ApS v. Tuan Le, WIPO Case No. D2016-1983. In this case it is submitted that the Respondent uses the Disputed Domain Name in email phishing attacks against the Complainant’s customers taking advantage of the similarity between the Disputed Domain Name and Complainant’s INTERSYSTEMS trademark. As on numerous occasions the Complainant’s customers have received notices to pay licensing fees for the Complainant’s products which on closer inspection of the sender’s email address the Customers discover that these messages come from an email address that ends in “@intrsystems.com” and not the Complainant’s email address that ends in “@intersystems.com”. The Complainant therefore asserts that these phishing emails are designed to fraudulently induce Complainant’s customers to wire funds to the Respondent and such conduct is further evidence of the Respondent’s registration of the Disputed Domain Name in bad faith. See the following previous UDRP decisions namely, VYMARE Inc. v. Whois Agent, Whois Privacy Protection Service, Inc. / Raymond Morgan, WIPO Case No. D2016-1629 and First American Financial Corporation v. VistaPrint Technological Ltd., WIPO Case No. DCO2016-0008.

B. Respondent

5.4 The Respondent submitted an informal communication on August 12, 2017. He claims that he has a company named “Industry & Trade Market” which offers an online market platform through the website at “www.intrmarket.com” and alleges that the Disputed Domain Name stands for “Industry & Trade Systems”, which was registered in relation to the above-mentioned company. The Respondent further adds that the Disputed Domain Name did not resolve to an active website due to “an error in [his] SSL certificate”. After having claimed that he did not register the Disputed Domain Name in bad faith, he offers to sell the latter to the Complainant.

6. Discussion and Findings

6.1 Under paragraph 4(a) of the Policy, to succeed in this administrative proceeding the Complainant must prove that: (I) the Disputed Domain Name is identical or confusingly similar to the trademark or service mark of the Complainant; (ii) the 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.

6.2 As expressly stated in the Policy, the Complainant must establish the existence of each of these three elements in any administrative proceeding.

A. Identical or Confusingly Similar

6.3 This Panel finds as a fact that the Complainant is the registered owner of several trademark registrations for the INTERSYSTEMS trademark as confirmed by the copies of records of trademark registrations from the United States Patent and Trademark Office’s Trademark Electronic Search System and the Complainant’s Status Chart list of trademark registrations from various other jurisdictions. See exhibits B and C attached to the Complaint. The Panel therefore finds without any hesitation that the Disputed Domain Name <intrsystems.com> is confusingly similar to the Complainant’s INTERSYSTEMS trademark. The Panel finds that this is a clear case of “typosquatting” as the Respondent has simply omitted the letter “e” from the Complainant’s INTERSYSTEMS trademark. The Panel is therefore satisfied that where a disputed domain name contains a deliberately misspelt dominant and principal word such a disputed domain name would be held to be confusingly similar to the complainant’s trademark under the Policy. See section 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions Third Edition (“WIPO Overview 3.0”). See also the following previous UDRP decisions cited in support by the Complainant where “typosquatting” has been held to satisfy the confusing similarity requirement under the Policy namely; First American Financial Corporation VistaPRINT. Technologies Ltd., supra; Calvin Klein Trademark Trust, Calvin Klein, Inc. v. Moniker Privacy Services, WIPO Case No. D2015-2305; and Media West-LCJ, Inc., Gannett Kentucky Limited Partnership, Gannett, Co., Inc. John Zuccarini, RaveClub Berlin, supra.

6.4 The Panel therefore finds that the Complainant has established that the Disputed Domain Name is confusingly similar to the Complainant’s trademark.

B. Rights or Legitimate Interests

6.5 As submitted by the Complainant the Panel finds that the Respondent has no rights to or legitimate interests in the Disputed Domain Name. Firstly, the Panel is satisfied that the Respondent has not made use of the Disputed Domain Name in connection with a bona fide offering of goods or services. The Complainant has not authorised or licensed the Respondent to use the INTERSYSTEMS trademark nor is the Respondent a distributor of the Complainant’s services. Secondly, the Respondent has never been commonly known by the Disputed Domain Name and neither is the Respondent known to have used the Disputed Domain Name in connection with any legitimate business or offering of goods or services before it received notice of the present dispute. Although the Respondent claims to have registered the Disputed Domain Name in connection with his company “Industry & Trade Market”, he did not submit any evidence regarding the registration of such company in any jurisdiction.

6.6 Finally the Panel finds that as the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name, since it is evidenced that the website linked to the Disputed Domain Name displayed only an error message at the time of filing of the Complaint and that the Respondent is said to be using the Disputed Domain Name in phishing attacks against the Complainant’s customers; such conduct cannot be described as evidence of rights or legitimate interests in the Disputed Domain Name within the ambit of paragraph 4(c) of the Policy following the principles stated in Oki Data Americas Inc. v. ASD, inc, WIPO Case No. D2001-0903.

6.7 Accordingly, the Panel is satisfied that the Complainant has established that the Respondent does not possess any rights or legitimate interests in the Disputed Domain Name as stipulated in paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

6.8 With reference to the issue of bad faith registration and use, the Panel finds that the Respondent undoubtedly registered the Disputed Domain Name in bad faith with the intention to engage in bad faith use. This finding is based on a number of factors arising from the Complainant’s unchallenged assertions and adduced evidence as follows. Firstly, it is clearly accepted that bad faith can be found where a disputed domain name so obviously connected to a trade mark and is being utilised by a person who has no connection whatsoever with the trademark. See in this regard Riemann Trading ApS v. Tuan Le, supra. Secondly, as the Complainant contends that some of its customers have received on numerous occasions, notices to pay for licensing fees for the Complainant’s products in emails which appear to have emanated from the Complainant which on closer inspection of the sender’s email address reveal an address that ended in “@intrsystems.com” and not “@intersystems.com”. The Complainant further describes these emails as phishing emails designed to fraudulently induce the Complainant’s customers to wire funds to the Respondent. The Panel finds such conduct to be further evidence of bad faith registration. See in support two recent previous UDRP decisions first is VYMARE, Inc. v. Whois Agent, Whois Privacy Protection Service, Inc. Raymond Morgan, supra, and second First American Financial Corporation v. VistaPrint Technologies Ltd., supra holding that where the respondent has sent at least one email from an email address associated with the disputed domain name to an employee of the Complainant seeking to arrange a wire transfer, such conduct which cannot be tolerated within the domain name system, is sufficient alone to support a finding of registration and use in bad faith. Thirdly, as stated in paragraph 5.4 above the Panel has drawn adverse inferences from the failure of the Respondent to respond to the Complainant’s contentions in this matter save to dispatch an email dated August 12, 2017, recommending the Disputed Domain Name for sale to the Complainant.

6.9 The Panel is therefore satisfied that the Respondent registered the Disputed Domain Name <intrsystems.com> in bad faith with the intention to engage in continued bad faith use.

7. Decision

7.1 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 <intrsystems.com> be transferred to the Complainant.

Ike Ehiribe
Sole Panelist
Date: September 9, 2017

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