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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

SCA Hygiene Products AB v. Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / Ali Mohammed

Case No. D2017-1423

1. The Parties

The Complainant is SCA Hygiene Products AB of Göteborg, Sweden, represented by Dorsey & Whitney, LLP, United States of America ("United States").

The Respondent is Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) of Burlington, Massachusetts, United States / Ali Mohammed of Kwara, Nigeria.

2. The Domain Name and Registrar

The disputed domain name <esssity.com> (the 'Domain Name') is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 24, 2017. On July 25, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 27, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 31, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 1, 2017. The Respondent sent an email communication to the Center on August 2, 2017.

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 August 15, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 4, 2017. The Center notified the parties the commencement of the panel appointment process on September 5, 2017.

The Center appointed Dawn Osborne as the sole panelist in this matter on September 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

Complainant and its affiliates operate in approximately 150 countries around the world offering professional hygiene products. Complainant owns trade mark registrations for ESSITY in many countries and jurisdictions, such as the European Union, Costa Rica, Myanmar, Tanzania or Zanzibar. For instance, Complainant is the owner of Tanzanian Trademark No. TZ/S/2017/150 ESSITY, registered on May 23, 2017.

The Domain Name was registered on July 1, 2017. Although the Domain Name does not resolve to an active website, the evidence submitted with the Complaint shows that it has been used in a fraudulent email scam.

5. Parties' Contentions

A. Complainant

The Complainant's contentions can be summarised as follows:

Complainant and its affiliates operate in approximately 150 countries around the world offering professional hygiene products. Following a meeting of shareholders on April 5, 2017 it was publicly announced that the Complainant's group's business would be split into two companies including a hygiene products company to be rebranded under the new name "Essity". This was effective June 15, 2017 and the Complainant now operates its hygiene products business under this name. The Complainant owns the website "www.essity.com".

Complainant owns, inter alia, trade mark registrations for ESSITY in, Costa Rica, Myanmar, Tanzania and Zanzibar which were granted before the Domain Name was registered on July 1, 2017.

The Domain Name is confusingly similar to the Complainant's ESSITY registered trade mark being an intentional misspelling of the Complainant's ESSITY trade mark with an extra "s". The extra letter does not change the pronunciation, meaning or appearance of the Domain Name. This conduct is commonly referred to as "typosquatting".

The addition of the generic Top Level Domain ".com" is insignificant and does not remove the likelihood of confusion between the ESSITY mark and the Domain Name.

Complainant has no relationship with the Respondent and has not authorised the Respondent to use the Domain Name. The Domain Name has not been used in relation to a bona fide offering of goods and services and simply points to an inactive page. Respondent is not commonly known by the Domain Name. This is not legitimate fair use. Respondent has instead used the Domain Name to mislead Complainant's customers through a fraudulent email scheme. The Respondent has no rights or legitimate interests in the Domain Name.

The Domain Name has been registered and used in bad faith. In one instance the Respondent defrauded a customer of the Complainant by impersonating an employee of the Complainant and requesting payment of an invoice to a bank account not connected to the Complainant. The fraudulent e mail features use of the correct ESSITY trade mark and logo design with a signature block showing the correct address of the impersonated employee.

B. Respondent

The Respondent did not provide a Response in these proceedings. However, the Respondent sent an email communication to the Center on August 2, 2017, regarding the registration of the Domain Name by the Respondent on behalf of a "new customer" (the Panel notes that the Respondent did not provide any evidence in support of such assertion).

6. Decision

A. Identical and/or Confusingly Similar

The Domain Name consists of the Complainant's ESSITY trade mark (registered in several countries and jurisdictions around the world for hygiene products and announced publicly before the Domain Name was registered), the additional letter "s" and the gTLD ".com". Adding one letter "s" to the Complainant's ESSITY registered mark. leaves the Domain Name phonetically identical to that mark in the second level of the Domain Name and does not distinguish the Domain Name from it.

The gTLD ".com" does not serve to distinguish the Domain Name from the ESSITY mark as .com is a purely functional element of the Domain Name in this case.

Accordingly, the Panel holds that the Domain Name is confusingly similar for the purpose to a mark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Complainant has not authorised the use of its mark. The Respondent has not filed a formal response to this Complaint and there is no evidence or reason to suggest the Respondent is, in fact commonly known by the Domain Name. In addition, the email communication sent by the Respondent to the Center does not rebut any of the Complainant's contentions.

In addition, the only known use of the mark is in an illegitimate and fraudulent email scam, which by no means can be considered a bona fide use of the Domain Name.

As such the Panelist finds that the Respondent does not have rights or a legitimate interests in the Domain Name and that the Complainant has satisfied the second limb of the Policy.

C. Registration and Use in Bad Faith

The Respondent has not filed a formal response to this Complaint or explained in the email communication that he sent to the Center why he should be allowed to register a domain name containing the Complainant's distinctive registered mark in what appears on the face of it to be a typosquatting registration.

Typosquatting itself is evidence of relevant bad faith registration and use. Here the typosquatting is compounded by use of the Domain Name in a fraudulent email scam. The fraudulent email contains the correct Complainant's mark and logo and a genuine address of an impersonated employee of the Complainant showing the Respondent is well aware of the Complainant and its business and has used the Domain Name unlawfully to cause confusion on the Internet for commercial gain satisfying paragraph 4 (b)(iv) of the Policy.

As such, the Panel holds that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy.

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 <esssity.com> be transferred to the Complainant.

Dawn Osborne
Sole Panelist
Date: September 21, 2017

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