WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Southwire Company, LLC v. Privacy Protect, LLC/ Jiang Gang, guanjiangfeng LLC

Case No. D2017-1545

1. The Parties

The Complainant is Southwire Company, LLC of Carrollton, Georgia, United States of America, represented by Eversheds Sutherland (US) LLP, United States.

The Respondent is Privacy Protect, LLC of Burlington, Massachusetts, United States / Jiang Gang, guanjiangfeng LLC of Onitsha, Nigeria.

2. The Domain Name and Registrar

The disputed domain name <southwira.com> (the “Disputed 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 August 8, 2017. On August 10, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 11, 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 August 30, 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 amendment to the Complaint on September 4, 2017.

The Center verified that the Complaint together with the amendment to 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 September 5, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 25, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 28, 2017.

The Center appointed John Swinson as the sole panelist in this matter on October 5, 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 is Southwire Company, LLC, a company incorporated in the United States. According to the Complaint, the Complainant is one of North America’s leading manufacturers of wire and cable used in the distribution and transmission of electricity. The Complainant manufacturers and supplies wires and cables for residential, commercial, underground and surface mining, industrial, transmission, substation, distribution, renewable power, and original equipment manufacturing markets in North America.

The Complainant owns numerous registered trade marks, including United States registered trade mark number 635490 for SOUTHWIRE (the “Trade Mark”) which was registered on October 9, 1956. The Complainant also owns the domain name <southwire.com> which was registered on November 15, 1994 and corresponds with the Trade Mark.

The Respondent is Jiang Gang, guanjiangfeng LLC of Nigeria and the registered owner of the Disputed Domain Name. The Respondent did not file a Response, and consequently little information is known about the Respondent.

The Disputed Domain Name was registered on July 17, 2017. The Disputed Domain Name does not point to an active website.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions.

Identical or Confusingly Similar

The Disputed Domain Name is identical to the Trade Mark except for the common or obvious misspelling where the “e” is replaced with an “a”. A domain name which contains a common or obvious misspelling of a trade mark normally will be found to be confusingly similar to the trade mark where the misspelled trade mark remains the dominant component of the domain name.

The misspelled Trade Mark makes up the entirety of the Disputed Domain Name. Accordingly, the Disputed Domain Name is confusingly similar to the Trade Mark.

Rights or Legitimate Interests

The Respondent has not been authorised or licensed by the Complainant to use the Trade Mark in any way, including for registration of a domain name. There is no evidence that the Respondent, as an individual, business or other organisation, has ever been commonly known by the Disputed Domain Name.

The Respondent does not operate a website associated with or redirected from the Disputed Domain Name. The Respondent uses the Disputed Domain Name to impersonate the Complainant and commit financial fraud.

There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name. There is also no evidence of the Respondent’s use of, or demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods or services

Registered and Used in Bad Faith

The Disputed Domain Name was registered and is being used in bad faith.

On or about August 4, 2017, the Complainant was contacted by a customer in relation to that customer’s payment of an invoice supposedly issued by the Complainant. The Complainant had not received such payment and investigated the customer’s claim. Following the Complainant’s investigations, the Complainant became aware of the Disputed Domain Name and its use to create email accounts in order to impersonate personnel of the Complainant and induce payment from the Complainant’s customers.

The Respondent has been successful in using the Disputed Domain Name to commit fraud in violation of United States laws and other laws.

The Respondent’s registration and use of the Disputed Domain Name as part of a concerted effort to defraud the Complainant’s customers by impersonating the Complainant demonstrates bad faith registration and use of the Disputed Domain Name.

B. Respondent

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

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:

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

(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.

The onus of proving these elements remains on the Complainant even though the Respondent has not filed a Response.

The Respondent’s failure to file a Response does not automatically result in a decision in favour of the Complainant (see, e.g., Airbus SAS, Airbus Operations GmbH v. Alesini Pablo Hernan / PrivacyProtect.org, WIPO Case No. D2013-2059). However, the Panel may draw appropriate inferences from the Respondent’s default.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.

The Disputed Domain Name consists of a common, obvious or intentional misspelling of the Trade Mark. It is well established that “typosquatting” can constitute confusing similarity.

The Panel considers that the Disputed Domain Name is confusingly similar to the Trade Mark.

The generic Top-Level Domain (gTLD) “.com” does nothing to detract from this similarity.

The Complainant is successful on the first element of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.

The Panel finds that the Complainant has made out a prima facie case. This finding is based on the following:

- The Panel accepts the Complainant’s submission that the Respondent is not a licensee or otherwise authorised by the Complainant to use the Disputed Domain Name.

- There is no evidence that the Respondent has been commonly known by the Disputed Domain Name or the Trade Mark, or has registered or common law trade mark rights in relation to the Trade Mark.

- The Respondent has not used, or made demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods or services. At the time of this decision, the Disputed Domain Name does not point to an active website. Further, the Panel accepts the Complainant’s assertions that the Respondent is using the Disputed Domain Name to create email accounts and send deceptive emails to the Complainant’s customers to solicit payment of fraudulent invoices. In the circumstances, this is not a bona fide use of the Disputed Domain Name under the Policy.

- The Respondent has not been making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain. Based on the evidence provided by the Complainant, the Panel considers that the Respondent is using the Disputed Domain Name to fraudulently solicit payment from the Complainant’s customers. Such illegal activity, which clearly is for commercial gain, does not confer rights or legitimate interests on the Respondent.

The Respondent had the opportunity to demonstrate his rights or legitimate interests, but did not do so. In the absence of a Response from the Respondent, the prima facie case established by the Complainant has not been rebutted.

In light of the above, the Complainant succeeds on the second element of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent has registered and is using the Disputed Domain Name in bad faith.

The Complainant has been operating for over 50 years and its brand is well-known internationally. The Complainant has demonstrated that it has developed goodwill and brand-recognition in its Trade Mark, with trade mark registrations in 24 countries, trade mark applications in over 70 countries and a domain name associated with its business (which contains the Trade Mark).

In light of this reputation, and based on the evidence provided by the Complainant, the Panel finds that the Respondent registered and is using the Disputed Domain Name in bad faith.

The Respondent clearly had knowledge of the Trade Mark at the time of registering the Disputed Domain Name. According to the Complaint, the Respondent has used the Disputed Domain Name to create an email address which imitates that of the Complainant. The Complainant has provided evidence of a series of emails sent by the Respondent to a customer of the Complainant in which the Respondent fraudulently masquerades as the Complainant and attempts to solicit payment of an invoice. The Respondent also uses the Trade Mark in the email signature of those emails.

This clear evidence of fraud necessitates a finding of registration and use in bad faith.

In light of the above, and the Respondent’s failure to provide evidence to the contrary, the Panel finds that the Complainant has succeeded on the third element of the Policy.

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 <southwira.com> be transferred to the Complainant.

John Swinson
Sole Panelist
Date: October 20, 2017