WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Alfresco Software Ltd. v. WhoIsGuard Protected, WhoIsGuard, Inc. / Dagogo Almano
Case No. D2018-2103
1. The Parties
Complainant is Alfresco Software Ltd of Great Britain and Northern Ireland (the “United Kingdom”) represented by Reed Smith LLP, The United States of America.
Respondent is WhoIsGuard Protected, WhoIsGuard, Inc of Panama, Dagogo Almano of the United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <alfnesco.com> (the “Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 13, 2018. On September 14, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 14, 2018 the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on October 3, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on October 9, 2018.
The Center verified that the Complaint together with the amended 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 Respondent of the Complaint, and the proceedings commenced on October 12, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 1, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 5, 2018.
The Center appointed Clive L. Elliott as the sole panelist in this matter on November 11, 2018. 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
According to WhoIs the Domain Name was registered on August 24, 2018.
Complainant was founded in 2005 and offers a wide variety of software products and services using the ALFRESCO mark (“Complainant’s Mark”).
Complainant’s parent company, Alfresco Software, Inc (“Complainant’s Parent”) is the owner of Complainant’s Mark, under United States registration number 3279537, dated August 14, 2007. Complainant’s Parent is also the owner of its “flower petal” design mark (“Flower Design”).
The Flower Design and Complainant’s Mark are used by Complainant and Complainant’s Parent in advertising and promotion of products and services provided by Complainant and Complainant’s Parent.
In addition to the United States registration, Complainant’s Mark and Flower Design are registered in the following jurisdictions:
|
Trademark |
Country |
Registration Number |
|
ALFRESCO |
European Union |
4668075 |
|
ALFRESCO |
China |
5288184 |
|
ALFRESCO |
China |
5288185 |
|
ALFRESCO |
India |
1705132 |
|
ALFRESCO |
India |
853138 |
|
ALFRESCO |
Japan |
5510855 |
|
European Union |
4698122 |
|
China |
5288201 |
|
China |
5288183 |
|
Japan |
5510854 |
|
India |
1647022 |
|
India |
718232 |
5. Parties’ Contentions
A. Complainant
Complainant states that in August 2018 it became aware that the Domain Name had been acquired by Respondent.
Complainant asserts that Respondent is engaging in typosquatting by registering and using a Domain Name which is confusingly similar to Complainant’s Mark. The Domain Name mimics Complainant’s Mark and differs by only one letter (i.e., the use of “n” in place of “r”). The likelihood of confusion is heightened by the similar appearances shared by the letters “n” and “r” when displayed in emails and web browser address bars, thereby creating a web address and identity which is nearly identical to Complainant’s Mark. The incorporation of the genergic Top-Level Domain (“Gtld”) suffix “.com” does not relieve any confusing similarity.
Complainant asserts that Respondent has been using the Domain Name to deceive Complainant’s clients by sending email communications which falsely represent that they originate from an authorized representative of Complainant. The emails request the recipients to direct all future payments meant for Complainant to certain bank accounts in the United States and the United Kingdom which are not owned by or connected with Complainant and are presumably owned or controlled by Respondent.
Complainant also asserts that Respondent is posing as Complainant by distributing multiple form letters listing the aforementioned bank account information which feature the following:
- The ALFRESCO Mark and the Flower Design;
- Complainant’s contact details, specifically the address of its registered office in the United Kingdom;
- A signature line which falsely claims authorship by a Finance Director of Complainant;
- Complainant’s official United Kingdom business registration number as issued by the government of the United Kingdom; and
- A fake stamp purportedly of Complainant which identifies the corporate name and address of Complainant.
Complainant asserts that it has received multiple communications from its clients questioning the content of the emails received from Respondent and states that Respondent’s activities are creating deception and confusion.
Complainant maintains that Respondent cannot demonstrate any legitimate interestS in the Domain Name. Respondent acquired the Domain Name on or about August 24, 2018, a date well after Complainant’s Parent had established rights in Complainant’s Mark in countries around the world since at least as early as 2005.
Complainant maintains that Respondent has not used or made demonstrable preparations to use the Domain Name with a bona fide offering of goods or services and Respondent has not made legitimate noncommercial or fair use of the Domain Name. Complainant submits that Respondent’s conduct illustrates the opposite and confirms the Domain Name is being used to mislead and confuse consumers.
Complainant goes on to suggest that there is no evidence that Respondent is commonly known by the name “Alfnesco” or by the Domain Name, and furthermore that Respondent has been granted no license or other rights to use Complainant’s Mark or any confusingly similar representation of this mark as part of any Domain Name or for any other purpose. Respondent is not and has never been associated with or affiliated with Complainant, nor has Respondent ever been authorized, licensed, or otherwise granted permission by Complainant or Complainant’s Parent to use Complainant’s Mark.
Complainant stresses that the urgency of this Complaint cannot be understated, as there is no way of gauging how many emails are being sent using the Domain Name in order to further Respondent’s allegedly fraudulent activities. It is submitted that in addition to any third parties who may be deceived by Respondent’s actions, Complainant is also being harmed due to the use of Complainant’s Mark in the e-mails and forms being distributed by Respondent and the use of Complainant’s company information and contact details in these same materials.
Complainant claims that the literal similarities between the Domain Name and Complainant’s Mark establish Respondent’s bad faith efforts to capitalize on the goodwill associated with Complainant, Complainant’s Parent, and Complainant’s Mark by acquiring/registering the Domain Name. Further, it is submitted that the use of Complainant’s Mark in a fraudulent email scam is disruptive and evinces bad faith registration and use.
Complainant suggests that the adoption of a privacy service by Respondent for the registration of the Domain Name is another indicator of Respondent’s bad faith registration.
Complainant further suggests that Respondent has tried to hide its identity by providing the Registrar with false contact information; in that the address provided is a non-existent address. Respondent has provided a misspelling of a United States state name (“Minnessota” [sic]) as its city; a United States state abbreviation (ME, the two-letter code for “Maine”) as its state/province name; a specific postal code linked to the Malaysian Tourism Promotion Board in Trafalgar Square, London as its postcode; the letters “UK” (the abbreviation for ‘United Kingdom’) as its country of residence; and a phone number prefaced by the United Kingdom country code (+44).
B. Respondent
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Complainant has established that Complainant has since approximately 2005 provided software products and services using the ALFRESCO mark and that Complainant or Complainant’s Parent has used and secured relevant registrations of Complainant’s Mark.
The Domain Name reproduce Complainant’s Mark in its entirety, subject to one alteration - the use of “n” in place of “r”. This has all the hallmarks of typosquatting.
Complainant submits that the Domain Name mimics Complainant’s Mark the similar appearances shared by the letters “n” and “r” when displayed in emails and web browser address bars. Complainant asserts that this creates a web address which is nearly identical to Complainant’s Mark.
Respondent does not challenge this assertion/argument. Accordingly, the Panel finds that:
a) Complainant has rights in respect of Complainant’s Mark.
b) The Domain Name is confusingly similar to Complainant’s Mark.
Accordingly, the Panel is satisfied that the first element of the Policy has been met.
B. Rights or Legitimate Interests
Respondent has no apparent rights or legitimate interests in the Domain Name; nor has it shown that it has permitted or authorized Respondent to use Complainant’s Mark. In addition, there is no evidence that Respondent is known by the Domain Name, nor that it is making a legitimate offering of goods or services under or by reference to the Domain Name.
Complainant asserts that Respondent has been using the Domain Name to deceive Complainant’s clients by sending email communications which falsely represent that they originate from an authorized representative of Complainant. Absent any denial by Respondent the Panel infers that Respondent’s use of the Domain Name is likely to lure members of the public into accessing fake websites or bank accounts, believing that they are operated by or somehow connected to Complainant.
In the absence of any attempt to refute these allegations it is found that Respondent has no rights or legitimate interests in the Domain Name.
The Panel is satisfied that the second element of the Policy has been met.
C. Registered and Used in Bad Faith
In terms of bad faith conduct, Complainant claims that the literal similarities between the Domain Name and Complainant’s Mark establish Respondent’s bad faith efforts to capitalize on the goodwill associated with Complainant, Complainant’s Parent, and Complainant’s Mark by acquiring/registering and using the Domain Name.
In addition, Complainant argues that Respondent’s adoption of a privacy service for the registration of the Domain Name is another indicator of Respondent’s bad faith registration.
There is merit in both these submissions and the Panel has no difficulty in finding that this amounts to bad faith conduct and accordingly that the third element of the Policy has been met.
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 Domain Name, <alfnesco.com> be transferred to Complainant.
Clive L. Elliott QC
Sole Panelist
Date: November 23, 2018