About Intellectual Property IP Training IP Outreach IP for… IP and... IP in... Patent & Technology Information Trademark Information Industrial Design Information Geographical Indication Information Plant Variety Information (UPOV) IP Laws, Treaties & Judgements IP Resources IP Reports Patent Protection Trademark Protection Industrial Design Protection Geographical Indication Protection Plant Variety Protection (UPOV) IP Dispute Resolution IP Office Business Solutions Paying for IP Services Negotiation & Decision-Making Development Cooperation Innovation Support Public-Private Partnerships The Organization Working with WIPO Accountability Patents Trademarks Industrial Designs Geographical Indications Copyright Trade Secrets WIPO Academy Workshops & Seminars World IP Day WIPO Magazine Raising Awareness Case Studies & Success Stories IP News WIPO Awards Business Universities Indigenous Peoples Judiciaries Genetic Resources, Traditional Knowledge and Traditional Cultural Expressions Economics Gender Equality Global Health Climate Change Competition Policy Sustainable Development Goals Enforcement Frontier Technologies Mobile Applications Sports Tourism PATENTSCOPE Patent Analytics International Patent Classification ARDI – Research for Innovation ASPI – Specialized Patent Information Global Brand Database Madrid Monitor Article 6ter Express Database Nice Classification Vienna Classification Global Design Database International Designs Bulletin Hague Express Database Locarno Classification Lisbon Express Database Global Brand Database for GIs PLUTO Plant Variety Database GENIE Database WIPO-Administered Treaties WIPO Lex - IP Laws, Treaties & Judgments WIPO Standards IP Statistics WIPO Pearl (Terminology) WIPO Publications Country IP Profiles WIPO Knowledge Center WIPO Technology Trends Global Innovation Index World Intellectual Property Report PCT – The International Patent System ePCT Budapest – The International Microorganism Deposit System Madrid – The International Trademark System eMadrid Article 6ter (armorial bearings, flags, state emblems) Hague – The International Design System eHague Lisbon – The International System of Appellations of Origin and Geographical Indications eLisbon UPOV PRISMA Mediation Arbitration Expert Determination Domain Name Disputes Centralized Access to Search and Examination (CASE) Digital Access Service (DAS) WIPO Pay Current Account at WIPO WIPO Assemblies Standing Committees Calendar of Meetings WIPO Official Documents Development Agenda Technical Assistance IP Training Institutions COVID-19 Support National IP Strategies Policy & Legislative Advice Cooperation Hub Technology and Innovation Support Centers (TISC) Technology Transfer Inventor Assistance Program WIPO GREEN WIPO's Pat-INFORMED Accessible Books Consortium WIPO for Creators WIPO ALERT Member States Observers Director General Activities by Unit External Offices Job Vacancies Procurement Results & Budget Financial Reporting Oversight

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Intersog, Inc. v. Domain Privacy Service FBO Registrant / Mohammad Khan, Blue Spark Transportation

Case No. D2021-1187

1. The Parties

Complainant is Intersog, Inc., United States of America (“United States”), represented by O’Neill Tran Law, United States.

Respondent is Domain Privacy Service FBO Registrant, United States / Mohammad Khan, Blue Spark Transportation, United States.

2. The Domain Name and Registrar

The disputed domain name <intersoq.com> is registered with Domain.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 16, 2021. On April 19, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 19, 2021, 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 Complainant on April 23, 2021 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 April 27, 2021.

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 April 29, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 19, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 20, 2021.

The Center appointed Phillip V. Marano as the sole panelist in this matter on June 2, 2021. 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 is a computer software development agency based in Chicago, Illinois, in the United States. Complainant owns an incontestable, valid, and subsisting registration for the INTERSOG trademark in the United States, with the earliest priority dating back to October 12, 2005.

Respondent registered the disputed domain name on March 25, 2021. At the time of this Complaint, and since it was registered, the disputed domain name did not resolve to any active website.

5. Parties’ Contentions

A. Complainant

Complainant asserts ownership of the INTERSOG trademark and has adduced evidence of trademark registration in the United States, with the earliest priority dating back to October 12, 2005. The disputed domain name is confusingly similar to Complainant’s INTERSOG trademark, according to Complainant, because the two are identical except for the intentionally introduced typographical error with the similar-appearing letter “q” instead of the correct letter “g” in Complainant’s trademark.

Complainant further asserts that Respondent lacks any rights or legitimate interests in the disputed domain name based on: the argument that INTERSOG is an arbitrary term with no meaning outside its use to identify Complainant as the source of its goods and services; the lack of any license, affiliation, or other authorization for Respondent to use Complainant’s INTERSOG trademark; and the lack of any evidence that Respondent is known by the term “intersog”.

Complainant argues that Respondent has registered and used the disputed domain name in bad faith for numerous reasons, including: Respondent’s use of the disputed domain name to send emails to Complainant’s clients, misappropriating Complainant’s name and logo, impersonating Complainant’s employees, and attempting to induce payment of fraudulent invoices; and Respondent’s passive holding of the disputed domain name given the lack of any present legitimate use by Respondent.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

To succeed in its Complaint, Complainant must establish in accordance with paragraph 4(a) of the Policy:

i. The disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights; and
ii. 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.

Although Respondent did not reply to Complainant’s contentions, the burden remains with Complainant to establish by a balance of probabilities, or a preponderance of the evidence, all three elements of paragraph 4(a) of the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.3 (“a respondent’s default […] would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true. […] panels have been prepared to draw certain inferences in light of the particular facts and circumstances of the case e.g., where a particular conclusion is prima facie obvious, where an explanation by the respondent is called for but is not forthcoming, or where no other plausible conclusion is apparent.”); The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064 (“The Respondent’s default does not automatically result in a decision in favor of the complainant. The Complainant must still prove each of the three elements required by Policy paragraph 4(a)”).

A. Identical or Confusingly Similar

Ownership of a nationally or regionally registered trademark serves as prima facie evidence that Complainant has trademark rights for the purposes of standing to file this Complaint.WIPO Overview 3.0, section 1.2.1. Complainant submitted evidence that the INTERSOG trademark has been registered in the United States with priority dating back to October 12, 2005, more than fifteen years before the disputed domain name was registered by Respondent. Thus, the Panel finds that Complainant’s rights in the INTERSOG trademark have been established pursuant to the first element of the Policy.

The only remaining question under the first element of the Policy is whether the disputed domain name is identical or confusingly similar to Complainant’s INTERSOG trademark. In this Complaint, the disputed domain name is confusingly similar to Complainant’s INTERSOG trademark because, disregarding the “.com” generic Top-Level Domain (“gTLD”), the trademark is contained in its near entirety within the disputed domain name. WIPO Overview 3.0, section 1.7. (“This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name. […] [I]n cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for the purposes of UDRP standing.”). The gTLDs, such as “.com” in the disputed domain name, are generally viewed as a standard registration requirement and are disregarded under the first element. WIPO Overview 3.0, section 1.11.

It is well established that domain names which consist of common, obvious or intentional misspellings of trademarks are considered to be confusingly similar for the purposes of the first element of the Policy. WIPO Overview, section 1.9 (“Examples of such typos include (i) adjacent keyboard letters, (ii) substitution of similar-appearing characters […], (iii) the use of different letters that appear similar in different fonts, (iv) the use of non-Latin internationalized or accented characters, (v) the inversion of letters and numbers, or (vi) the addition or interspersion of other terms or numbers.”). See e.g., Edmunds.com, Inc. v. Digi Real Estate Foundation, WIPO Case No. D2006-1043 (“This is clearly a ‘typosquatting’ case where the disputed domain name is a slight misspelling of a registered trademark to divert internet traffic. […] In fact, the [disputed] domain name comprises the Complainant’s trademark […] with a single misspelling of an element of the mark: a double consonant ‘s’ at the end.”) In this Complaint, clearly the lowercase letter “q” in the disputed domain name is of similar appearing to the letter “g” in Complainant’s INTERSOG trademark, and based on the evidence offered by Complainant, also it indicates an intentional misspelling by Respondent.

In view of Complainant’s registration for the INTERSOG trademark, and Respondent’s clear attempt at typosquatting on that INTERSOG trademark, the Panel concludes that Complainant has established the first element of the Policy.

B. Rights or Legitimate Interests

Complainant must make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name, shifting the burden of production on this element to Respondent to come forward with evidence demonstrating such rights or legitimate interests. Where, as in this Complaint, Respondent fails to come forward with any relevant evidence, Complainant is deemed to have satisfied the second element of the Policy. WIPO Overview, section 2.1.

It is evident that Respondent, identified by registration data for the disputed domain name as “Mohammad Khan, Blue Spark Transportation”, is not commonly known by the disputed domain name or Complainant’s INTERSOG trademark.

Previous UDRP panels have categorically held that use of a domain name for illegal activity – including impersonation and other types of fraud – can never confer rights or legitimate interests on a respondent. Circumstantial evidence can support the claim made by Complainant asserting Respondent is engaged in such illegal activity, including that Respondent has masked its identity from the public WhoIs information to avoid being contactable, or that Respondent’s website has been suspended by its hosting provider. WIPO Overview 3.0, section 2.13. See e.g. Graybar Services Inc. v. Graybar Elec, Grayberinc Lawrenge, WIPO Case No. D2009-1017 (“Respondent has used the domain name to pretend that it is the Complainant and in particular to create false emails pretending that they are genuine emails coming from the Complainant and one of its senior executives”); see also Gearench v. Contact Privacy Inc. Customer 1246504168 / amber boulden, WIPO Case No. D2020-0562 (Respondent registered and used the disputed domain name in bad faith where Respondent was using Complainant’s trademark and confusingly similar email addresses to confuse Complainant’s customers and illegally obtain payments from Complainant’s customers based on fraudulent invoices and demands for payment). In this case, Complainant has proffered uncontroverted evidence of fraudulent emails and invoices sent to Complainant’s customers from “[...]@intersoq.com” email addresses by Respondent through the disputed domain name. The correspondence and invoice are both very clearly designed, with specific intent from Respondent, to impersonate Complainant and its employees in order to defraud Complainant’s customers.

In view of Respondent’s fraudulent and illegal activity, the Panel concludes that Complainant has established the second element of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy proscribes the following non-exhaustive circumstances as evidence of bad faith registration and use of the disputed domain name:

i. Circumstances indicating that Respondent has registered or Respondent has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to Complainant who is the owner of the trademark to a competitor of that Complainant, for valuable consideration in excess of Respondent’s documented out of pocket costs directly related to the disputed domain name; or

ii. Respondent has registered the disputed domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

iii. Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

iv. By using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

Wrongful use of others’ trademarks to defraud money or extort information from unsuspecting and unwary entities or individuals, by using the disputed domain name, is considered abusive registration and use under the Policy. See CareerBuilder, LLC v. Stephen Baker, WIPO Case No. D2005-0251; The Boots Company, PLC v. The programmer adviser, WIPO Case No. D2009-1383; Go Daddy Operating Company, LLC v. Wu Yanmei, WIPO Case No. D2015-0177 (emails sent by the respondent from the disputed domain names using the complainant’s trademark in an attempt to obtain the complainant’s customer information were held to be use of the disputed domain names for a phishing scheme and consequently bad faith under the Policy); Gearench v. Contact Privacy Inc. Customer 1246504168 / amber boulden, WIPO Case No. D2020-0562.

In view of Respondent’s fraudulent and illegal activity, the Panel concludes that Complainant has established 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, <intersoq.com>, be transferred to Complainant.

Phillip V. Marano
Sole Panelist
Date: June 17, 2021

https://www3.wipo.int/contact/en/area.jsp?area=arbitration https://www.wipo.int/pressroom/en/ https://www.wipo.int/tools/en/disclaim.html https://www.wipo.int/en/web/privacy-policy/ https://www.wipo.int/en/web/accessibility/ https://www.wipo.int/tools/en/sitemap.html https://www3.wipo.int/newsletters/en/ https://www.wipo.int/podcasts/en/ https://www.wipo.int/news/en/