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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Ports Group AB v. WhoisGuard Protected, WhoisGuard, Inc. / Ayed Alotaibi

Case No. DCC2020-0008

1. The Parties

The Complainant is Ports Group AB, Sweden, represented internally.

The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama, / Ayed Alotaibi, Saudi Arabia.

2. The Domain Name and Registrar

The disputed domain name <portsgroup.cc> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 18, 2020. On October 19, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 19, 2020, 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 October 20, 2020, 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 October 20, 2020.

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 the Respondent of the Complaint, and the proceedings commenced on October 22, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 11, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 12, 2020.

The Center appointed Fabrizio Bedarida as the sole panelist in this matter on November 18, 2020. 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, Ports Group AB, is a Swedish company registered in Mölnlycke, Sweden, with additional offices in Stockholm and Malmö. The Complainant was founded in 1994 and offers online brand protection services to companies. The Complainant provides its clients with consulting and active management of their brand portfolios, and has developed a customer portal that allows clients to manage their domain names and retrieve information about their trademarks.

The Complainant has proven to be the owner of the PORTS GROUP mark.

The Complainant is inter alia the owner of:

European Union trademark PORTS GROUP (word) registration No. 015615073 registered on October 28, 2016;

European Union trademark PORTSGROUP (figurative) registration No. 015615198 registered on October 17, 2016;

Norwegian trademark PORTS GROUP registration No. 201607835 registered on July 19, 2017;

Norwegian trademark PORTSGROUP (figurative) registration No. 201607832 registered on July 19, 2017.

The Complainant is also the holder of the domain name <portsgroup.com> since October 5, 2012, which it uses for its official website.

The disputed domain name was registered on August 9, 2020.

The disputed domain name was used to redirect to the Complainant’s official website at “www.portsgroup.com” for a certain time. The disputed domain name currently resolves to a page stating “This Account has been suspended”, apparently owing to the Complainant’s request to the hosting provider of the disputed domain name to have the redirection suspended.

The Complainant’s trademark registrations predate the registration of the disputed domain name.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical to the PORTSGROUP trademark, that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name has been registered and is being used in bad faith.

B. Respondent

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

6. Discussion and Findings

In order for the Complainant to obtain the transfer of the disputed domain name, paragraphs 4(a)(i)-(iii) of the Policy require that the Complainant must demonstrate to the Panel that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(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.

A. Identical or Confusingly Similar

The Complainant has established rights in the PORTSGROUP and PORTS GROUP trademarks.

The disputed domain name is clearly identical to the Complainant’s PORTSGROUP trademark, save for the country code Top-Level Domain (“ccTLD”) “.cc”.

Owing to the fact that the ccTLD is generally disregarded under the test for confusing similarity for the purposes of the Policy, the Panel finds that the disputed domain name is identical to the PORTSGROUP trademark in which the Complainant has rights.

Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

This Panel finds that the Complainant has made out a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. The Respondent has no connection or affiliation with the Complainant, and the Complainant has not licensed or otherwise authorized the Respondent to use or register any domain name incorporating the Complainant’s trademark. The Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain name, nor any use in connection with a bona fide offering of goods or services. In addition, the Respondent does not appear to be commonly known by the name “PORTSGROUP” or by a similar name. Moreover, the Respondent has not replied to the Complainant’s contentions, alleging any rights or legitimate interests in the disputed domain name.

The Complainant has submitted evidence that the disputed domain name used to resolve to the Complainant’s official website. It is the Panel’s opinion that the unauthorized use of a domain name entirely reproducing a third party’s trademark to redirect Internet users to the official website of this third party cannot be considered a bona fide offering of goods or services.

Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel, on the basis of the evidence presented, accepts and agrees with the Complainant’s contentions that the disputed domain name was registered in bad faith and has been used in bad faith.

Particularly relevant are the Complainant’s unchallenged assertions (which the Panel accepts and partially reports below) that:

The Respondent could not be unaware of the existence of the Complainant’s trademarks when registering the disputed domain name.

In fact, the Respondent registered the disputed domain name after the Complainant had registered its trademarks and long after the Complainant had operated a website under the domain name <portsgroup.com>.

The term “portsgroup” is purely imaginative. It is therefore unlikely that the Respondent chose the disputed domain name without the intention of invoking a misleading association with the Complainant.

In fact, the Respondent has used the disputed domain name to redirect Internet users to the Complainant’s official website.

The Complainant has submitted evidence that the disputed domain name used to resolve to the Complainant’s official website, and infers that email servers have been set up for the disputed domain name, asserting that this could indicate that the Respondent is using the disputed domain name to pass itself off as the Complainant in emails.

The Panel sees this use of the disputed domain name as suspicious and as an inference of malicious intent.

The Respondent has taken active steps to conceal its true identity. In fact it has not only used a privacy shield registration service for the disputed domain name, but it appears, from the report (i.e. bad address) received by the Center from the courier that attempted to deliver the Notification of Commencement of the Proceeding to the Respondent, that it has also given the privacy shield company, i.e. WhoisGuard Protected / WhoisGuard, Inc., an incorrect or at least not updated address.

While the use of a privacy or proxy registration service is not in and of itself an indication of bad faith, it is the Panel’s opinion that in the present case the use of a privacy shield, combined with the elements previously discussed, amounts to a further inference of bad faith registration and use.

Finally, the Respondent has not responded to (nor denied) the assertions made by the Complainant in this proceeding.

This Panel finds that all the above qualifies as bad faith registration and use under paragraph 4(b)(iv) of the Policy.

Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(iii) 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, <portsgroup.cc> be transferred to the Complainant.

Fabrizio Bedarida
Sole Panelist
Date: November 26, 2020

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