WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Toray Industries, Inc. v. Whois Privacy Protection Service, Inc., ALAN ONEAL, Name Redacted, SALMAN MASUD
Case No. D2013-1787
1. The Parties
The Complainant is Toray Industries, Inc. of Tokyo, Japan, represented by Sanderson & Co., United Kingdom of Great Britain and Northern Ireland.
The Respondents are Whois Privacy Protection Service, Inc. of Bellevue, United States of America; ALAN ONEAL of Monroe, Georgia, United States of America; Name Redacted; SALMAN MASUDDR of Murray, Utah, United States of America.
2. The Domain Names and Registrar
The disputed domain names <toraygroug-us.com>, <toraygroup-us.com> and <torayint-us.org> (“the Domain Names”) are registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 18, 2013. On October 18, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On the same day, the Registrar transmitted by email to the Center its verification response disclosing registrants and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Registrar confirmed that the Domain Name <toraygroug-us.com> is registered in the name of SALMAN MASUD, the Domain Name <toraygroup-us.com> is registered in the name of ALAN ONEAL, and the Domain Name <torayint-us.org> is registered in the name of Name Redacted. The Center sent an email communication to the Complainant on October 22, 2013 providing the registrants and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint, and requesting the Complainant to address the issue of consolidation of multiple registrants disclosed by the Registrar. On the same day, the Center also requested the Complainant to amend the Registrar information. The Complainant filed an amended Complaint on October 25, 2013 including a request for consolidation regarding the multiple registrants.
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(a) and 4(a), the Center formally notified the Respondents of the Complaint, and the proceedings commenced on November 1, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was November 21, 2013.
On November 10, 2013, the Center received an email communication from Name Redacted claiming “I am in no way affiliated with the businesses mentioned. I have never heard of or done business with Toray, nor do I have an e-mail address or telephone number referenced in your notice of complaint. In fact, an unauthorized charge was made on my credit card to Google advertising, which I disputed and had removed from my credit card. There has obviously been some kind of a mix up and I would like my name and address removed from this case immediately”. On November 11, 2013, the Center acknowledged receipt of this email communication, informing Name Redacted that the Center is not in a position to make a substantive assessment on the merits of her claims and/or evidence in this regard. The independent Administrative Panel (on appointment) will decide proper Respondent(s) in the current proceeding.
No formal Response was filed with the Center by the specified Response due date. Therefore, the Center notified Respondents’ default on November 22, 2013.
The Center appointed Willem J. H. Leppink as the sole panelist in this matter on November 28, 2013. 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 following facts are undisputed:
The Complainant is Toray Industries Inc, and was originally founded in 1926 and processes, manufactures and sells several kind of products, such as fibres, textiles, plastics, chemicals, IT related products and carbon fibre composite materials. The Complainant employed over 42,500 people, and had consolidated net sales of JPY 1,592.30 billion for the last complete financial year.
The Complainant’s subsidiary Toray International Inc. owns the website “www.toray-intl.com”.
The Complainant owns many registrations of or including the trademark TORAY (“Trademark”), such as an International Registration (Madrid) with registration number 1006810, a Community Trade Mark with registration number 786772, a United States registration with registration number 1619563, and also in other jurisdictions throughout the world for various goods and services.
The Domain Name <toraygroug-us.com> was registered on September 8, 2013.
The Domain Name <toraygroup-us.com> was registered on September 12, 2013.
The Domain Name <torayint-us.org> was registered on September 13, 2013.
5. Parties’ Contentions
Insofar as relevant, the Complainant contends the following:
The Domain Names are confusingly similar to the Trademark, and the Respondents are not using the Domain Names in connection with a bona fide offering of goods or services.
The Domain Names are identical to the Trademark. The Domain Names and Trademark consist of or predominately comprise the word “toray”. The “.com” or “.org” component in the Domain Names are top level domain identifier and may be ignored when making a comparison. The rest of each Domain Name is either the word “groug”, the actual correctly spelled descriptive word “group” or the abbreviation “int” which would either imply an aspect of the Toray “group” of companies or that the company Toray International which is a part thereof. The simple geographic indicator “US” does nothing to distinguish the Domain Names.
The Respondents are not licensed to use the Trademark, nor are the Respondents in any way associated with the Complainant or other of the Complainant’s group of companies. The Respondents are in no way authorized by or affiliated with the Complainant.
As of October 14, 2013 the Domain Names do not resolve to any website. The Domain Names have been set up purely to support a scam by providing an email address that is very similar to genuine email addresses of the Complainant.
The Respondents are not commonly known by the Domain Names. Investigations have failed to locate any registrations for “toray” or any variant in the name of the Respondents. Investigations have also failed to find evidence that the Respondents have been commonly known by the Domain Names on any legitimate grounds.
The Respondents have registered and are using the Domain Names in bath faith. The Domain Names are believed to provide support to scams surrounding the collection of personal data using fraudulent job offers alleged to be from the Complainant’s United States subsidiary. Various emails have been sent to individuals using emails having either the <torayint-us.org> or the <toraygroug-us.com> domain names.
The Domain Names have been used to commit fraudulent actions, in that the Respondents impersonated the Complainant or its staff in order to deceive, and extract information/monies via a scam. The Domain Names have been designed and registered with these fraudulent actions in mind and as an exclusive purpose.
The Respondents are clearly engaged in bad faith use and registration. The Respondents are holding the Domain Names which demonstrates unauthorized use of the Complainant’s Trademark, and it is very likely that the Respondents are receiving benefit as a result of the confusion.
Use of the Domain Names may both now and in the future create Internet traffic or emails for commercial gain by creating a likelihood of confusion, or at least “initial interest confusion”, as to the source, sponsorship, affiliation or endorsement of any website associated with the domain name or the destination of any email. The Domain Names are clearly intended to confuse a user into believing, as a result of the association with the strong reputation of the Complainant, in the authenticity of some other activity which is in fact fraudulent. A user induced to email an address including the Domain Names is likely to believe it is genuinely connected to the Complainant and thus risk falling for a scam.
The Respondents in this case have deliberately chosen a distinctive trademark for the Domain Names, which they otherwise has no bona fide connection to. By the use of the Trademark in the Domain Names, the Respondents intentionally attempted to use the reputation of the Complainant so that users may be deceived. The Respondents are not using the Domain Names for any bona fide purpose. The Respondents are blocking the Complainant from registering or using the Domain Names and is interrupting their business by misleading potential or current customers. Tarnishment of the Complainant’s reputation may also occur resulting from such mistaken association.
None of the Respondents replied to the Complainant’s contentions.
However, one of the Respondents stated that she is in no way affiliated with the businesses mentioned. This Respondent has never heard of or done business with the Complainant, nor has she an email address or telephone number referenced in the Complaint.
6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements:
(i) the Domain Names registered by the Respondent are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondents have no rights or legitimate interests in respect of the Domain Names; and
(iii) the Domain Names registered by the Respondent have been registered and are being used in bad faith.
Preliminary issues: 1) Consolidation of Respondent:
This Panel notes that the Complainant has been filed against multiple Respondents. This Panel finds that this Complaint should be accepted as the Domain Names were registered with the same Registrar in September 2013 and they are being used in the same pattern of fraudulent behavior using the same fraudulent emails. Further the contact details show similarities and overlap.
2) Redaction of the Respondent’s name:
As in Elkjøp Nordic A/S v. Name Redacted, WIPO Case No. D2013-1285 and Saudi Arabian Oil Company v. Name Redacted, D2013-0105, this Panel finds that the Domain Name <torayint-us.org> was registered by a third party without the involvement of the person identified in the WhoIs as the registrant of the Domain Name. The Panel has accordingly redacted the name of that person in this Decision and has attached an Annex 1 as an instruction to the Registrar – this Annex 1 shall not be published in this exceptional case.
A. Identical or Confusingly Similar
The Domain Names incorporates the Complainant’s Trademark TORAY in its entirety; the only difference is the mere adjunction of the terms “groug-us”, “group-us” and “int-us”. Furthermore, the Panel finds that the Domain Name <toraygroug-us.com> contains a common or obvious misspelling, i.e. typosquatting, of the word “group”. The addition of merely descriptive wording to a domain name is insufficient in itself to avoid a finding of confusing similarity. In Asurion Corporation v. SQB, WIPO Case No. D2009-0165, the panel found that “adding the generic term ‘insurance’ to the mark fails to give to the disputed domain name any distinctiveness, but instead aggravates the risk of confusion […]” and decided that the domain name <asurion-insurance.com> was confusingly similar with the trademark ASURION.
The Panel believes that people considering the Domain Names without awareness of its content may believe that the Domain Names are in some way connected and associated with the Complainant: this situation is known as “initial interest confusion” (see Covance, Inc. and Covance Laboratories Ltd v. The Covance Campaign, WIPO Case No. D2004-0206; CBS Broadcasting Inc., f/k/a CBS Inc. v. Nabil Z. aghloul, WIPO Case No. D2004-0988).
Finally, with regards to the suffixes “.com” and “.org”. (which indicates that the Domain Names are registered in the “.com” and “.org” gTLD), as it was established in many previous UDRP decisions (see A.P. Møller v. Web Society, WIPO Case No. D2000-0135; Rollerblade, Inc. v. Chris McCrady, WIPO Case No.
D2000-0429; Arab Bank for Investment And Foreign Trade (ARBIFT) v. Mr. Kenn Wagenheim / firstname.lastname@example.org, WIPO Case No. D2000-1400; Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner, WIPO Case No. D2001-1447; and Crédit Industriel et Commercial S.A v. Name Privacy, WIPO Case No. D2005-0457), it does not generally affect the analysis under the first element of the Policy for the purpose of determining whether it is identical or confusingly similar; indeed the suffix is a necessary component of a domain name and does not give any distinctiveness.
Thus, the Panel finds that the Domain Names are confusingly similar to the Trademark.
For all the foregoing reasons, the Panel finds that the Complainant has met its burden under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Respondents did not reply to the Complainant’s contentions. For that reason, the Panel has taken careful note of the factual assertions that have been made and supported by evidence by the Complainant.
In particular, the Respondents have failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondents have rights or legitimate interests in the Domain Names, such as:
(i) use or preparation to use the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services prior to notice of the dispute; or
(ii) being commonly known by the Domain Names (as an individual, business or other organization) even if the Respondents have not acquired any trademark or service mark rights; or
(iii) making legitimate noncommercial or fair use of the Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence in the case file that the Respondents have any rights or legitimate interests in the Domain Names.
The Respondents do not seem to be affiliated with the Complainant in any way. There is no evidence that “Toray” is the Respondents’ name or that the Respondents are commonly known as “Toray”. There is also no evidence that the Respondents are, and have ever been, a licensee of franchisee of the Complainant and that the Respondents have ever asked, and have ever been permitted in any way by the Complainant to register or use the Trademark, or to apply for or use any domain name incorporating any of the trademarks.
Furthermore, the use of the Domain Names cannot be considered a bona fide offering of goods or services. In particular the Respondents did not demonstrate any use or demonstrable preparation to use the Domain names in connection with a bona fide offering of goods or services as the Respondents are using the Domain Names to commit fraudulent actions, in that the Respondents impersonated the Complainant or its staff in order to deceive, and extract information/monies via a scam.
Finally, given the circumstance of this case, the Panel finds that the Respondents’ lack of rights or legitimate interests in the Domain Names may also be inferred by the fact that no Response was filed by the Respondents. One of the Respondents replied, but claimed that she is in no way affiliated with the businesses mentioned. According to earlier UDRP decisions “non-response is indicative of a lack of interests inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights” (see Pomellato S.p.A. v. Richard Tonetti, WIPO Case No. D2000-0493 and GA Modefine S.A. and Giorgio Armani v. Yoon-Min Yang, WIPO Case No. D2005-0090).
Therefore, based on the evidence, the Panel is satisfied that the second element of the Policy is met.
C. Registered and Used in Bad Faith
The Panel finds that the Domain Names were registered and are being used in bad faith.
In light of the evidence filed by the Complainant and the absence of a reply, the Panel finds that the Complainant’s trademarks and activities are well-known throughout the world. Accordingly, in the Panel’s view, the Respondents must have been aware of the Complainant’s existence and rights when they registered the Domain Names. This is emphasised by the fact that Respondents impersonated the Complainant or its staff in order to deceive, and extract information/monies via a scam.
This behavior of the Respondents fits the example as paragraph 4(b)(iv) of the UDRP, i.e. that by using the Domain Names, the Respondents have intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondents’ website or location or of a product or service on the Respondents’ website or location.
Although the lack of a reply by the Respondents as such cannot by itself lead to the conclusion that there is use in bad faith, the cumulative circumstances as outlined in the Decision are sufficient for the Panel to find that the use by the Respondents is in bad faith.
In light of the above circumstances, the Panel is satisfied that the third element of the Policy is met and that the Domain Names were registered and are being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <toraygroug-us.com>, <toraygroup-us.com> and <torayint-us.org> be transferred to the Complainant.
Willem J. H. Leppink
Date: December 12, 2013