WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BAE Systems plc v. Detica Consulting
Case No. D2014-0514
1. The Parties
The Complainant is BAE Systems plc of London, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by Olswang LLP, UK.
The Respondent is Detica Consulting of Edinburgh, UK.
2. The Domain Name and Registrar
The disputed domain name <deticaconsulting.com> (the “Domain Name”) is registered with Web Commerce Communications Limited dba WebNic.cc (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 31, 2014. On April 1, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same date, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 10, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was April 30, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default.
The Center appointed Steven A. Maier as the sole panelist in this matter on May 16, 2014. 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 a defence and security company headquartered in the UK.
The Complainant is the owner of a number of Community and UK trademark registrations which comprise or contain the mark DETICA. The registrations include Community Trade Mark number 002204980 for DETICA, filed on May 4, 2001 in Classes 9, 16, 35, 37, 38 and 42, for goods and services including consultancy in various sectors, including business, telecommunications services and computer hardware and software.
The Domain Name was registered on August 21, 2013.
At the date of the Center’s formal compliance check, April 10, 2104, the Domain Name did not resolve to any active website.
5. Parties’ Contentions
The Complainant submits that it is one of the world’s largest defence and security companies, whose activities include the design, development and manufacture of equipment including ships, submarines and aircraft, cyber security, border and transport security and high technology electronic systems. In 2009, the Complainant employed 97,200 staff based at employment centres throughout the world and reported sales of GBP 22.4 billion.
The Complainant states that in 2008, it acquired Detica Group Limited in a high-profile billion dollar acquisition. Detica had used the mark DETICA in connection with information technology and security consulting since 2001. Following its acquisition of Detica, the Complainant has offered a variety of services under the DETICA brand, including cyber security consulting, risk management and compliance, data analytics, systems integration, business consulting and digital media consulting. In 2011, the Detica business was responsible for over GBP 260 million of the Complainant’s revenue.
The Complainant provides evidence of its ownership of 11 Community and UK registered trademarks that comprise or include the mark DETICA. It also produces prints of its web pages in which it offers consulting services under the DETICA brand, in sectors including business and IT strategy, people and organizational development and change management and business transformation. The Complainant also produces a list of 29 domain names with the extensions “co.uk” and “.org.uk” which include the term “detica”, all of which are stated to have been in use prior to the date of registration of the Domain Name. In the circumstances, the Complainant claims unregistered as well as registered rights in the marks DETICA and DETICA CONSULTING and states that it has been active over the years in preventing infringement of its registered and unregistered rights in the DETICA name and mark.
The Complainant submits that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (paragraph 4(a)(i) of the Policy).
The Complainant relies on its registered and unregistered trademark rights referred to above. It submits that the distinguishing part of the Domain Name is identical to its mark DETICA and the additional term “consulting” is descriptive. The Complainant submits that, in the circumstances, Internet users will inevitably believe that the Domain Name is owned or operated by the Complainant.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii) of the Policy).
The Complainant states that the Respondent is not related in any way to the Complainant and that the Complainant has never consented to its use of the Domain Name. The Complainant also denies that the Respondent is using the Domain Name in connection with any bona fide offering of goods or services or that it is making any legitimate noncommercial or fair use of the Domain Name. The Complainant submits that, on the contrary, the Respondent has used the Domain Name in connection with an apparently fraudulent website, as is further explained below.
The Complainant submits that the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii) of the Policy).
In particular, the Complainant submits that the Respondent registered and has used the Domain Name for the purposes of a fraudulent venture.
The Complainant submits screen shots of a website at “www.deticaconsulting.com” to which it states the Domain Name resolved as of November 18, 2013. The website is presented as a professional website under the banner “DETICA CONSULTING” and strapline “We Know Everything About Successful Business”. The website states that Detica Consulting is one of the world leaders in the consulting market and purports to provide information about the history and operations of the organisation as offering “IT Strategy Consulting” and other services. Under “Careers” it refers to a vacancy for an “Operations Assistant”.
The Complainant also produces a blog report from an organisation named F-Secure, which is an online security provider. The Complainant states that F-Secure was established in 1988 and is a respected and award-winning security provider, traded on the Helsinki stock exchange and with a presence in over 100 countries. The blog report concerns the Respondent and three other named businesses and states that all four of the companies are “phony online shells run by online criminals” and that their websites have been created only to give an appearance of legitimacy. Their purpose is to offer positions such as “Operations Assistant” which are seeking in reality to recruit “money mules” to become involved in money laundering activities.
The Complainant submits that, as an organisation purporting to operate in the same business sector as the Complainant, it is inconceivable that the Respondent was not aware of the Complainant’s DETICA mark and business at the date it registered the Domain Name.
The Complainant also submits that the Respondent’s address and other contact details are false. The Complainant states that it has made extensive efforts to contact the Respondent in connection with this matter, but to no avail. It submits that if the Respondent were a genuine business it would have responded to these attempts to contact it. The Complainant also states that it has investigated the Respondent’s stated business address in Edinburgh, which was provided by the Respondent in connection with the Domain Name registration and also appears on the Respondent’s website. However, the operator of that address, Avanta Serviced Office Group, informed the Complainant that it had no client by the name of the Respondent.
In addition, the Complainant states that it has been the subject of demonstrable customer confusion resulting from the Respondent’s activities. It produces evidence of an email which a member of the public received from someone claiming to be “Dorothea Mueller”, the “HR Manager” of the Respondent, stating that the Respondent was looking for an “Operations Assistant” on a salary of USD 720 per week and inviting a reply to “[…]@gmail.com”. The recipient contacted the Complainant in the belief that it was the originator of the email.
The Complainant states that, in the light of its evidence that the Respondent was operating a fraudulent venture under the Domain Name, it was able to persuade the provider of the relevant IP address to disable access to the Respondent’s website after November 18, 2013.
The Complainant submits that, in the light of the above, it is clear that the Respondent registered and has used the Domain Name with the intention, for commercial gain, of attracting Internet users to its website by creating confusion with the Complainant’s genuine websites and misrepresenting the Respondent as being connected with the Complainant (paragraph 4(b)(iv) of the Policy).
The Complainant states that it is particularly damaging for the Complainant to be linked with a fraudulent venture in this way given that fraud prevention constitutes a significant part of its business.
The Complainant seeks a transfer of the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order to succeed in its Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:
(i) that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
Even in a case such as this where the Respondent has failed to file a Response, the Complainant must still establish that all three of the above elements are present.
A. Identical or Confusingly Similar
The Complainant has established that it is the owner of Community and UK registrations for the trademark DETICA which date back to 2001. Those trademarks are registered for, among other goods and services, consultancy services. The Domain Name is <deticaconsulting.com>. The Panel finds that the term “detica”, which is identical to the Complainant’s mark, is the distinctive part of the Domain Name. The term “consulting” is descriptive of services including those which are offered by the Complainant and is not effective to distinguish the Domain Name from the Complainant’s mark.
Therefore, the Panel finds that that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights and that the first element of paragraph 4(a) of the Policy is met.
B. Rights or Legitimate Interests
The Panel accepts the Complainant’s evidence that it is not associated in any way with the Respondent and that it did not authorise the Respondent to use its DETICA mark. In the view of the Panel, this gives rise to a prima facie case for the Respondent to answer that it had no rights or legitimate interest in respect of the Domain Name. However, the Respondent has not filed any Response in this proceeding and has not therefore given any indication of any rights or legitimate interests that it may claim to have, whether in accordance with the guidance set out in paragraph 4(c) of the Policy or otherwise. Nor is there any other evidence before the Panel of any rights or legitimate interests on the part of the Respondent. While the Respondent has used the Domain Name in accordance with the website referred to above, the Panel does not consider, for the reasons set out below, that this constitutes any bona fide offering of goods or services.
Therefore, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the second element of paragraph 4(a) of the Policy is met.
C. Registered and Used in Bad Faith
The Panel accepts the evidence of the Complainant that it (or its predecessor) has traded under the mark DETICA since 2001 and has offered consultancy services under that mark. The Complainant has also provided evidence of its significant global market presence. The Respondent has not filed any Response in this proceeding in which it may have provided an explanation for its choice of the Domain Name. In the circumstances, the Panel infers on balance that the Respondent was aware of the Complainant’s mark and services at the date it registered the Domain Name and that it registered the Domain Name with the intention of creating a false impression of an association with the Complainant in the minds of Internet users.
In the circumstances, the Panel concludes, for the purposes of paragraph 4(b)(iv) of the Policy, that by using the Domain Name the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its website.
The Panel also accepts on balance the Complainant’s evidence that the Respondent has used the Domain Name for the purposes of its website in furtherance of a potentially fraudulent venture. This evidence includes the blog report from F-Secure, the email forwarded to the Complainant by a member of the public and the evidence that the Respondent’s address is false. This last matter is supported by the fact that the Center was unable to deliver the Written Notice of Complaint to the Respondent at that address because the Respondent was not known at that address and the contact number provided was also incorrect.
Finally, the Panel accepts the Complainant’s evidence that in the light of the Complainant’s services relating to security and fraud prevention, the false association of its mark with the Respondent’s activities described above is of particularly serious detriment to the Complainant.
Accordingly, the Panel finds that the Respondent registered and has used the Domain Name in bad faith and that the third element of paragraph 4(a) of the Policy is met.
For the foregoing reasons, in accordance with paragraphs 4 of the Policy and 15 of the Rules, the Panel orders that the Domain Name <deticaconsulting.com> be transferred to the Complainant.
Steven A. Maier
Date: May 21, 2014