WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Roper Industries, Inc. v. Sid Williams, Ropendant Clearance Industries
Case No. D2014-0904
1. The Parties
Complainant is Roper Industries of Sarasota, Florida, United States of America (“US”), represented by Caesar, Rivise, Bernstein, Cohen, & Pokotilow, Ltd., US.
Respondent is Sid Williams, Ropendant Clearance Industries of New York, New York, US.
2. The Domain Name and Registrar
The disputed domain name <ropeind.com> (the “Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 29, 2014. On May 30, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 2, 2014, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on June 11, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 1, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 3, 2014.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on July 11, 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 Domain Name was registered on April 12, 2014.
Complainant’s web site is located at the domain name <roperind.com>, which was registered on December 19, 1997.
5. Parties’ Contentions
(i) Identical or confusingly similar
Complainant states that since 1957, it and its predecessors have been in the business of manufacturing and marketing a wide variety of engineered products and solutions. Complainant is a diversified technology company consisting of companies with leading market positions in global niche markets – such as medical and scientific imaging products and software, radio frequency products, services and application software, industrial technology products, and energy systems and controls. Complainant is a constituent of the S&P 500, Fortune 1000, and the Russell 2000 market indices, all of which evidence preeminent public companies. Complainant has also been recognized by Forbes Magazine as one of the top 100 “World’s Most Innovative Companies” and as one of its “Global 2000” “World’s Biggest Public Companies.” From 2009 to 2013, Complainant had annual net sales of USD 2.0 billion, USD 2.4 billion, USD 2.8 billion, USD 3.0 billion and USD 3.2 billion, respectively.
Since 1957 to the present, Complainant has used the name and trademark ROPER to identify its business. Complainant has prominently displayed the ROPER mark in all of its printed materials, which have been distributed throughout the US. In addition, Complainant has had a strong presence on the Internet at “www.roperind.com” since at least as early as 1999. Complainant alleges that as a result of its use of the name and mark ROPER, and its wide recognition and success, ROPER has developed secondary and distinctive trademark meaning. The name and mark ROPER has become an extremely valuable symbol of Complainant, its quality enterprise, and its goodwill.
Complainant argues that Respondent’s intentional imitation and copying of Complainant’s ROPER mark in the Domain Name and in Respondent’s spam emails discussed below further demonstrates the secondary and distinctive trademark meaning of ROPER to the public. As between Respondent’s Domain Name and Complainant’s rights in the name and mark ROPER, Complainant has priority of use. Further, as between the Domain Name and Complainant’s name and mark, confusion is unavoidable. The Domain Name <ropeind.com> can only be understood as a combination of a misspelling of the dominant term “roper” with the generic term “ind” (for “industries”). These changes do not distinguish the Domain Name from Complainant’s mark ROPER, particularly since Complainant utilizes virtually the exact same domain name, <roperind.com>, in connection with its Internet presence.
Complainant contends that this is a typosquatting case because the Domain Name is a slight misspelling of Complainant’s domain name, <roperind.com>, so as to deceitfully indicate that Respondent is, contrary to fact, Complainant. This is what Respondent allegedly intends, as shown by use of the Domain Name in connection with spam email falsely purporting to be Complainant’s Vice President of Human Resources and offering fabricated employment opportunities, to illicitly obtain personal information and steal monies from innocent individuals. The practice of typosquatting has been consistently regarded in previous UDRP decisions as creating domain names confusingly similar to the relevant mark.
Complainant submits that this case satisfies the standards for confusing similarity found by the consensus view in UDRP Panel decisions. The overall impression created by Complainant’s mark and the Domain Name is such that Internet users, being familiar with Complainant’s mark ROPER and its domain name <roperind.com>, upon encountering the Domain Name, are likely to assume, contrary to fact, that it originates with, is sponsored, licensed and/or otherwise approved by or in some way connected or affiliated with Complainant.
(ii) Rights or legitimate interests
Complainant contends that Respondent should be considered as having no rights or legitimate interests with respect to the Domain Name. Given that it is strikingly similar to Complainant’s domain name, and given Respondent’s dishonest use of the Domain Name, it is extremely difficult to conceive of any possible legitimate use that Respondent might have had in mind for the Domain Name.
Upon information and belief, Complainant states that Respondent is well aware of Complainant, its substantial and prior use of the name and mark ROPER, and the manner in which Complainant reflects its name and mark in its domain name <roperind.com>. Notwithstanding this knowledge, and in spite of Complainant’s rights, Respondent registered the Domain Name on April 12, 2014. Upon information and belief, since April 12, 2014, Respondent has not engaged in any use of the Domain Name with the bona fide offering of any goods and services. The Domain Name resolves to no web site. Such passive use of the Domain Name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use.
Complainant further asserts, on information and belief, that Respondent is not, and has never been, known by the names ROPER, ROPER INDUSTRIES, ROPE, ROPENDANT, ROPENDANT INDUSTRIES, and/or ROPEIND. Instead, Respondent in choosing the Domain Name has been intentionally seeking to exploit Internet user confusion for Respondent’s own pecuniary benefit and to disrupt Complainant’s business. Respondent is using the Domain Name to disseminate spam email falsely purporting to be Complainant’s Vice President of Human Resources and offering fabricated employment opportunities, to obtain personal information and steal monies from innocent individuals. Respondent’s use of the Domain Name puts Complainant at risk of irreparable injury, because Complainant has no control over the nature and quality of Respondent’s activities, commercial or otherwise. Through Complainant’s continuous and exclusive use, the name and mark ROPER have become so closely associated with Complainant that any other use of a similar name or mark will cause consumers to associate Complainant with that use, even if Complainant is not involved. Any such use of a name or mark by another would, therefore, deprive Complainant of control over its goodwill and reputation. Given the recognition, exclusive and longtime use of Complainant’s mark, the confusion resulting from Respondent’s actions could lead to substantial damage to Complainant’s reputation and goodwill.
(iii) Registered and used in bad faith
Complainant contends that the Domain Name should be considered as having been registered and used in bad faith. On information and belief, Respondent knew of Complainant’s ROPER mark and its domain name, <roperind.com>, prior to registration and use of the Domain Name.
Complainant asserts Respondent has used the Domain Name to obtain illegal benefits by exploiting the reputation and goodwill represented by Complainant’s mark and domain name. Respondent has intentionally created confusion with Complainant’s mark and domain name as to the origin and source of Respondent’s Domain Name and the associated activity, in order to surreptitiously obtain personal information and steal monies from innocent individuals. Respondent, in choosing the Domain Name that is a misspelling of Complainant’s domain name, and using it to disseminate spam email and obtain personal information and steal monies from innocent individuals, has done so to exploit confusion. Complainant submits that it defies credibility to think Respondent had any other purpose other than to exploit Internet user confusion and trade upon the goodwill and reputation of the mark ROPER for Respondent’s own benefit.
Complainant urges that Respondent’s provision of false contact information is further confirmation of bad faith registration and use. The mailing address provided by Respondent does not exist. By providing false contact information and attempting to disguise his true identity, Respondent has deliberately sought to frustrate the Policy. Complainant states that Respondent’s actions with regard to the Domain Name are the epitome of bad faith registration and use, and they contravene paragraph 4(b) of the Policy.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
In order to succeed in its claim, Complainant must demonstrate that the three elements enumerated in paragraph 4(a) of the Policy have been satisfied. These elements are that:
(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights to or legitimate interests in respect of the Domain Name; and
(iii) Respondent has registered and is using the Domain Name in bad faith.
A. Identical or Confusingly Similar
The Panel must first determine whether the Domain Name is identical or confusingly similar to a trademark owned by Complainant. Complainant has submitted evidence of unregistered or common law trademark rights in its ROPER mark through widespread use and recognition over a lengthy period dating back to 1957. The Panel finds the Domain Name <ropeind.com> is a misspelling of the dominant term, “roper”, with the generic term “ind”, added as an abbreviation for “industries”. These changes do not sufficiently differentiate the Domain Name from Complainant’s ROPER mark, especially as Complainant has used a very similar same domain name, <roperind.com>, for a more than 15 years.
Accordingly, the Panel concludes that the Domain Name is confusingly similar to Complainant’s ROPER mark.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, Complainant must prove that Respondent has no rights or legitimate interests in respect of the Domain Name. A complainant is normally required to make out a prima facie case that a respondent lacks rights or legitimate interests in a domain name. Once such prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
In this case, Complainant has established a prima facie case. Complainant did not authorize Respondent to use the ROPER mark in connection with goods or services or to apply for any domain name incorporating the ROPER mark. In addition, Respondent is not making any legitimate noncommercial or fair use of the Domain Name. Instead, Complainant has submitted evidence to show that Respondent has used the Domain Name, which does not resolve to any web site, to send deceptive spam emails. In these emails Respondent falsely purports to be Complainant’s Vice President of Human Resources and offers false employment opportunities, in order to obtain personal information from innocent individuals. Emails have been sent from addressed linked to the Domain Name, such as “[…]@ropeind.com” and “[…]@ropeind.com”. In short, the evidence indicates that the Domain Name has been used in an attempt to perpetrate identity fraud.
Under these circumstances, the Panel finds that Respondent does not have any rights or legitimate interests in respect of the Domain Name. Accordingly, the Panel finds that Complainant has satisfied the second element of the Policy.
C. Registered and Used in Bad Faith
For the same reasons discussed above, the Panel finds that the Domain Name was registered and has been used in bad faith. This is a case of intentional typosquatting to facilitate fraudulent use of the Domain Name. The evidence demonstrates that Respondent, when it registered the Domain Name, targeted Complainant and its ROPER mark, as well as Complainant’s <roperind.com> domain name. Almost immediately after Respondent registered the Domain Name in April 2014, it was used to send deceptive emails whereby Respondent claimed to be Complainant’s Vice President of Human Resources in order to extract information from innocent third parties.
The Panel finds that Complainant has satisfied the third element of the Policy.
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 <ropeind.com> be transferred to Complainant.
Christopher S. Gibson
Date: July 25, 2014