WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dornier MedTech America, Inc., Dornier MedTech Systems GmbH v. Elda Srl, Mario Benneti
Case No. D2015-0232
1. The Parties
The Complainant is Dornier MedTech America, Inc. of Kennesaw, Georgia, the United States of America / Dornier MedTech Systems GmbH of Wessling, Germany, represented by King & Spalding LLP, United States of America.
The Respondent is Elda Srl, Mario Benneti of Portharcourt, Nigeria.
2. The Domain Name and Registrar
The disputed domain name <dorneir.com> is registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 13, 2015. On February 13, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 17, 2015, 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 February 23, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 15, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 16, 2015.
The Center appointed Petter Rindforth as the sole panelist in this matter on March 24, 2015. 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.
The Panel shall issue its Decision based on the Complaint, the Policy, the Rules, the Supplemental Rules, and without the benefit of any Response from the Respondent. The case before the Panel was conducted in the English language.
4. Factual Background
The Complainants (collectively “the Complainant”), both subsidiaries of Dornier MedTech GmbH, are the owners of a number of registered trademarks including the word “dornier”, such as the following registrations issued by the United States Patent and Trademark Office (“USPTO”):
- DORNIER (word), Reg. No. 1 419 081, registered December 2, 1986 for goods in Class 10;
- DORNIER EPOS (word), Reg. No. 2 241417, registered April 27, 1999 for goods in Class 10;
- DORNIER MEDILAS (word), Reg. No. 2 141 743, registered March 10, 1998 for goods in Class 10;
- DORNIERMEDTECH (word), Reg. No. 3 557 900, registered January 6, 2009 for goods and services in Classes 9, 10, 36, 37 and 42;
- DORNIER COMPACT DELTA (word), Reg. No. 2 613 694, registered September 3, 2002 for goods in Class 10.
The disputed domain name <dorneir.com> was registered on June 10, 2014. No detailed information is provided about the Respondent’s activities, apart from what is mentioned below by the Complainant.
5. Parties’ Contentions
The Complainant, with a company history from 1948, is engaged in the development and production of a wide variety of medical products and related services and operates using DORNIER in the company name/s.
The Complainant operates a global website prominently using the DORNIER trademarks at “www.dornier.com”. The Complainant states that it has gained a global reputation as a market leader and pioneer in the development and manufacture of advanced medical products in numerous fields, including urology and medical lasers.
According to the Complainant, the disputed domain name <dorneir.com> was clearly selected to cause confusion with the Complainant’s DORNIER trademarks, as it is virtually identical to the DORNIER trademark, only differing by the transposition of the “i” and “e” of Complainant’s trademark.
The Complainant further states that the Respondent has no rights or legitimate interests in the DORNIER trademark. Rather, the Respondent uses <dorneir.com> as part of a fraudulent scheme to trick businesses and individuals into sending money to the Respondent, thinking that they are actually paying the Complainant. The scheme is accomplished by use of the disputed domain name by sending emails to the Complainant’s customers seeking payment of bills, and by “hot linking” <dorneir.com> to the Complainant’s legitimate website so that those who try to access the disputed domain name to check the legitimacy of the emails they have received are immediately brought to the Complainant’s actual website, thus further confusing the businesses and individuals into believing that the emails from the disputed domain name are legitimate. The fraudulent emails would advise the recipients to not pay invoices to the Complainant’s bank account(s), but rather to a different account provided by the sender.
There is no evidence that the Respondent has been commonly known by <dorneir.com> or made a legitimate noncommercial or fair use of <dorneir.com>. Further, there is no legal or business relationship between the Complainant and the Respondent.
Finally, the Complainant concludes that the Respondent has registered and is using the disputed domain name in bad faith. <dorneir.com> was registered in 2014. By this time, the Complainant had long established rights in the DORNIER trademarks and had acquired a substantial reputation through the worldwide use of the DORNIER trademarks. The Respondent registered the disputed domain name with an obvious intent to trade on the Complainant’s well-established trademark rights. The Complainant has received complaints from consumers reporting that they had received fraudulent emails purporting to be from the Complainant when the emails actually originated from a sender using <dorneir.com>.
The Complainant requests that the Panel issue a decision that the disputed domain name be transferred to the Complainant Dornier MedTech America, Inc.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has obtained multiple trademark registrations for DORNIER (e.g., Reg. No. 1 419 081 of December 2, 1986) with the USPTO.
The Panel finds that the Complainant has established rights in the DORNIER trademark for purposes of the Policy through its trademark registrations with the USPTO. SeeJanus International Holding Co. v. Scott Rademacher, WIPO Case No. D2002-0201 (finding that panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. The respondent has the burden of refuting this presumption).
The relevant part of the disputed domain name is “dorneir”. The addition of the generic Top-Level Domain “.com” is insufficient to distinguish the disputed domain name from the Complainant’s mark.
The disputed domain name contains a misspeling of the Complainant’s trademark, namely, a transposition of the letters “i” and “e”. Altering a trademark by transposing two letters - as in this case - is not enough to escape a finding of confusing similarity. SeeVeriSign, Inc. v. Onlinemalls, WIPO Case No. D2000-1446 (“Respondent appears to have employed minor misspellings of Complainant’s mark to take bad faith advantage of spelling errors made by Internet users while attempting to enter Complainant’s Internet address on their web browsers. Bad faith in selecting a domain name may contribute to a finding of confusing similarity”); see also Deutsche Bank Aktiengesellschaft v New York TV Tickets Inc., WIPO Case No. D2001-1314 (“In the Panel’s view, this is a case of ‘typosquatting’ where the domain name is a slight alphabetical variation from a famous mark. UDRP jurisprudence offers many examples of confusing similarity brought about through easily made typing errors by an Internet user”).
The Panel therefore concludes that <dorneir.com> is confusingly similar to the Complainant’s trademark DORNIER.
B. Rights or Legitimate Interests
Once a complainant establishes a prima facie case of the second element of the Policy, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.
The Respondent has no rights to use the Complainant’s trademark or variations thereof and is not an authorized agent or licensee of the Complainant’s products, services or trademarks. There is also nothing on the record indicating that the Respondent is commonly known by the disputed domain name. As such, the Panel finds the Complainant has established a prima facie case on the second element.
By not submitting a formal Response, the Respondent failed to invoke any circumstance which could demonstrate, pursuant to paragraph 4(c) of the Policy, or in any other manner, any rights or legitimate interests in the disputed domain name or to rebut the Complainant’s prima facie case.
As shown by annex 4 of the Complaint, the Respondent has used the disputed domain name to send emails to the Complainant’s customers seeking payment of bills, informing such customers to pay their bills to another bank account – presumably connected to the Respondent. Such use does not establish rights or legitimate interests. See CIMB Group Sdn. Bhd., CIMB-Principal Asset Management Berhad v. PrivacyProtect.org / Cyber Domain Services Pvt.Ltd., WIPO Case No. D2010-1680 (registration of a domain name “for the purpose of misleading or diverting consumers” cannotgive to rise rights or legitimate interests).
In addition, typosquatting occurs when a respondent purposefully includes typographical errors in the trademark portion of a disputed domain name to divert Internet users who make such typographical errors. In this case, the disputed domain name takes advantage of Internet users who mistype the Complainant’s DORNIER trademark. The Panel concludes that the Respondent’s engagement in typosquatting is further evidence that the Respondent does not have rights or legitimate interests in <dorneir.com>.
Accordingly, the Panel finds that the Respondent does not have any rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Complainant refers to the Complainant’s United States trademarks, registered prior to the registration of the disputed domain name, whereas the Respondent’s home country is Nigeria. Arguably this alone may be insufficient to indicate that the Respondent was aware of the Complainant at the time of registering the disputed domain name.
However, the Panel also notes that the Respondent registered <dorneir.com> 28 years after the date of the Complainant’s first United States trademark registration, that the disputed domain name is an obvious misspelling of the Complainant’s trademark and that it is used to confuse the Complainant’s customers. Thus, it is clear to this Panel that the Respondent had the Complainant’s trademark in mind when the Respondent registered the disputed domain name. See Trustmark National Bank v. Henry Tsung, WIPO Case No. D2004-0274 (“Respondent most likely knew that Complainant was the holder of the… Marks. It would have been difficult to believe that Respondent would have registered the Domain Name without to know the foregoing. First of all, it adopted the slightest variations possible for circumventing the domain name as registered, up to the extent of a ‘typo squatting’. For that end, Respondent would necessarily have had to investigate the registries and perhaps Complainant itself”).
Further, as shown by the Complainant, the Respondent has used <dorneir.com> in direct email correspondence to the Complainant’s customers, identifying itself as the Complainant and trying to make them pay bills directly to an account provided by the Respondent, instead of to the Complainant. That is indeed a clear case of bad faith use.
Thus, the Panel concludes that the disputed domain name was registered and used in bad faith, and that the Complainant has succeeded in proving the three elements within paragraph 4(a) 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 disputed domain name, <dorneir.com>, be transferred to the Complainant Dornier MedTech America, Inc.
Date: April 7, 2015