WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Olivetti S.p.A v. mez inc
Case No. D2015-1934
1. The Parties
The Complainant is Olivetti S.p.A of Ivrea, Italy, represented by Studio Legale Bird & Bird, Italy.
The Respondent is mez inc of Roodeport, South Africa.
2. The Domain Name and Registrar
The disputed domain name <olivettii.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 October 28, 2015. On October 28, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 29, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on October 30, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 19, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 20, 2015.
The Center appointed Dana Haviland as the sole panelist in this matter on December 1, 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.
4. Factual Background
Founded in 1908, the Complainant, Olivetti S.P.A, is a well-known manufacturer of typewriters, computers, smartphones, printers and other business products. The trademark OLIVETTI (the "OLIVETTI Mark" or the "Complainant's Mark") was initially registered in Italy on August 7, 1952 and then regularly renewed. It has also been registered in the United States of America, Canada, the European Union, Brazil, Argentina, Japan, China, and many other countries. The Complainant has submitted evidence of various Italian, Community and International trademarks in support of its Complaint, all of which predate the registration of the Domain Name.
The Respondent registered the Domain Name on February 27, 2015.
5. Parties' Contentions
The Complainant asserts that the Domain Name is identical or confusingly similar to trademarks in which it has prior registered rights, that the Respondent has no rights or legitimate interests in the Domain Name, and that the Respondent registered and is using the Domain Name in bad faith. The Complainant requests transfer of the Domain Name.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Under the Policy, paragraph 4(a), in order to prevail, a complainant must prove the following three elements of a claim for transfer or cancellation of a respondent's domain name:
(i) that the 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 the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has submitted evidence to establish that it is the owner of rights in its OLIVETTI Mark which predate the registration of the Domain Name.
The Domain Name incorporates Complainant's OLIVETTI Mark in its entirety, merely adding another letter "i" at the end. This misspelling of Complainant's Mark is a classic example of typosquatting, "a practice by which 'a registrant deliberately introduces slight deviations into famous marks' for commercial gain". See FirstRand International Limited, FirstRand Bank Limited v. Virtual Sky, WIPO Case No. D2007-0701 (<ebuks.com> confusingly similar to EBUCKS trademark); ESPN, Inc. v. XC2, WIPO Case No. D2005-0444 (<espnnews.com> confusingly similar to the ESPNEWS trademark.
The Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights, and that the Complainant has thus established the first element of its claim under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that a respondent may establish rights or legitimate interests in a domain name by proof of any of the following non-exclusive list of circumstances:
(i) before any notice to the respondent of the dispute, the respondent used, or made demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has not acquired trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Under the Policy, "a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP." See the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1. Here the Complainant has made out such a prima facie case, and the Respondent has not submitted any formal response to the Complainant's contentions or evidence to establish any rights or legitimate interests in the Domain Name.
According to the Complaint, the Respondent has registered the Domain Name including the Complainant's OLIVETTI Mark without the Complainant's authorization. The Complainant asserts that the Respondent is not commonly known by the name "Olivetti", has no relationship with the Complainant, and has not been licensed to use the Complainant's trademark in a domain name or otherwise.
There is no evidence that the Respondent, who has failed to respond to the Complaint, used, or made demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services. On the contrary, the evidence shows that the Respondent was engaged in a phishing scheme to divert the Complainant's customer's payments to the Respondent.
In this regard, the Complainant has submitted evidence to show that the Domain Name, which is confusingly similar to the Complainant's Mark, was used by the Respondent to send fraudulent emails to the Complainant's customer. These emails to the customer used the OLIVETTI Mark, name and contact information of the Complainant, appeared to be from an actual employee of the Complainant, and sought to divert the customer's payments for goods ordered from the Complainant to a bank account established by the Respondent to receive the proceeds of its fraudulent scheme. The Complainant learned of the Respondent's scheme when its customer became suspicious of the emails from the Respondent because the products the customer had ordered from the Complainant were incorrectly described in the Respondent's emails, leading the customer to forward the emails to the Complainant for confirmation that they were fraudulent.
As shown by the Complainant and verified by the Panel, the Domain Name does not resolve to an active website. In W.W. Grainger, Inc. v. Name Redacted, WIPO Case No. D2015-1500, another case involving fraudulent emails to a complainant's customers for commercial gain, the UDRP panel noted that the respondent's failure to develop an active website corresponding to the disputed domain name was evidence supporting the conclusion that the respondent had no rights or legitimate interests in the disputed domain name. See also Pharmacia & Upjohn AB v. Dario H. Romero, WIPO Case No. D2000-1273 (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and made no use of the domain name in question) and Melbourne IT Limited. v. Grant Matthew Stafford, WIPO Case No. D2000-1167 (finding no rights or legitimate interests in the disputed domain name where there was no proof that the respondent made preparations to use the disputed domain name in connection with a bona fide offering of goods and services before notice of the domain name dispute, the disputed domain name did not resolve to a website and the respondent was not commonly known by the disputed domain name).
The W.W. Grainger, Inc. panel noted also that the complainant had furnished unrebutted evidence that the respondent in that case had "attempted to fraudulently obtain expensive computer equipment through emails sent using the disputed domain name by impersonating Complainant's purchasing manager" and held that "[s]uch use does not give rise to any rights or legitimate interests."
In a similar case of identity theft and phishing for customer financial information, CMA CGM v. Diana Smith, WIPO Case No. D2015-1774, the UDRP panel found that the respondent had no rights or legitimate interests in the disputed domain name:
"Based on the evidence provided by Complainant, Respondent only uses the Domain Name as part of a common phishing scheme. The phishing scheme uses the Domain Name as its root to create the impression that an email is sent by the financial director of Complainant to customers of Complainant in order to fraudulently induce customers to provide banking information. Obviously, such phishing scam cannot be considered a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Domain Name. Respondent did not submit any response."
In the instant case, the Respondent's use of the Domain Name in a phishing scheme to divert customer payments from the Complainant to the Respondent did not constitute either a bona fide offering of goods or services or a legitimate noncommercial or fair use of the Domain Name and did not otherwise create any rights or legitimate interests in the Domain Name.
For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name, and that the Complainant has satisfied the second element of its claim, in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out, by way of example, four circumstances, each of which, if proven, shall be evidence of the registration and use of a domain name in bad faith for the purpose of paragraph 4(a)(iii) of the Policy:
(i) circumstances indicating that the registrant has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant's documented out-of-pocket costs directly related to the domain name; or
(ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or
(iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant's website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the registrant's website or location or of a product or service on the registrant's website or location.
Establishing a phishing website using a domain name that incorporates the complainant's mark is a strong example of bad faith under the Policy. See Hana GmbH & Co. KG v. Duke Imoh / Hewlett, WIPO Case No. D2015-1372 (finding bad faith registration and use of the domain name under paragraph 4(b)(iv) of the Policy).
In W.W. Grainger, Inc. v. Name Redacted, supra, the panel held that the respondent's phishing scheme and fraudulent emails constituted bad faith registration and use of the domain name in question. ("Respondent appears to have systematically sent out fraudulent email solicitations in an effort to purchase computer hardware and other expensive items, all while attempting to have the purchase price associated with these purchases charged to Complainant's accounts. The Panel finds this activity to be conclusive evidence that Respondent registered and is using the disputed domain name in bad faith"). See also CMA CGM v. Diana Smith, supra (undisputed evidence of respondent's "phishing scam" for customer banking information supported the panel's finding of bad faith registration and use under paragraph 4(b)(iv) of the Policy).
The Panel finds that the Complainant has established the Respondent's bad faith registration and use of the Domain Name under paragraph 4(b)(iv) of the Policy, and that the Complainant has therefore satisfied the third element of its claim under paragraph 4(a)(iii) 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 <olivettii.com> be transferred to the Complainant.
Date: December 14, 2015