WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
DeLaval Holding AB v. Registration Private, Domains By Proxy LLL / Craig Kennedy
Case No. D2015-2135
1. The Parties
The Complainant is DeLaval Holding AB of Tumba, Sweden, represented by Valea AB, Sweden.
The Respondent is Registration Private, Domains By Proxy LLL of Scottsdale, Arizona, United States of America / Craig Kennedy of Cape Town, South Africa.
2. The Domain Name and Registrar
The disputed domain name <delaval-uk.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 24, 2015. On November 25, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 25, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 26, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 1, 2015.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on December 2, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 22, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 28, 2015.
The Center appointed Anthony R. Connerty as the sole panelist in this matter on January 13, 2016. 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, Delaval Holding AB, is a Swedish public joint stock company which owns trademarks and service marks throughout the world: for example, Reg. No. 2,705,930, the United States Patent and Trademark Office, DELAVAL, registered on April 15, 2003. The DeLaval Group is now a part of the Tetra Laval Group. The Tetra Laval Group consists of three independent industry groups; Tetra Pak, DeLaval and Sidel Group. The DELAVAL trademark is registered both as word marks as well as part of device marks throughout the world, with more than 800 registrations.
The Complainant is also the owner of more than 200 domain name registrations world-wide containing the DELAVAL mark, distributed among generic Top-Level Domains (“gTLDs”) and country code Top-Level Domains (“ccTLDs”).
The disputed domain name <delaval-uk.com> was registered on November 4, 2015.
5. Parties’ Contentions
The DeLaval Group is a full-service supplier to dairy farmers. The company develops, manufactures and markets equipment and complete systems for milk production and animal husbandry worldwide. The company was founded in 1883 in Sweden.
The DeLaval Group is world leading within its field of business and development, employs more than 4,500 people and is operative in more than 100 countries worldwide.
By virtue of the Complainant’s long use of the DELAVAL mark, DELAVAL is associated exclusively with the Complainant and its licensee. The reputation associated with the Complainant’s mark “is excellent by virtue of the quality of the Complainant’s goods and services and the DELAVAL mark is undisputedly considered a well-known trademark within its field of business.”
An example of the 200 or more domain names registered by the Complainant is <delaval-us.com>, registered in January 2010.
The Complainant contends that the Respondent is using the disputed domain name for phishing emails aimed at obtaining personal and financial information.
The Complainant’s contentions are that:
a) The disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights;
b) The Respondent has no rights or legitimate interests in the disputed domain name;
c) The Respondent registered and is using the disputed domain name in bad faith.
The Complainant seeks the transfer of the disputed domain name to itself.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Rules state that the Panel is required to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems appropriate: paragraph 15 of the Rules. Paragraph 4(a) of the Policy requires the Complainant to prove all three of the following elements in order to be entitled to the relief sought:
(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.
Paragraph 4(c) of the Policy sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the Respondent has rights or legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy. The list of circumstances is non-exhaustive.
For the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that shall be evidence of the registration and use of a domain name in bad faith.
A. Identical or Confusingly Similar
The disputed domain name <delaval-uk.com> incorporates the Complainant’s trademark in its entirety; adds a hyphen; inserts “uk”; and adds in the gTLD “.com”.
In Pepsico, Inc. v. Domain Admin, WIPO Case No. D2006-0435, the panel stated that incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark.
The panel in Missoni S.p.A. v. Chen Zhu, Chen Guang Yao, Cheng-Hong Wu, WIPO Case No. D2014-0420, said that the disputed domain names “incorporate in the entirety the Complainant’s registered MISSONI marks, i.e. M-MISSONI, MISSONI HOME and MISSONI with the addition of the generic Top-Level Domains such as ‘.biz’, ‘.info’, ‘.net’, ‘.mobi’ and/or ‘.name’. It is a well-accepted principle that the addition of Top-Level Domain suffixes such as ‘.biz’, ‘.info’, ‘.net’, ‘.mobi’ and/or ‘.name’ is not a distinguishing factor.” The same principle applies to “.com”.
In Chernow Communications Inc. v. Kimball, WIPO Case No. D2000-0119, the panel stated that “The majority of prior Panel decisions, which are consistent with United States Court decisions dealing with trademarks, have held that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark.”
Dealing with confusing similarity, the panel in National Westminster Bank plc v. Renedine Bikay, WIPO Case No. D2012-2101, stated in relation to the disputed domain name <ntwestco-uk.com> that the “co-uk” element and the “.com” gTLD “are to be read down or disregarded in the analysis. See e.g, Telecom Personal S.A. v. NAMEZERO.COM, Inc, WIPO Case No. D2001-0015; Nokia Corporation v. Private Case, WIPO Case No. D2000-1271.”
The Complainant says that “bearing in mind in particular the following factors, (a) the widespread reputation and high degree of recognition of the Complainant’s DELAVAL marks and (b) the lack of distinguishing factors between the disputed domain name and the Complainant’s marks, the disputed domain name should be considered as confusingly similar to the DELAVAL mark in which the Complainant has rights. For that reason, there is no question that the disputed domain name [delaval-uk.com]is visually, phonetically and conceptually confusingly similar to the Complainant’s well-known trademark DELAVAL and to the company name DeLaval.
The Panel finds the disputed domain name to be confusingly similar to the Complainant’s mark, and is satisfied that the Complainant has brought itself within the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant contends that the Respondent is using the disputed domain name for phishing emails “for obtaining personal and financial information”, and says that the Respondent has no rights to or legitimate interests in the disputed domain name: “It must be noted that the Complainant has not licensed or otherwise permitted the Respondent to use its trademark. There is no relationship between the parties which would justify the registration of the domain at issue by the Respondent and nothing in the record, including the WHOIS information, suggests that Respondent is commonly known by the [delaval-uk.com] domain name.”
The Respondent was entitled to deal with the Complainant’s allegations, and was entitled to demonstrate any right or interest in the disputed domain name by way of the circumstances listed in paragraph 4(c) of the Policy. The Respondent has not done so. It is for the Complainant to prove the three elements of paragraph 4(a) of the Policy. However, it is established that, once the Complainant has made out a prima facie case, it is then a matter for the Respondent to answer that case: whether or not a respondent has rights or legitimate interests is a question which a Respondent can answer better than a complainant.
The Panel is satisfied that the Complainant has shown compliance with the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant contends that the Respondent is using the disputed domain name “for phishing emails for obtaining personal and financial information. There is currently no active website under ‘www.delaval-uk.com’... Further, the email […]@delaval-uk.com is used as administrative email for the domain name [tetrapak-uk.com], which is also used in phishing attacks and UDRP proceeding is initiated against the registration and use of the domain name [tetrapak-uk.com] …”
The Complainant adds that the Respondent is using the disputed domain name in fraudulent email communication “for receiving personal and financial information and gives the impression that the Respondent is associated with the Complainant”. “Phishing” is a form of Internet fraud that aims to steal valuable information such as credit cards, social security numbers, user IDs, passwords, etc.
The Complainant states that the Respondent is also using the name of an employee of the Complainant to make fraudulent travel reservations.
The panel in Pfizer Inc v. Michael Chucks / Whoisguard Protected, Whoisguard Inc, WIPO Case No. D2014-0887, said that the complainant pointed out that there are numerous previous UDRP decisions which have held that the registration and the use of a domain name in connection with a fraudulent “phishing” scheme constitutes bad faith under the Policy: “This Panel follows those decisions and finds that the registration and use of the disputed domain name in connection with what is undoubtedly fraudulent ‘phishing’ constitutes bad faith.”
Similarly, the panel in CMA CGM v. Diana Smith, WIPO Case No. D2015-1774, stated that the respondent only used 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… the Panel accepts Complainant’s undisputed submission that bad faith registration and use of the Domain Name is further indicated by the fact that there is strong suspicion of Respondent using the Domain Name in a phishing scam.”
The Respondent had the opportunity to answer the Complainant’s case by submitting a Response, but has not done so. The Panel is satisfied that the Complainant has proved the requirements of 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 disputed domain name, <delaval-uk.com>, be transferred to the Complainant.
Anthony R. Connerty
Date: January 22, 2016