WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Edelman, Inc. v. Devteam Meetey
Case No. D2016-0500
1. The Parties
The Complainant is Edelman, Inc. of Chicago, Illinois, United States of America (“United States”), represented by Seyfarth Shaw, United States.
The Respondent is Devteam Meetey of Ramat Gan, Israel.
2. The Domain Name and Registrar
The disputed domain name <edelmanpr.net> is registered with eNom, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 14, 2016. On March 15, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 16, 2016, the Registrar transmitted by email to the Center its verification response disclosing the 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 April 4, 2016, 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 April 5, 2016. The amended Complaint mentions Devteam Meetey as the named Respondent.
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 proceedings commenced on April 7, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 27, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 28, 2016.
The Center appointed Charles Gielen as the sole panelist in this matter on May 6, 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.
Upon reviewing the Complaint and pursuant to paragraphs 10 and 12 of the UDRP Rules, the Panel issued a procedural order requesting the Complainant to provide evidence of the use of the disputed domain name <edelmanpr.net> in bad faith, in particular, as described in point 7 of the declaration attached as Exhibit 1 to the amended Complaint. By email of May 13, 2016, the Complainant submitted further evidence to the Center. The Respondent was given a term to respond to this evidence; however no such response was received by the Center.
4. Factual Background
The Complainant owns a United States trademark registration for the trademark EDELMAN, registered under No. 2999518, for use in connection with, among other things, public relations agency services and advertising agency services, as well as market research, market analysis, consumer research and conducting business and market research surveys.
The disputed domain name <edelmanpr.net> was created on September 26, 2014.
5. Parties’ Contentions
The Complainant contends that it has used the trademark EDELMAN in connection with public relations and related services since 1952, and that it is the largest independent public relations firm in the world. In its fiscal year 2015, the Complainant had over USD 833 million dollars in revenue associated with the use of the trademark EDELMAN in connection with public relations and related services. Complainant operates and has used the trademark on the Internet including in the domain name of the website “www.edelman.com”. The Complainant uses the domain name <edelman.com> as its main vehicle for sending corporate emails related to its customers.
The Respondent registered the disputed domain name on September 26, 2014. The disputed domain name was registered long after the Complainant had registered the trademark EDELMAN related to public relations services. An attempt to access the disputed domain name results in viewing an error message. The Complainant contends that one or more unknown individuals have been using an email address associated with the disputed domain name, for example, “firstname.lastname@example.org” and “email@example.com” to impersonate employees of the Complainant and to defraud third parties, including, a venture capital company named GTI who paid a substantial sum of money to a company that misrepresented itself to be the Complainant.
The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trademark. The disputed domain name simply is the trademark EDELMAN of the Complainant with the term “pr”, which is known to be a nickname or acronym for public relations for which the trademark EDELMAN is registered and used.
Furthermore, the Complainant states that the Respondent does not have any rights or legitimate interests in the disputed domain name. The Complainant has never licensed or authorized the Respondent to use the trademark EDELMAN which was used and registered long before the Respondent registered the disputed domain name. The Respondent cannot show that it has any rights or legitimate interests in respect of the disputed domain name, and none of the defenses set forth in paragraph 4(c) of the Policy is available to the Respondent. In particular, the Respondent cannot possibly show that before any notice of this dispute, the Respondent engaged in the use of the disputed domain name in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy, because the Respondent has parked the disputed domain name and used email addresses associated with the disputed domain name for the purposes of committing fraud.
Finally the Complainant states that the Respondent registered and uses the disputed domain name in bad faith, mainly because the Respondent uses the disputed domain name to impersonate employees of the Complainant and to attempt to commit fraud.
The Respondent did not reply to the Complainant’s contentions as outlined in the amended Complaint and also did not respond to the submission by the Complainant filed as a result of the procedural order.
6. Discussion and Findings
The Panel is of the opinion that the Complainant’s contentions are reasoned and that the disputed domain name should be transferred to the Complainant pursuant to the Policy. The Panel gives the following reasons for its decision.
A. Identical or Confusingly Similar
The Complainant proves that it has rights in the trademark EDELMAN which is used extensively for public relations and advertising agency services in particular in the United States. The trademark EDELMAN certainly is not a fantasy term. The disputed domain name contains this trademark as the most dominant part followed by the letters “pr” which likely stands for “public relations” and which likely will be understood by the relevant public as such. The Panel is of the opinion that for these reasons the disputed domain name is confusingly similar to the trademark of the Complainant. The added term “.net” does not change the finding that the disputed domain name is similar, since the term “net “ is generally understood to be a popular generic Top-Level Domain (“gTLD”). In making the comparison between the trademark and the disputed domain name the gTLD is usually disregarded. The Panel is of the opinion that applying these principles to this case, the disputed domain name should be considered confusingly similar to the trademark.
Therefore, the requirement under paragraph 4(a)(i) of the Policy is met.
B. Rights or Legitimate Interests
The Panel is of the opinion that the Complainant made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The first reason is that the distinctive word “edelman” is not a term one would choose as a domain name without having specific reasons to choose such a term. This word certainly is not a descriptive term serving to indicate specific characteristics of any goods or services. Furthermore, the disputed domain name was registered long after the Complainant started to use the trademark EDELMAN. The Respondent did not contest the Complainant’s argument that it had never granted any authorization or license to the Respondent to use this trademark.
In view of the aforementioned, the Panel is of the opinion that the requirement of paragraph 4(a)(ii) of the Policy is met.
C. Registered and Used in Bad Faith
The Panel is of the opinion that the disputed domain name was registered and is being used in bad faith. The bad faith of the Respondent follows from the uncontested fact that the Respondent impersonated employees of the Complainant and even used the disputed domain name in requesting a third party to pay a large amount of money to the Respondent. This can only be seen as a very clear fraudulent behavior. Registering a domain name which is confusingly similar to the trademark of a complainant and subsequently using such domain name to impersonate employees of the Complainant in an attempt to commit fraud is a clear example of registration and use in bad faith. This Panel considers such behavior as an attempt to disrupt the business of the Complainant as well as an attempt to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s trademark.
The Panel therefore considers the requirement of paragraph 4(a)(iii) to be met.
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 <edelmanpr.net> be transferred to the Complainant.
Date: May 29, 2016