WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Schaerer AG v. matts, marks
Case No. D2016-1909
1. The Parties
Complainant is Schaerer AG of Zuchwil, Switzerland, represented by Boehmert & Boehmert, Germany.
Respondent is matts, marks of Singapore.
2. The Domain Name and Registrar
The disputed domain name is <schaerar.com> which 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 September 19, 2016. On September 19, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 20, 2016, 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 21, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 11, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 12, 2016.
The Center appointed Gerardo Saavedra as the sole panelist in this matter on October 19, 2016. This Panel finds that it was properly constituted. This 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
Complainant is a manufacturer of coffee machines. Complainant has rights over the SCHAERER trademark for which it holds international trademark registration No. 842914, registered on February 8, 2005, in classes 11 and 41.
The disputed domain name was created on April 26, 2016. The disputed domain name does not resolve to any active website. As detailed below, the disputed domain name appears to have been used in connection with a fraudulent email scheme.
5. Parties’ Contentions
Complainant’s assertions may be summarized as follows.
Complainant was founded in 1892 in Switzerland, and was engaged in the manufacture of medical equipment and sterilization devices. Since 1924 Complainant has been producing coffee machines, and since 2006 Complainant forms part of WMF AG, one the world’s leading manufacturers of cutlery, cookware, tableware and giftware, and other equipment for the kitchen. Complainant distributes its products through its SCHAERER trademark, with a special focus on professional coffee machines for hotels, restaurants, coffee shops and other commercial customers worldwide. In 2015 Complainant had a consolidated revenue of EUR 139 million.
Complainant has prior rights in the SCHAERER trademark which precede Respondent’s registration of the disputed domain name by many years. Complainant also owns the domain name <schaerer.com> which is used to present Complainant’s website as well as for email addresses of all of Complainant’s personnel.
Respondent is allegedly a person named “matts” within an organization named “marks” in Singapore. Those personal details seem false, and an Internet search for Respondent’s street address in Singapore provided no results.
The disputed domain name is not linked to any content. However, the disputed domain name is used as part of email addresses to simulate emails originating from Complainant’s sales personnel. Complainant submits evidence of how these emails seek to fraudulently redirect funds of one of Complainant’s customers to a false bank account.
On April 26, 2016, one of Complainant’s sales people provided a proforma invoice to a customer using an email address ending in “@schaerer.com”. This email communication must somehow have been intercepted: in the follow-up emails of April 26, 2016, the email of Complainant’s sales person had been taken up by another person pretending to be the original sales person by using a corresponding email address using the disputed domain name in an email address “@schaerar.com”. The customer did not recognize this slight modification and was tricked into paying a substantial amount to a bank account which is in no way connected to Complainant. Respondent further communicated with Complainant’s customer pretending to be Complainant’s sales person for months and tried to trick such customer into several payments.
There is a high degree of similarity between the disputed domain name and Complainant’s trademark SCHAERER. By using email addresses containing the disputed domain name, Respondent causes a likelihood of confusion to Internet users who are likely to be deceived about the true origin and source of such email communications. A customer visiting a website linked to the disputed domain name or receiving an email communication from an email address ending in “@schaerar.com” will likely expect Complainant to be behind such emails. The risk of confusion between Complainant’s trademark and the disputed domain name is ultimately increased by pretending to follow-up to communications between Complainant and its customers.
Respondent is not connected to Complainant in any way. Complainant has not authorized, licensed, or permitted Respondent to register or use the disputed domain name or to use Complainant’s trademark or a similar mark. As Respondent uses the disputed domain name for fraudulent purposes, there cannot be a legitimate interest in using the disputed domain name. There is therefore a prima facie case that Respondent has no rights or legitimate interest in the disputed domain name.
Respondent registered and used the disputed domain name primarily for the purpose of tricking Complainant’s customers into commissioning payments into false bank accounts held by Respondent or its accomplices. It is well established that the registration and use of a domain name for a fraudulent purpose, such as perpetrating phishing attacks and/or other forms of Internet fraud, must be considered a bad faith conduct in the meaning of paragraph 4(a)(iii) of the Policy.
Further, it seems that Respondent did not provide its true identity and contact details when registering the disputed domain name. According to a significant number of decisions under the Policy, the use of a false identity for registering a domain name in itself might be an important indicator to establish the bad faith element.
Complainant requests that the disputed domain name be transferred to Complainant.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
The lack of response from Respondent does not automatically result in a favorable decision for Complainant (see Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465). The burden for Complainant, under paragraph 4(a) of the Policy, is to show: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
It is undisputed that Complainant has rights in the SCHAERER trademark.
The disputed domain name incorporates almost identically such Complainant’s trademark, except for a letter “e” which is replaced with a letter “a” in the disputed domain name. Such variation is not enough to avoid confusing similarity.
Thus this Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark.
B. Rights or Legitimate Interests
Complainant has alleged and Respondent has failed to deny that Respondent has no rights or legitimate interests in respect of the disputed domain name.
There is no evidence in the case file of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a possible right to or legitimate interest in the disputed domain name by Respondent, but rather the opposite may be validly inferred.
Complainant asserts that it has no relationship with Respondent, and that it has not authorized Respondent to register the disputed domain name or use its SCHAERER trademark or a similar mark. Complainant contends that Respondent is using the disputed domain name as an email address for sending emails to Complainant’s customers as if such email communications were sent by Complainant’s personnel in order to deceive Complainant’s customers. The evidence in the case file shows that such email communications convey the impression that the sender is Complainant’s personnel, as if trying to impersonate Complainant. Such use demonstrates neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name.1
Based on the aforesaid, this Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
Complainant contends that Respondent has registered and used the disputed domain name in bad faith.
The evidence in the case file leads this Panel to infer that Respondent’s choice of the disputed domain name was deliberate with the intention of impersonating Complainant to deceive Complainant’s customers. The fact that the disputed domain name incorporates Complainant’s SCHAERER trademark with just a minor typographical variation (a practice commonly known as typosquatting)2 , coupled with the email communications sent to a Complainant’s customer, lead to the conclusion that Respondent registered and used the disputed domain name in bad faith.
As set forth in other UDRP decisions, the lack of an active website associated to the disputed domain name does not prevent a finding of bad faith. The use of the disputed domain name as an email address for the deceitful obtention of a payment by trying to impersonate Complainant by using a domain name confusingly similar to Complainant’s trademark is enough evidence of bad faith.3
In light of the above, this Panel finds that Complainant has satisfied 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, this Panel orders that the disputed domain name <schaerar.com> be transferred to Complainant.
Date: November 1, 2016
1 See Olivetti S.p.A v. mez inc, WIPO Case No. D2015-1934: “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”.
2 See Amazon.com, Inc. v. Steven Newman a/k/a Jill Wasserstein a/k/a Pluto Newman, WIPO Case No. D2006-0517: “the practice of typosquatting, in and of itself, constitutes bad faith registration”. See also Go Daddy Software, Inc. v. Daniel Hadani, WIPO Case No. D2002-0568: “Typosquatting is virtually per se registration and use in bad faith”.
3 See BinckBank N.V. v. Helo Holdings LTD, WIPO Case No. DNL2010-0014: “Respondent in the present case apparently targeted Dutch students by pretending to be the Complainant and sending them an offer from an e-mail address associated with the Domain Name [...] Phishing activities pose a severe threat to customers, trademark holders and third parties”. See also Desarrollo Marina Vallarta, S.A. de C.V. / Daniel Jesus Chavez Moran v. Karla Vallejo, WIPO Case No. D2013-0962 and Tetra Laval Holdings & Finance S.A. v. Harry Bradley, Harry B. Holdings Ltd., WIPO Case No. D2016-0616.