WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ideal Industries, Inc. v. Amanda, Test Equipment Distributors LLC
Case No. D2017-0662
1. The Parties
The Complainant is Ideal Industries, Inc. of Sycamore, Illinois, United States of America ("United States"), represented by Greenberg Traurig, LLP, United States.
The Respondent is Amanda, Test Equipment Distributors LLC of Troy, Michigan, United States.
2. The Domain Name and Registrar
The disputed domain name <casellausa.net> (the "Disputed 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 March 31, 2017. On April 3, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 4, 2017, 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 proceedings commenced on April 6, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 26, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 27, 2017.
The Center appointed Lynda M. Braun as the sole panelist in this matter on May 2, 2017. 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 is the parent company of Casella CEL, Inc. ("Casella"), of Buffalo, New York, which was first established in 1799 in London, when many of the most important meteorological breakthroughs were made, including the invention of the world's first clinical thermometer. Since then, Casella has transitioned into the world of occupational and environmental monitoring equipment, with years of innovation in noise and dust measurement.
The Complainant acquired Casella in 2006 and Casella remains one of the leaders in the development, manufacture and supply of occupational health and environmental monitoring instrumentation. Casella has offices in the United States as well as a vast network of global operations and sells its products in at least 65 countries by a network of authorized distributors.
The Complainant owns multiple trademark registrations for CASELLA, including United States Registration No. 4,907,322, issued on March 1, 2016; Registration No. 2138618, issued on December 18, 2002 in the European Union; and Registration No. 1039403, issued on September 20, 2016 in New Zealand (the "CASELLA Mark").
The Complainant operates websites at "www.casellasolutions.com" and "www.casellausa.com". On the websites, the Complainant prominently uses its CASELLA Mark and features information regarding its various products and services.
The Disputed Domain Name was registered on September 2, 2016, long after the Complainant began to use the CASELLA Mark and after the CASELLA Mark was first registered in the United States with the United States Patent and Trademark Office. The Disputed Domain Name, which is passively held, currently resolves to an Internet page that states: "This site can't be reached. Casellausa.net's server DNS address could not be found. Did you mean http://casellausa.com/? Search Google for casella usa net."
The Respondent used the Disputed Domain Name in a phishing scheme to falsely claim an association with the Complainant by sending emails impersonating the Complainant and attempting to fraudulently obtain expensive items that would be charged to the Complainant. The Respondent also used the Disputed Domain Name to send emails to the Complainant's vendors from the email address [name].[lastname]@casellusa.net. The Respondent additionally used the Disputed Domain Name to submit a credit application to a power tool company, posing as the Complainant.
On September 16, 2016, the Complainant sent a letter to the company and address listed in the public WhoIs database, advising that the registration and use of the Disputed Domain Name was in bad faith and in violation of the Complainant's rights. The Complainant sent a similar letter to the Respondent at the email address under the Disputed Domain Name used to perpetrate the fraud. The President of the company replied, assuring the Complainant that it did not register the Disputed Domain Name. The Complainant never received a response from the [name].[lastname]@casellausa.net email address. On January 13, 2017, the Complainant's counsel submitted an inaccurate WhoIs complaint to ICANN. On January 23, 2017, ICANN advised the Complainant that the Disputed Domain Name was suspended by the Registrar.
5. Parties' Contentions
The following are the Complainant's contentions:
- The Disputed Domain Name is confusingly similar to the Complainant's trademark.
- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
- The Disputed Domain Name was registered and is being used in bad faith.
- The Respondent is using the Disputed Domain Name as part of a fraudulent phishing scheme to impersonate the Complainant and to fraudulently obtain expensive supplies to be charged to the Complainant.
- The Complainant seeks the transfer of the Disputed Domain Name from the Respondent in accordance with paragraph 4(i) of the Policy.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)):
(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) The Disputed Domain Name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
This element consists of two parts: first, does the Complainant have rights in a relevant trademark or trademarks and, second, is the Disputed Domain Name identical or confusingly similar to that trademark.
It is uncontroverted that the Complainant has established rights in the CASELLA Mark based on longstanding use as well as its trademark registrations for the CASELLA Mark in the United States and abroad. The Disputed Domain Name consists of the CASELLA Mark in its entirety along with the geographic abbreviation "usa", followed by the generic Top-Level Domain ("gTLD") ".net".
The Panel concludes that the Disputed Domain Name is confusingly similar to the CASELLA Mark.
First, the addition of the geographic abbreviation "usa" does not diminish the confusing similarity between the Disputed Domain Name and the Complainant's CASELLA Mark. See Gannett Co., Inc. v. Henry Chan, WIPO Case No. D2004-0117 (a domain name incorporating a well-known trademark combined with a geographically descriptive term is confusingly similar to the trademark); Inter-IKEA Systems B.V. v. Hoon Huh, WIPO Case No. D2000-0438 (the addition of the term "korea" in <ikea-korea.com> does not prevent the domain name from being confusingly similar to the Complainant's trademark).
Second, it is well established that a domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy despite the addition of a descriptive or generic word. See Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo, WIPO Case No. D2011-0795; see also Hoffmann-La Roche, Inc. v. Wei-Chun Hsia, WIPO Case No. D2008-0923.
Finally, the addition of a gTLD such as ".net" in a domain name may be technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182.
Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant.
B. Rights or Legitimate Interests
Under the Policy, a complainant may make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name at issue. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied 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 Complainant has not authorized, licensed, or otherwise permitted the Respondent to use its CASELLA Mark. The Complainant does not have any type of business relationship with the Respondent, nor is the Respondent making a legitimate noncommercial or fair use of the Disputed Domain Name. Instead, the Panel finds that the Respondent was improperly using the Disputed Domain Name as part of a phishing scheme in which the Respondent sent emails impersonating the Complainant using the Disputed Domain Name as an email suffix to create the impression that the emails were being sent by the Complainant. Such a phishing scheme cannot be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use of the Disputed Domain Name. See Demco, Inc. v. Adminprivateregcontact a/k/a Demco USA, WIPO Case No. D2011-1516 (the complainant established a prima facie case that the respondent lacked any legitimate rights or interests in the disputed domain name because the respondent used an email address linked to the disputed domain name in order to impersonate the complainant); see also Graybar Services Inc. v. Graybar Elec, Grayberinc Lawrenge, WIPO Case No. D2009-1017 (respondent did not establish any legitimate rights or interests in the disputed domain name where he impersonated the Complainant and created false emails pretending that they emanated from the Complainant).
Based on the foregoing, the Complainant has made out a prima facie case and the Respondent has not demonstrated any rights or legitimate interests in respect of the Disputed Domain Name.
Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant.
C. Registered and Used in Bad Faith
The Panel finds that based on the record, the Complainant has demonstrated the Respondent's bad faith registration and use of the Disputed Domain Name pursuant to paragraph 4(a)(iii) of the Policy.
First, the Respondent's phishing scheme to impersonate the Complainant by creating an email address incorporating the Disputed Domain Name and to send false purchase orders to be charged to the Complainant evidences a clear intent to disrupt the Complainant's business, deceive individuals, and trade off the Complainant's goodwill by creating an unauthorized association between the Respondent and the Complainant's CASELLA Mark. See Banco Bradesco S.A. v. Fernando Camacho Bohm, WIPO Case No. D2010-1552. Such conduct is emblematic of the Respondent's bad faith registration and use of the Disputed Domain Name.
Numerous UDRP panels have found that email-based phishing schemes that use a complainant's trademark in the disputed domain name are evidence of bad faith. See, e.g., DeLaval Holding AB v. Registration Private, Domains By Proxy LLL / Craig Kennedy, WIPO Case No. D2015-2135; Petróleo Brasileiro S.A. - Petrobras v. AK Bright, WIPO Case No. D2013-2063 (considering the reputation of the complainant and the emails sent by the respondent using the complainant's trademark, the respondent is held to have registered and used the disputed domain name in bad faith).
Second, the Respondent's registration of the Disputed Domain Name that is confusingly similar to the Complainant's well-known registered trademark is sufficient evidence of bad faith registration and use. See Ebay Inc. v. Wangming, WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (use of a name connected with such a well-known service and product by someone with no connection to the service and product suggests opportunistic bad faith). Based on the circumstances here, the Respondent registered and used the Disputed Domain Name in bad faith in an attempt to create a likelihood of confusion with the Complainant's CASELLA Mark.
Third, the Panel finds that the Respondent had actual knowledge of the Complainant's rights in its widely-used CASELLA Mark when registering the Disputed Domain Name. The Respondent's actual knowledge of the Complainants' rights can be inferred from the Respondent's use of the CASELLA Mark to target Complainant in its fraudulent scheme by creating the [name].[lastname]@casellausa.net email address to create fraudulent purchase orders and false applications for credit in the Complainant's name.
Fourth, that the Disputed Domain Name is passively held does not prevent a finding of bad faith. It has long been held in UDRP decisions that the passive holding of a domain name that incorporates a well-known trademark without a legitimate Internet purpose may indicate that the disputed domain name is being used in bad faith under paragraph 4(a)(iii) of the Policy. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Moreover, providing false WhoIs information to a registrar is another indication of the Respondent's bad faith. See AIDA Cruises – German Branch of Costa Crociere S.p.A. v. Birol Atlihan, WIPO Case No. D2013-2096 (finding bad faith use and registration where the registrant provided false WhoIs information and failed to respond to the complainant's demand letter.)
Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant.
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, <casellausa.net>, be transferred to the Complainant.
Lynda M. Braun
Date: May 4, 2017