WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Schweitzer Engineering Laboratories, Inc. / Rick Edge v. WhoisGuard Protected, WhoisGuard, Inc. / Everything Gold
Case No. D2017-1023
1. The Parties
The Complainant is Schweitzer Engineering Laboratories, Inc. / Rick Edge of Pullman, Washington, United States of America (“United States”), represented by Phillips Ryther & Winchester, United States.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama City, Panama / Everything Gold of Owerri, Nigeria, self-represented.
2. The Domain Name and Registrar
The disputed domain name <selinc.site> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 24, 2017. On May 26, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 26, 2017, 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. On May 31, 2017, the Complainant filed an amendment to the Complaint. The Center sent an email communication to the Complainant on June 12, 2017 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 June 14, 2017.
The Center verified that the Complaint together with the amendment to the Complaint and 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 June 14, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 4, 2017. On June 12, 2017, the Respondent submitted two informal email communications, however it did not submit any formal response. Accordingly, the Center notified the Parties that it would proceed to the Panel appointment.
The Center appointed James Bridgeman as the sole panelist in this matter on July 7, 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 a corporation engaged in power management, protection, and automation services, founded in 1982 with headquarters in Washington, United States. As of December 2016, the Complainant had operations in 24 countries and 4,600 employees worldwide, supporting customers in 150 countries.
The Complainant is the owner of United States trademark registration SEL, registration number 1,525,339 which was registered on February 21, 1989 for goods in international class 9. The Complainant has continuously used the SEL trademark in connection with the promotion, advertising and sale of its products and services since at least as early as 1984.
The Complainant is also the owner of the domain name <selinc.com>, registered on January 26, 1996 which resolves to the Complainant’s website.
The disputed domain name <selinc.site> was registered on May 14, 2017 using a private registration service.
In the absence of any substantive Response, there is no information available about the Respondent except that which is in the Registrar’s WhoIs, the information provided by the Registrar and the Complaint.
At the time that the Complaint was initiated the disputed domain name resolved to a web page which contained click-through links advertising for third party goods and services. Currently the disputed domain name does not resolve to an active web page.
5. Parties’ Contentions
Relying on its abovementioned registered trademarks and its rights at common law acquired through long use of the SEL mark since 1984, the Complainant submits that the disputed domain name is confusingly similar to the SEL mark in which it has rights arguing that the disputed domain name wholly incorporates the Complainant’s registered SEL mark in combination with the commonplace abbreviation “inc”. The Complainant asks this Panel to note that the Complainant’s official name is also typically abbreviated to SEL Inc.
The Complainant submits that prior panels have found that inclusion of the common abbreviation “inc” in combination with a trademark in a disputed domain name does not distinguish the domain name from a complainant’s trademark. Citing the decisions in Arkema France v. Chemistry, WIPO Case No. D2013-0658; CACEIS (Société Anonyme) v. Whois Privacy Corp., WIPO Case No. D2016-0014; Carrefour v. XL Liu, WIPO Case No. D2015-1429; Halliburton Energy Services, Inc. v. Domains By Proxy, LLC / “Brian Ware”, halliburtoninc, WIPOCase No. D2015-2021.
Furthermore the Complainant submits that it is well-established that the generic Top-Level Domain (“gTLD”) extension does not distinguish the disputed domain name from the Complainant’s trademark.
The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name because: the Respondent is not commonly known by the disputed domain name; the Complainant has not authorised the Respondent to use the SEL trademark in any way; the Respondent has no affiliation with the Complainant.
Furthermore the Complainant alleges that he Respondent has never made any bona fide use of the disputed domain name. The Respondent uses the disputed domain name in connection with a web page which has links to advertisements for goods and services competing with the Complainant and which forwards traffic to the Complainant’s official website creating the false impression that the Respondent’s website has some legitimate connection with the Complainant.
The Complainant submits that the disputed domain name was registered and has been used in bad faith. The Complainant states that it learned of the Respondent’s registration of the disputed domain name on May 14, 2017, and alleges that on that date a fraudulent email scheme was initiated, intended to divert funds from one of the Complainant’s clients to an unknown bank account located in the Czech Republic. The Complainant arranged for an investigation of certain emails to be carried out and concluded that the disputed domain name was being used to set up email accounts that mimicked the Complainant’s employees’ email addresses to intercept emails between the Complainant and a third party without being detected.
Furthermore the Complainant alleges that the disputed domain name has been used to divert Internet traffic to the Complainant’s official website to create the impression that the disputed domain name was legitimately connected to the Complainant. The Complainant submits that in these circumstances the Respondent’s bad faith is irrefutably demonstrated by the Respondent’s use of the disputed domain name to conduct a phishing scam. In this regard the Complainant cites the finding of the panel in Accor v. Sangho Heo / Contact Privacy Inc., WIPO Case No. D2014-1471 (finding “allegation of phishing, and the evidence submitted in support of phishing, combined with the likelihood of confusion, is sufficient evidence of bad faith”).
The Complainant submits that its registered trademark was well known when the disputed domain name was registered; by using a privacy service the registrant’s identity and contact information has been wilfully obfuscated; the registrant was aware of the Complainant when the disputed domain name was registered; and that the Respondent is aware of the Complainant and its reputation is evidenced by the fact that the disputed domain name has been used to redirect web traffic to the Complainant’s official website.
Furthermore the Complainant complains that the Respondent has used the disputed domain name to impersonate the Complainant by arranging that the addresses displayed in emails appear as if the communication was coming from the Complainant’s <selinc.com> email address when in fact they are being sent by the Respondent.
At the time that the Complaint was initiated the disputed domain name resolved to a web page which contained click-through links advertising for goods and services that either directly and indirectly compete with the Complainant’s goods and services.
The Complainant furthermore submits that on May 25, 2017 a person claiming to be Respondent and registrant of the disputed domain name sent an email to the Complainant denying all wrong doing and offering to sell the disputed domain name to the Complainant for USD 2,000, which the Complainant submits is an amount that is well in excess of the out-of-pocket registration expenses. On May 25, 2017 the Respondent sent a second email to the Complainant, again offering to sell the disputed domain name at a reduced price of USD 1,000. The Complainant submits that it has been recognized by prior UDRP panels that offers to sell domain names incorporating another’s trademarks to the owner of said trademarks for prices in gross excess of the respondent’s out-of-pocket registration costs constitutes bad faith registration and cybersquatting, regardless of how, or by whom, discussions regarding transfer were initiated. See Universal Spheres, Inc. v. BusinessService Ltd., Case No. FA0607000746952 (NAF Sept. 6, 2006) (holding “letter to the Complainant promising a transfer in exchange for USD 450 is ample proof” of bad faith and finding such “sum is a multiple of the cost of registering a domain name”); see also Playboy Enters. Intern’l, Inc. v. Vileshome, WIPO D2001-1082 (ordering transfer of <playboymarket.com>and <playboymarket.net>after finding registrant responded to Playboy’s demand letter with offer to sell domain names “for a price greatly exceeding the direct costs of their registration”); McMullan Bros., Ltd. v. Web Names Ltd., WIPO Case No. D2004-0078 (holding “fact that it is the Complainant who first approached the Respondent seeking transfer of the Domain Name” did not preclude finding of intent to extort and explaining cases “abound in which bad faith registration and use has been found in circumstances where it was the Complainant who made the first approach”); Magnum Piering, Inc. v. The Mudjackers, WIPO Case No. D2000-1525 (refusing to exclude offer to sell made following receipt of demand letter and explaining “[c]ybersquatters often wait until a trademark owner comes calling”).
The Complainant further submits that it is not possible to conceive of any plausible use of the disputed domain name by the Respondent which would not be illegitimate and requests that the disputed domain name should be transferred to it.
The Respondent did not submit a formal response however on June 12 the Center received an email purporting to come from Oryn Light which simply asked: “What case do you have against this domain? The domain is forsale (sic) and it has not been used for any fraudulent act. Why is it being reported.?”. Minutes later the Center received a further email from the same source which stated: “What case do you have against this domain. The domain has only be (sic) bought for a resell and was lastly put for sale before it was locked. Now am getting notification by email that you are filing a report. What exactly is the report and how was the domain used against one”.
6. Discussion and Findings
Paragraph 4 of the Policy requires the Complainant to establish that:
(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 has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has provided convincing evidence that it has rights in the SEL trademark acquired through its above-mentioned United States trademark registration and its long and extensive use of the mark in business since as early as 1984.
The disputed domain name consists of the Complainant’s SEL mark together with the word element “inc” and the gTLD extension <.site>.
The mark “sel” is the dominant and distinctive element in the disputed domain name. For the purposes of comparison with the mark the gTLD extension may be ignored in this case. The element consisting of the letters “inc” would commonly be read to be part of the name of a corporation and does not serve to distinguish the disputed domain name in any way. In fact because the Complainant owns and uses the domain name <selinc.com>, which it registered on January 26, 1996 and which resolves to the Complainant’s website the combination of the “inc” element with the Complainant’s trademark would add to the confusingly similar character of the disputed domain name.
In the circumstances this Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark and the Complainant has succeeded in the first element of the test in paragraph 4 of the Policy.
B. Rights or Legitimate Interests
The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interest in the disputed domain name. It has submitted that the Respondent is not commonly known by the disputed domain name, has not been permitted to use the domain name or the SEL mark by the Complainant, has not used the disputed domain name for any legitimate purpose but rather has used the disputed domain name in connection with a webpage that contains links to third party websites offering goods and services that compete with the Complainant. Furthermore there is evidence that the disputed domain name has been used for fraudulent purposes.
In those circumstances the burden of production shifts to the Respondent. The Respondent has failed to discharge this burden and on the evidence this Panel finds that on the balance of probabilities the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant has therefore succeeded in the second element of the test in paragraph 4 of the Policy also.
C. Registered and Used in Bad Faith
On the evidence, this Panel finds that on the balance of probabilities the disputed domain name was chosen and registered and is being used because of its confusing similarity with the Complainant’s mark and the Complainant’s <selinc.com> domain name which is used in connection with the Complainant’s official website.
Because of the unique combination of the two elements “sel” and “inc” in the disputed domain name it is improbable that the registrant was not aware of the Complainant, its SEL mark and its <selinc.com> domain name when the disputed domain name was chosen and registered.
On the evidence the Respondent chose, registered and is using the disputed domain name in order to take predatory advantage of the Complainant’s reputation in the SEL mark and thereby has intentionally attempted to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant's SEL trademark as to the source, sponsorship, affiliation, or endorsement of the web site to which the disputed domain name resolves. On the balance of probabilities the Respondent is receiving pay-per-click income from the advertisements on the website to which the disputed domain name resolves without the permission of the Complainant. Furthermore the Respondent has endeavored to create the illusion that there is some relationship between the Complainant and Respondent’s website by arranging that email sent via the site is directed to the Complainant.
The Respondent’s offers to sell the disputed domain name to the Complainant, for sums in excess of the documented out-of-pocket costs directly related to the domain name is further evidence of that the disputed domain name was registered and is being used in bad faith.
In the circumstances, it is not necessary for this Panel to determine whether the Respondent has engaged in fraudulent activity using the disputed domain name as alleged.
The Complainant has therefore succeeded in the third and final element of the test in paragraph 4 of the Policy and is entitled to succeed in this Complaint.
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 <selinc.site> be transferred to the Complainant.
Date: July 13, 2017