WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Intersystems Corporation v. Contact Privacy Inc. / Maree F Turner
Case No. D2017-1383
1. The Parties
Complainant is Intersystems Corporation of Cambridge, Massachusetts, United States of America ("United States"), represented by Morrison & Foerster, LLP, United States.
Respondent is Contact Privacy Inc. of Toronto, Ontario, Canada / Maree F Turner of Montebello, California, United States.
2. The Domain Name and Registrar
The disputed domain name <intersysterns.com> is registered with Google Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 19, 2017. On July 19, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 21, 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. The Center sent an email communication to the Complainant on July 24, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on July 26, 2017.
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 Respondent of the Complaint, and the proceedings commenced on July 28, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 17, 2017. The Respondent did not submit any response. Accordingly, the Center notified Respondent's default on August 18, 2017.
The Center appointed Andrew Mansfield as the sole panelist in this matter on September 4, 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
Complainant is a leading global technology company focusing on enterprise connectivity, information exchange, and patient management software for businesses and government entities in the healthcare field. It offers data platforms, data management systems, enterprise architecture software, health information and exchange software, and patient and practice management software under its numerous INTERSYSTEMS marks, including INTESYSTEMS, INTERSYSTEMS CACHÉ, INTERSYSTEMS ENSEMBLE, INTERSYSTEMS HEALTHSHARE, and INTERSYSTEMS TASKCARE. Since at least 1995, Complainant has operated a website at the domain name <intersystems.com> in order to promote its products.
Complainant owns at least seven current trademark registrations in the United States in International Class 9 for computer software and a host of other health related management programs (see, e.g., United States Patent and Trademark Office Registration Number 1,160,437 for INTERSYSTEMS, registered on July 7, 1981). The Complainant also provides evidence that it owns thirty-seven trade mark registrations in Argentina, Australia, Brazil, Chile, China, Czech Republic, the European Union, India, Israel, New Zealand, the Russian Federation, Switzerland and the United Arab Emirates.
Complainant provides evidence that an employee of Complainant registered the domain name <intersystems.com> which resolves to the Complainant's website at "www.intersystems.com" on March 1, 1995.
The disputed domain name is <intersysterns.com>. According to WhoIs records, the disputed domain name was registered on March 9, 2017. The Complainant submitted evidence showing that the disputed domain name was inactive at the time of filing of the Complaint and that it was used in connection with a fraudulent email scheme.
5. Parties' Contentions
Complainant asserts that the disputed domain name is confusingly similar to the INTERSYSTEMS trademark and the <intersystems.com> domain name. The disputed domain name substitutes the single letter "m" from Complainant's trademark with the letters "rn". Complainant indicates this is an attempt to capitalize on the confusion created by an apparent typographical error. Complainant labels this change in lettering as "typosquatting". Despite the change in the letters, the disputed domain name, Complainant argues, is still confusingly similar to Complainant's trademarks under paragraph 4(a)(i) of the Policy.
Complainant also argues that Respondent has no rights to or legitimate interests in the disputed domain name. Complainant indicates on information and belief that Respondent has not made use of the disputed domain name in connection with a bona fide offering of goods or services, Respondent is not commonly known by the disputed domain name, and Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
Complainant also alleges that the disputed domain name was registered and is being used in bad faith. Complainant asserts that Respondent knew of its well-known trademark and registered it to use in email fishing attacks against Complainant's customers, taking advantage of the similarity between the disputed domain name and Complainant's INTERYSTEMS trademark. For example, on numerous occasions, Complainant's customers received notices to pay licensing fees for Complainant's products in an email that appeared, to a casual observer, to come from Complainant. The emails in question actually bore a return address "@intersysterns.com" and not "@intersystems.com". Complainant believes these scam emails are designed to fraudulently induce Complainant's customers to wire funds to Respondent. In some cases, according to Complainant, the payment amounts falsely requested exceeded USD 130,000. This use of the disputed domain name has been made without Complainant's permission and Complainant indicates there is no purpose other than to illegally profit from consumers who mistakenly believe Complainant sent the payment request. These actions, according to Complainant, evidence registration of the disputed domain name in bad faith.
The Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed in this administrative proceeding Complainant must prove that: (i) the disputed domain name is identical or confusingly similar to the trademark or service mark of Complainant; (ii) Respondent has no rights or legitimate interests in respect to the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith.
These elements are discussed in turn below. In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
A. Identical or Confusingly Similar
Complainant has shown that it owns a considerable number of trademark registrations in a wide variety of jurisdictions for the word mark INTERSYSTEMS, as well as various design marks related to this word mark.
As Complainant discusses, a domain name which consists of a common, obvious, or intentional misspelling of a trademark is likely to be confusingly similar to the relevant mark. In this dispute, the disputed domain name contains sufficiently identifiable facets of the relevant mark. See Sanofi, Genzyme Corporation v. Domain Privacy, WIPO Case No. D2016-1193 for an overview of this consensus view.
Given the above, the Panel finds that the disputed domain name is confusingly similar to Complainant's trademark.
The first element of the Policy has, therefore, been met.
B. Rights or Legitimate Interests
The Panel does not lightly or automatically find that Respondent has no rights or legitimate interests. Even when a respondent fails to participate in a UDRP dispute, the complainant is required to make out at least a prima facie case that the respondent lacks rights or legitimate interests. Once such a prima facie case is made, the burden shifts to the respondent to demonstrate rights or legitimate interests under the Policy. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is deemed to have satisfied the second element of the Policy.
Complainant has made out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Complainant indicates Respondent was not licensed or authorized to use the trademark at issue or any variation thereof. Respondent has not, as far as Complainant can find, been commonly known by a name identical to or similar to the disputed domain name. Finally, the current use alleged by Complainant is not a legitimate noncommercial or fair use of the trademark. Respondent has not come forward with any appropriate allegations or evidence in this regard. Based on the evidence presented, the Panel concludes that Respondent lacks rights or legitimate interests in the disputed domain name.
The second element of the Policy has, therefore, been met.
C. Registered and Used in Bad Faith
The Policy provides guidance on activities that might be considered evidence of bad faith registration and use of a domain name. That guidance is found in paragraph 4(b) of the Policy. Circumstances are described in paragraph 4(b) that might lead a panel to conclude that the registration and use of a disputed domain name is in bad faith. The description of the circumstances are addressed to the respondent. They are:
"(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."
For all the below reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith. Accordingly, the third condition of paragraph 4(a) of the Policy has been fulfilled.
The Panel agrees that the only reason that it can deduce the disputed domain name was registered and is being used is to confuse the recipients of emails bearing an email address ending in the disputed domain name. The confusion arises when recipients mistakenly believe they have received an email from Complainant. Recipients appear to be subjects of an effort to get them to send funds to Respondent believing they are sending the funds to Complainant. Previous UDRP panels have found such conduct to constitute bad faith registration and use. See, e.g., VMWARE, Inc. v. Whois Agent, Whois Privacy Protection Service, Inc./ Raymond Morgan, WIPO Case No. D2016-1629.
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 <intersysterns.com> be transferred to the Complainant.
Date: September 18, 2017