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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Total Temperature Instrumentation, Inc. v. Name Redacted

Case No. D2017-1471

1. The Parties

The Complainant is Total Temperature Instrumentation, Inc. of South Burlington, Vermont, United States of America ("United States"), represented by Gravel & Shea PC, United States.

The Respondent is Name Redacted.1

2. The Domain Name and Registrar

The disputed domain name <wwwinstrumart.com> is registered with Tucows Inc. (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 31, 2017. On August 1, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 8, 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 August 11, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 31, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 1, 2017.

The Center appointed William R. Towns as the sole panelist in this matter on September 14, 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, with headquarters in South Burlington, Vermont, is a supplier of test and measurement instruments. The Complainant has used the service mark INSTRUMART since as early as November 15, 2005, and is the owner of a United States trademark, registration No. 3,646,816 for INSTRUMART, issued by the United States Patent and Trademark Office ("USPTO") on June 30, 2009. The Complainant maintains a commercial website at "www.instrumart.com".

The disputed domain name was registered on July 21, 2017, according to the concerned Registrar's WhoIs records. On July 27, 2017, the disputed domain name was used to send emails impersonating the Complainant's credit manager to two companies in furtherance of a scheme to defraud both companies. Each of the companies being targeted by the fraudfeasor became suspicious and contacted the Complainant, at which time the attempted fraud came to light.

The Complainant's subsequent investigation disclosed that false or fictitious contact information was provided by the Respondent when registering the disputed domain name. The disputed domain previously pointed to an "eteamz" webpage with a 404 Object No Found Error message, but currently the disputed domain name does not resolve to an active website.

5. Parties' Contentions

A. Complainant

The Complainant submits that the disputed domain name <wwwinstrumart.com> is confusingly similar to the Complainant's INSTRUMART mark. The Complainant notes that the disputed domain name differs from the URL for the Complainant's website ("www.instrumart.com") only by the omission of the period between the "www" prefix and the Complainant's mark.

The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant maintains that the disputed domain name has not been used for a legitimate business purpose, but instead has been used in connection with multiple attempts to deceive and defraud third parties by impersonating the Complainant. Accordingly, the Complainant maintains that the Respondent registered and is using the disputed domain name in bad faith.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

A. Scope of the Policy

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of "the abusive registration of domain names", also known as "cybersquatting". Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term "cybersquatting" is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a 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.

Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) the 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 with respect to the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).

Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

B. Identical or Confusingly Similar

The Panel finds that the disputed domain name <wwwinstrumart.com> is confusingly similar to the Complainant's INSTRUMART mark, in which the Complainant has established rights through registration and use. In considering identity and confusing similarity, the first element of the Policy serves essentially as a standing requirement.2 The threshold inquiry under the first element of the Policy involves a relatively straightforward comparison between the complainant's trademark and the disputed domain name.

The Complainant's INSTRUMART mark is clearly recognizable in the disputed domain name.3 The addition of the prefix "www" in the disputed domain name does not serve to dispel the confusing similarity of the disputed domain name to the Complainant's mark, and may exacerbate the association as the Complainant, given the Complainant's "www.instrumart.com" website. The generic Top-Level Domain ("gTLD") generally is disregarded in determining identity or confusing similarity under paragraph 4(a)(i) of the Policy.4

Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been authorized to use the Complainant's mark. The record reflects that the Respondent registered and has used the disputed domain name to impersonate the Complainant in an attempt to defraud third parties.

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the domain name, even if he has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Respondent has not submitted a formal response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. The Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent's registration and use of the disputed domain name within any of the "safe harbors" of paragraph 4(c) of the Policy.

It is evident that the Respondent was aware of the Complainant and the Complainant's INSTRUMART mark when registering the disputed domain name. The record leaves no doubt that the Respondent registered the disputed domain name with the aim of exploiting and profiting from the Complainant's mark, through the impersonation of the Complainant in furtherance of a fraudulent scheme.

Having regard to all of the relevant circumstances in this case, and in the absence of any explanation by the Respondent, the Panel concludes that the Respondent has not used or demonstrated preparations to use the disputed domain name in connection with a bona fide offering of goods or services, and that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. Further, there is no indication that the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. In short, nothing in the record before the Panel supports a finding of the Respondent's rights or legitimate interests in the disputed domain name.

Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:

circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or

(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or

(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on its website or location.

The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.

For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent's conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. The Panel concludes that the Respondent was aware of the Complainant and had the Complainant's INSTRUMART mark in mind when registering the disputed domain name. It is clear from the record that the Respondent's motive in relation to the registration and use of the disputed domain name was to capitalize on the Complainant's trademark rights by creating a likelihood of confusion with the Complainant's mark, with the ultimate aim to profit illicitly therefrom.

That there is no active website at the disputed domain name does not preclude a finding of bad faith registration and use in the circumstances of this case. See Telstra Corporation Limited v. Nuclear Marshmallows, supra. Considerations that supported a finding of bad faith in Telstra are present in this case as well. The Complainant's INSTRUMART mark has been used by the Complainant since 2005, and was first registered in in June 2009. The Respondent clearly was aware of the Complainant and the Complainant's mark, and the Respondent's registration of the disputed domain name in the attendant circumstances smacks of opportunistic bad faith. There is no evidence of any actual or attempted good faith use of the disputed domain name by the Respondent. Indeed, based on the record in this proceeding, the Panel cannot envision any legitimate or good faith use to which the disputed domain name could be put by the Respondent.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

7. Decision

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 <wwwinstrumart.com> be transferred to the Complainant.

William R. Towns
Sole Panelist
Date: September 26, 2017

1 The Respondent has fraudulently impersonated one of the Complainant's employees, and provided false or fictitious contact information when registering the disputed domain name. There is a distinct possibility that the Respondent registered the disputed domain name in another person's name in order to conceal the Respondent's identity. In light of this, the Panel believes that no purpose can be served by including the named Respondent in this decision, and has therefore redacted the Respondent's name from the caption and body of this decision. The Panel has, however, attached as Annex 1 to this Decision an instruction to the Registrar regarding transfer of the disputed domain name that includes the named Respondent, and has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding. The Panel has further directed the Center, pursuant to paragraph 4(j) of the Policy and paragraph 16(b) of the Rules, that Annex 1 to this Decision shall not be published due to exceptional circumstances. See Banco Bradesco S.A. v. FAST-12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788.

2 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.7.

3 Id. When the relevant trademark is recognizable in the disputed domain name, the domain name normally will be considered confusingly similar to the mark for purposes of paragraph 4(a)(i) of the Policy.

4 See WIPO Overview 3.0, section 1.11.2 and cases cited therein.

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