WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Alfa Laval Corporate AB v. Contact Privacy Inc. Customer 0148561631 / Erin Dickey, EDickey Ltd
Case No. D2017-1617
1. The Parties
The Complainant is Alfa Laval Corporate AB of Lund, Sweden, represented by Advokatbyrån Gulliksson AB, Sweden.
The Respondent is Contact Privacy Inc. Customer 0148561631 of Toronto, Canada / Erin Dickey, EDickey Ltd of Portland, United States of America ("US").
2. The Domain Name and Registrar
The disputed domain name <alfelaval.com> ("Domain Name") is registered with Tucows Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 18, 2017. On August 18, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 18, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 22, 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 amendment to the Complaint on August 24, 2017.
The Center verified that the Complaint together with the amendment to 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 28, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 17, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 18, 2017.
The Center appointed Tee Jim Tan, S.C. as the sole panelist in this matter on October 10, 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 limited liability company incorporated under the laws of Sweden, specializing in heat transfer, centrifugal separation and gas and fluid handling products and services across many industries, including the marine environment, food and energy sectors. It is the proprietor of multiple trademark registrations as exhibited in the Complaint for the word mark ALFA LAVAL (the "Mark") (for example, European Union Trade Mark No. 003481702, with a registration date of March 3, 2005). The Mark is registered in a number of territories, including Europe and the United States.
The Complainant also owns multiple domain names incorporating the Mark, such as <alfalaval.com>, <alfalaval.us> and <alfalaval.co.uk>.
The Domain Name was registered on June 23, 2017, and does not point to an active website.
5. Parties' Contentions
The Complainant contends as follows:
(1) It has strong rights in the Mark because:
(a) It has used the Mark extensively for more than 100 years;
(b) It has registered and used multiple domain names containing the Mark, e.g. <alfalaval.com>, <alfalaval.us> and <alfalaval.co.uk>; and
(c) Survey evidence indicates that the Mark is well-known.
(2) The Domain Name is confusingly similar to the Mark as the only difference between the Domain Name and the Mark is the substitution of the second letter "a" with an "e" and there remains a high degree of similarity between the Domain Name and the Mark, especially aurally and visually;
(3) The Respondent has no rights or legitimate interests in respect of the Domain Name because:
(a) there is no evidence of any offering of goods or services under the Domain Name or any evidence of legitimate or fair use of the Domain Name by the Respondent;
(b) there have been complaints by the Complainant's customers that the Domain Name has been used under <@alfelevel.com> for phishing activities, including the impersonation of the Complainant for fraudulent purposes;
(c) the Domain Name has not been used for any website homepage nor has there been any sign of any historic use; and
(4) The Domain Name was registered and is being used in bad faith because:
(a) it is passively held and evidently registered to take unfair and illegitimate advantage of the Mark;
(b) the Respondent has impersonated the Complainant in order to induce the Complainant's customers to make payments to the Respondent's account; and
(c) the Respondent is using a domain privacy service.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements in order to succeed in its Complaint:
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
In accordance with paragraph 14(a) of the Rules, if the Respondent does not submit a Response, the Panel shall, in the absence of exceptional circumstances, decide the dispute based on the Complaint.
A. Identical or Confusingly Similar
The Complainant has furnished evidence of its trademark registrations concerning the Mark and survey evidence of the well-known nature of the Mark. Based on the evidence provided, the Panel is satisfied that the Complainant has rights in the Mark and that the Mark is well known.
At the outset, the Panel notes that the consensus view in previous UDRP panel decisions is that for the purposes of determining confusing similarity under paragraph 4(a) of the Policy, the generic Top-Level Domain ("gTLD") suffix (".com" in this particular instance) should be disregarded except where the applicable top-level suffix itself forms part of the trademark in question. The Panel agrees with this view as the exception does not apply in the present case.
Past UDRP panel decisions also suggest that a domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") at Section 1.9).
For instance, in Sanofi v Domains by Proxy, LLC / domain admin, WIPO Case No. D2013-0368 ("Sanofi"), it was held that the disputed domain name, <sanifi.com>, was confusingly similar to the SANOFI mark because the "only difference between the SANOFI mark and the domain name was a substitution of the original letter 'o' by an 'i' in the word 'sanofi'".
The present facts are materially similar to those in Sanofi in that only one letter of the Mark (the second "a") has been substituted in the Domain Name (with the letter "e"). As the Complainant has contended, this minor misspelling does not substantially alter the Domain Name in relation to the Mark. The Domain Name contains sufficiently recognizable aspects of the Mark, and there remains a very high degree of similarity between the Domain Name and the Mark, especially aurally and visually. Accordingly, the Panel is satisfied that the Domain Name is confusingly similar to the Mark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out the following non-exhaustive list of circumstances which, if proven, will lead to a finding that the Respondent has rights or legitimate interests in the Domain Name:
(i) The Respondent is able to demonstrate its use of, or its preparations to use, the Domain Name or a name corresponding to the 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 it has not acquired any trademark or service marks rights therein; or
(iii) The Respondent makes 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.
The Panel agrees with the UDRP panel in Belupo d.d. v. WACHEM d.o.o,, WIPO Case No. D2004-0110 that, given the "often impossible task of proving the negative", the Complainant is generally only required to establish a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name (see WIPO Overview 3.0 at Section 2.1).
The Panel notes that there has been no evidence to prove any of the circumstances listed in (i) to (iii) above
In fact, the Complainant's case is further strengthened by the fact that the only evidence of the Respondent's use of the Domain Name strongly suggests that such use was illegal. The Complainant has furnished evidence that the Respondent had used email addresses incorporating the Domain Name (namely, […]@alfelaval.com, […]@alfelaval.com, and […]@alfelaval.com) to impersonate the Complainant through emails to one of the Complainant's customers, by:
(i) including the Complainant's website, "www.alfalaval.com", and "Alfa Laval Ltd (UK)" in the signatures of the emails sent to one of the Complainant's customers,
(ii) referencing "Alfa Laval Limited" in the false banking details provided to one of the Complainant's customers on June 29, 2017; and
(iii) using the Mark in the Respondent's letterhead.
The Panel notes that in the Respondent's email correspondence with the Complainant's customer, the Respondent had requested the customer to make payments to the Respondent's account by impersonating the Complainant.
It is trite that the use of a domain name for illegal activity, including phishing, impersonation, and/or passing off, does not confer rights or legitimate interests on a respondent (see WIPO Overview 3.0, Section 2.13.1).
The above establishes the prima facie case required and the burden of establishing rights or legitimate interests thus shifts to the Respondent to rebut this prima facie case.
The Respondent has elected not to submit a response and thus has not rebutted the Complainant's prima facie case.
Accordingly, this Panel is satisfied that the requirement in paragraph 4(a)(ii) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy outlines four non-exclusive scenarios that evidence bad faith in the registration and use of a domain name. One of these scenarios is the use of the domain name by the Respondent 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 the respondent's website or location.
In Starwood Hotels & Resorts Worldwide, Inc., Sheraton LLC, Sheraton International Inc. v. Isaac Isaac, WIPO Case No. D2011-1275 ("Starwood Hotels"), for instance, the respondent had used the disputed domain name and its associated email servers to post fictitious job listings on job-search websites, directing job applicants to respond to an email address incorporating the disputed domain name (namely, […]@sheraton-kl.com) with their personal data and substantial sums of money.
The panel in Starwood Hotels found that such behavior "[went] beyond a mere attempt to divert Internet users for commercial gain by creating a likelihood of confusion with the Complainant's mark" as the respondent therein had "exploited the goodwill in the SHERATON mark in order to mislead individuals who have wrongly believed themselves to be dealing with the Claimant" and thus it was "evident that the [disputed domain name had] been registered and used in bad faith".
As mentioned above, the Complainant has furnished evidence that the Respondent has similarly used the Domain Name to intentionally impersonate the Complainant and mislead the Complainant's customers into making payment to the Respondent's account. This Panel concurs with the panel in Starwood Hotels and finds that such behavior strongly evidences bad faith on the Respondent's part.
The Panel would further add that the finding of bad faith is further buttressed by the following factors, which have been found to evidence bad faith in past UDRP decisions:
(i) the fact that the Domain Name comprises a typo of a widely-known mark;
(ii) the clear absence of any rights or legitimate interests by the Respondent in the Domain Name, coupled with the lack of any credible explanation for the Respondent's choice of the Domain Name; and
(iii) the Respondent's use of the privacy service seemingly to avoid being notified of a UDRP proceeding filed against it.
Based on the foregoing, this Panel is satisfied that the requirements in paragraph 4(a)(iii) of the Policy has been fulfilled.
It is therefore established that the Complainant has made out each of the three elements that it is required to prove.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <alfelaval.com> be transferred to the Complainant.
Tee Jim Tan, S.C.
Date: October 24, 2017