WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BJ2 LLC v. Cimpress Schweiz GmbH
Case No. D2017-2066
1. The parties
The Complainant is BJ2 LLC of Chagrin Falls, Ohio, United States of America ("United States"), represented internally.
The Respondent is Cimpress Schweiz GmbH of Zurich, Switzerland.
2. The Domain Name and Registrar
The disputed domain name <natruepedic.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 October 23, 2017. On October 24, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 24, 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 November 3, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 23, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 28, 2017.
The Center appointed James Bridgeman as the sole panelist in this matter on December 5, 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 carries on an international business in the sale of "sleep products" such as mattresses, mattress foundations, bed sheets and covers and uses its trademark NATUREPEDIC in connection with the sale of its products.
The Complainant is the registered owner of the following United States registered trademarks:
- USPTO trademark NATUREPEDIC, registration number 3045755, registered on the Principal Register on January 17, 2006 for mattresses, box springs and pillows, in international class 20;
- USPTO trademark NATUREPEDIC, registration number 4170333, registered on the Principal Register on July 10, 2012 in respect of spring mattresses and mattress foundations, mattress toppers, in international class 20, and mattress covers, mattress pads, bed sheets, fitted bed sheets, flat bed sheets, sheet sets, baby bedding, namely fitted crib sheets and diaper changing pad covers not of paper, in International class 24;
- USPTO trademark NATUREPEDIC device, registration number 4239096, registered on the Principal Register on November 6, 2012 also in respect of mattresses, box springs, pillows, sleep products, namely, spring mattresses and mattress foundations, mattress toppers, in international class 20, and mattress covers, mattress pads, bed sheets, fitted bed sheets, flat bed sheets, sheet sets, baby bedding, namely fitted crib sheets and diaper changing pad covers not of paper in International class 24.
In the absence of a Response or any communication from the Respondent, there is no information available about the Respondent except for that given in the Complaint and on the Registrar's WhoIs.
The disputed domain name was registered on October 6, 2017. It does not resolve to an active website.
5. Parties' Contentions
The Complainant relies on its abovementioned trademark registrations and submits that disputed domain name <natruepedic.com> is confusingly similar, if not identical, to the trademark NATUREPEDIC in which the Complainant has rights.
The Complainant further alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name because there is no evidence of the Respondent's use the domain name in connection with a bona fide offering of goods or services. The Complainant submits that the Respondent's sole use of the disputed domain name has been to commit criminal acts which cannot create a legitimate interest.
The Complainant furthermore submits that the disputed domain name was registered and is being used in bad faith, alleging that on October 6, 2017, the same date that the disputed domain name was registered, the Respondent contacted the Complainant for the sole purpose of committing fraud and theft. In this regard the Complainant has submitted a Word document which purports to be an exchange of emails initiated by a person identifying himself as "Barry" using the email address "firstname.lastname@example.org" to a person within the Complainant's organization, requesting a wire payment in the sum of USD 28,427.00.
The Complainant presents this document as evidence that the Respondent has attempted to fraudulently steal money from the Complainant by leading some of the Complainant's employees to believe they were communicating with their fellow employees, when they were actually communicating with the Respondent, who was attempting to have the Complainant's employees fraudulently transfer monies to Respondent illegitimately.
The Complainant submits that therefore the disputed domain name was acquired primarily for the purpose of falsely and maliciously pretending to stand in the Complainant's own shoes and masquerade as the Complainant.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) 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
Having compared both, this Panel finds that the disputed domain name <natruepedic.com> is confusingly similar to the trademark NATUREPEDIC in which the Complainant has rights pursuant to its abovementioned US trademark registrations. The disputed domain name is in fact identical to the Complainant's mark except that the letter sequence "ure" is replaced with the letter sequence "rue".
The Complainant has therefore succeeded in the first element of the test in the Policy, paragraph 4(a)(i).
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 and has provided evidence that the Respondent is in fact using the disputed domain name for an unlawful purpose.
It is well established under the Policy that in such circumstances the burden of production shifts to the Respondent. As the Respondent has failed to deliver a Response, it has failed to discharge this burden.
The Complainant has therefore succeeded in the second element of the test in paragraph 4(b)(ii) of the Policy also.
C. Registered and Used in Bad Faith
The Complainant has provided a Word document purporting to be evidence that the domain name has been used as an email address to send a written request to one of the Complainant's employees to arrange the electronic transfer of funds. The Complainant states that this is evidence of an attempted fraud by the Respondent perpetrated on the very date on which the disputed domain name was registered.
This allegation has not been denied by the Respondent or refuted in any way.
In the circumstances, this Panel finds that the Complainant has proven, on the balance of probabilities, that the disputed domain name was registered and is being used in bad faith. The similarities between the disputed domain name and the Complainant's mark indicate that this is an example of "typosquatting" whereby the letter sequence "ure" in the Complainant's name, mark and domain name was replaced with the letter sequence "rue" so as to confuse the Complainant's employee into believing that he received an internal email requesting the transfer of funds. This request was made on the very day that the disputed domain name was registered.
In reaching this decision, this Panel is conscious that the Complainant must meet only the civil standard of proof i.e. the balance of probabilities. This Panel has some concern that in this particular case, particularly given the serious nature of the allegation, which the Complaint, is very brief and the evidence presented to support the Complainant's allegation of fraud is very weak. It is merely a Word document, which has been adduced with no supporting statements or collateral evidence. In a proceeding under the Policy is not normally required to produce evidence that would meet a standard required in a court of law, however merely submitting a Word document which provides the text of an email, as the sole basis of the Complainant's case without any further supporting evidence is approaching the borderline of being unacceptable. The Panel is mindful however, that the Complaint has been submitted and signed by an attorney and includes the certification as required under the Rules that "[t]he Complainant certifies that the information contained in this Complaint is to the best of the Complainant's knowledge complete and accurate, that this Complaint is not being presented for any improper purpose, such as to harass, and that the assertions in this Complaint are warranted under the Rules and under applicable law, as it now exists or it as it may be extended by a good-faith and reasonable argument."
Nonetheless in the absence of any Response or denial from the Respondent, this Panel is making this decision based on the record and finds that on the balance of probabilities the Complainant is entitled to succeed in this Complaint.
Having succeeded in establishing the third and final element in the test set out in paragraph 4(a) of the Policy, this Panel finds that the Complainant is entitled to be granted the reliefs sought.
For the foregoing reasons, in accordance with paragraphs 4(a) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <natruepedic.com> be transferred to the Complainant.
Date: December 19, 2017