WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Intersystems Corporation v. VistaPrint Technologies Ltd.
Case No. D2018-0178
1. The Parties
The Complainant is Intersystems Corporation of Cambridge, Massachusetts, United States of America (“United States”), represented by Burns & Levinson LLP, United States.
The Respondent is VistaPrint Technologies Ltd. of Hamilton, Bermuda, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), internally represented.
2. The Domain Name and Registrar
The disputed domain name <intresystems.com> (the “Disputed 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 January 29, 2018. On January 30, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 30, 2018, 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 February 14, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 6, 2018. The Center received a communication from the Respondent on February 24, 2018. In response to that communication, the Center sent an email suggesting a possible settlement to the Parties on February 28, 2018. On March 8, 2018, the proceeding was suspended. On April 6, 2018, the Complainant requested an extension to the suspension period. The Center reinstituted the proceeding on May 8, 2018.
The Center appointed Frank Schoneveld as the sole panelist in this matter on May 16, 2018. 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 has registered the INTERSYSTEMS service mark and trademark with the United States Patent and Trademark Office (“USPTO”) under the following registrations:
- Registration number 1160437 registered on July 7, 1981.
- Registration number 3621823 registered on May 19, 2009.
- Registration number 4297260 registered on March 5, 2013.
- Registration number 5336357 registered on November 14, 2017.
The Complainant is the registrant of the domain name <intersystems.com> registered on February 28, 1995.
The Disputed Domain Name was registered on December 11, 2017.
The Complainant is a technology company focusing on enterprise connectivity, information exchange, and patient management software in the healthcare field, offering data platforms, data management systems, enterprise architecture software, health information and exchange software, and patient and practice management software under its registered mark INTERSYSTEMS.
On the date of Complaint submission, the Disputed Domain Name resolved to a website that contained the word “vistaprint” in stylized form together with the phrases “Make an impression. Websites are free at Vistaprint.com/websites. Create your website in minutes. Grow your business with an online presence. Coordinate your brand online and offline. No programming skills required.”
5. Parties’ Contentions
The Complainant contends that the Disputed Domain Name fully incorporates the INTERSYSTEMS mark inverting only the “e” and “r”, and the mere inversion of letters in a domain name that contains sufficiently recognizable aspects of the relevant mark is a classic example of typosquatting that is insufficient to obviate confusing similarity. The Complainant argues that the Disputed Domain Name is identical or confusingly similar to the Complainant’s registered INTERSYSTEMS mark and is intended to intercept and confuse consumers when looking for bona fide and well-known Intersystems technical solutions and services or authorized partners.
The Complainant submits there is no evidence that the Respondent has any legitimate claims to the Disputed Domain Name and any current or conceivable future uses of the Disputed Domain Name violates the Policy. The Complainant says that the Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use the INTERSYSTEMS mark in a domain name or in any other manner, and the Complainant believes that the Respondent has never been known by the Disputed Domain Name. The Complainant asserts that the Respondent has no legitimate interest in the Disputed Domain Name when there is no evidence that the Respondent is commonly known by the domain name.
The Complainant contends that the Disputed Domain Name has been used in an apparent phishing attempt, to improperly obtain a third party’s financial data and/or transfer of funds, and more specifically, that the Disputed Domain Name was apparently used to create email messages that purport to originate from email accounts controlled by the Complainant’s officers. The Complainant submits that at least one such email was sent to an employee of the Complainant in an apparent attempt to mislead him to wire funds to the Respondent or a third party, with the Complainant providing a copy of an email message from such a fraudulent email account that purports to be from the Complainant’s CFO and instructs an employee to wire funds to a supposed third party.
The Complainant contends that:
- the only apparent use of the Disputed Domain Name was for impersonating the Complainant in emails designed to defraud the Complainant, and this would not be sufficient to establish rights or legitimate interests, and
- the Respondent could have no legitimate interest in the Complainant’s INTERSYSTEMS mark since it is not a name that the Respondent would have legitimately and randomly chosen to use.
The Complainant says the Respondent registered the Disputed Domain Name in bad faith by doing so with knowledge of the Complainant’s rights in the INTERSYSTEMS mark and with an intent to profit off of those rights, asserting that it is simply inconceivable that the Respondent was unaware of the Complainant’s rights in the INTERSYSTEMS mark when it registered the Disputed Domain Name incorporating the Complainant’s famous registered INTERSYSTEMS mark in its entirety.
The Complainant contends that, at a minimum, the Respondent had actual notice of the Complainant’s rights, including because the Complainant engages in extensive advertising, featuring its name and mark and has offices throughout the world, and even a simple Internet search would have revealed the Complainant’s extensive use of the INTERSYSTEMS mark as source identifiers.
The Complainant also contends that the Respondent’s history of adverse findings under the Policy strongly suggests a pattern of conduct of registering and using well-known trademarks of others in bad faith for an unjustified advantage, and that the Respondent’s current use of the Disputed Domain Name to engage in phishing is textbook bad faith and part of a larger pattern that the Respondent has engaged in previously. In this regard the Complainant refers to five UDRP cases since 2014 in which VistaPrint Technologies Ltd was also the respondent and there were findings of deceptive emails or other correspondence for an illicit purpose.
The Complainant submits that the Respondent must have expected that any use of the Disputed Domain Name would cause harm to the Complainant, and that the Disputed Domain Name, wholly incorporating the INTERSYSTEMS mark, is so “obviously indicative” of being authorized by the Complainant that the Respondent’s use of the Disputed Domain Name would inevitably lead to confusion of some sort. The Complainant also submits that the unauthorized use of the Disputed Domain Name by the Respondent severely harms the Complainant by tarnishing and infringing its trademarks, reputation and goodwill in the United States and around the world.
The Complainant contends that, for the reasons set forth above, the Respondent’s use of the INTERSYSTEMS mark is tantamount to bad faith and the Disputed Domain Name is used to trade on the goodwill associated with the Complainant and its INTERSYSTEMS mark by defrauding and leading others to believe that the Respondent is or acts on behalf of the Complainant.
The Complainant also argues that, assuming arguendo that the Respondent claims not to be engaging in these clear acts of bad faith itself and is merely allowing the Disputed Domain Name to be used by third parties, whose identity the Respondent is concealing, the Respondent is complicit in the cybersquatting and should be treated as the respondent of record.
The Complainant concludes by asserting that the current use of the Disputed Domain Name supports a finding of bad faith and there is no conceivable contemplated use of the Disputed Domain Name (which wholly incorporates the Complainant’s INTERSYSTEMS mark) that would not be an infringing use by the Respondent, and as such, the Disputed Domain Name is currently being used in bad faith in violation of the Policy.
In an email to the Centre of February 24, 2018 the Respondent states:
The offending account in question has been terminated. Vistaprint has no interest in this domain. If you would like to take ownership of the domain, please provide the following, so that we may update the domain’s Contact Information for you and begin the transfer process …”
There was no other communication or submission from the Respondent.
6. Discussion and Findings
Pursuant to UDRP paragraph 4(a), in order to have a domain name transferred or cancelled the complainant must prove that each of the following three elements is present:
(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.
The Rules at paragraph 15(a) require that “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” In the absence of any substantive rebuttal by the Respondent to the Complainant’s contentions, the Panel therefore proceeds on the basis of the Complaint submitted by the Complainant, as well as in accordance with the Policy, the Rules and any rules and principles of law that are applicable.
A. Identical or Confusingly Similar
The Disputed Domain Name has only one small difference to the Complainant’s INTERSYSTEMS trademark, and that is the inversion of the “e” and “r” in the trademark to read <intresystems.com>. The Complainant calls this type of misspelling of its INTERSYSTEMS mark “typosquatting”. This minor difference in spelling can lead to confusion and does not serve to avoid a finding of confusing similarity with the Complainant’s INTERSYSTEMS service and trademark.
In the Panel’s view the generic Top-Level Domain (“gTLD”) “.com” in the Disputed Domain Name does not in this case affect the Disputed Domain Name for the purpose of determining whether it is confusingly similar to the Complainant’s service and trademarks.
The Complainant provides evidence that its INTERSYSTEMS mark has been registered in the United States at least since July 1981 and the Complainant therefore has rights in the mark. The Respondent does not challenge such evidence or respond to the contentions the Complainant has submitted.
Given the foregoing, the Panel finds that the Disputed Domain Name is confusingly similar to a trademark or service mark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Respondent states in its email to the Centre of February 24, 2018 that it hosts the Disputed Domain Name on behalf of one of its customers, and that it “has no interest in this domain”. This indicates that the Respondent likely has no rights or legitimate interests in respect of the Disputed Domain Name.
Other evidence provided by the Complainant indicates that:
- the Respondent has no connection or affiliation with the Complainant;
- the Respondent has no license or consent from the Complainant to use the Complainant’s INTERSYSTEMS mark in a domain name; and
- registration of the Complainant’s INTERSYSTEMS trademark in the United States preceded by more than 35 years the registration of the Disputed Domain Name;
Further, the Panel notes that the Respondent’s name does not bear any resemblance to the Disputed Domain Name and there is nothing in the evidence before the Panel, including in the WhoIs record for the Disputed Domain Name that suggests the Respondent might be known by the Disputed Domain Name. Nor is there any evidence that the Respondent’s customer, on behalf of whom the Respondent hosts the Disputed Domain Name, has a name that might resemble the Disputed Domain Name.
In fact, the evidence indicates the Disputed Domain Name has been used in connection with a fraudulent email scheme in an attempt to impersonate the Complainant to illegitimately obtain payment of monies for which there is no entitlement. The evidence, therefore, establishes a prima facie case the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent has failed to provide any rebuttal of this prima facie case. In those circumstances, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
C. Registered and Used in Bad Faith
The Complainant has provided a copy of an email sent December 11, 2017, which uses the Disputed Domain Name in an attempt (i) to fraudulently obtain confidential financial information from the Complainant, or (ii) to illegitimately obtain the payment of monies from the Complainant to the Respondent or other third party who had no entitlement to such monies. This deceptive email using the Disputed Domain Name falsely purports to be from the Complainant’s CFO and instructs one of the Complainant’s employees to facilitate a transfer of funds to a third party in an attempt to mislead the employee to wire the funds or to provide confidential and/or private information to the person sending the deceptive email (which uses the Disputed Domain Name).
Such use of the Disputed Domain Name has the purpose of engaging in fraudulent activity to deceive the Complainant (and potentially others) to provide sensitive financial information or to make unjustified payments, and not to host a website.
The Panel notes that this email was sent on the same day that the Disputed Domain Name was created, namely December 11, 2017.
Given that a deceptive email (using the Disputed Domain Name) that fraudulently attempts to obtain confidential financial information or illegitimate transfer of funds occurred on the day the Disputed Domain Name was created, it can be inferred that the Disputed Domain Name was established for that purpose. Registration of the Disputed Domain Name for such a purpose can only be regarded as registration in bad faith. The use of the Disputed Domain Name to send a deceptive email that fraudulently attempts to obtain confidential financial information or illegitimate transfer of funds from the Complainant can, equally, only be regarded as use in bad faith.
The Respondent makes no specific submission or response to the Complainant’s allegations of bad faith registration and use of the Disputed Domain Name. The Respondent only indicates that it “hosts the subject domain on behalf of one of [its] customers”.
The Panel also notes that unlike UDRP, paragraph 4(a)(ii), the UDRP at paragraph 4(a)(iii) does not specify any particular person who has registered and is using the domain name in bad faith, only that the Disputed Domain Name has been registered and is being used in bad faith. The Policy does not distinguish between registration and use by the Respondent, and registration and use by any other person (including a customer of the Respondent).
In view of all of the above, the Panel concludes that the Disputed Domain Name has been registered and is being used in bad faith.
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 <intresystems.com> be transferred to the Complainant.
Date: June 13, 2018