WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Open Society Institute v. Admin Contact, PrivateName Services Inc. / Axel Feldt
Case No. D2018-0816
1. The Parties
The Complainant is Open Society Institute of New York, New York, United States of America (“United States” or “U.S.”), represented by Morrison & Foerster, LLP, United States.
The Respondent is Admin Contact, PrivateName Services Inc. of Vancouver, British Columbia, Canada / Axel Feldt of Lund, Sweden.
2. The Domain Name and Registrar
The disputed domain name <opensocletyfoundations.org> is registered with PSI-USA, Inc. dba Domain Robot (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 12, 2018. On April 12, 2018, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the disputed domain name. On April 13, 2018, the Registrar transmitted by e-mail 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 e-mail communication to the Complainant on April 25, 2018 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 amended Complaint on April 26, 2018.
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 the Respondent of the Complaint, and the proceedings commenced on April 27, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 17, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 18, 2018.
The Center appointed Jon Lang as the sole panelist in this matter on June 5, 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 is a philanthropic organization that works to build vibrant and tolerant societies whose governments are accountable and open to the participation of all people. It funds a range of programs around the world, from public health to education to business development. It conducts a number of philanthropic services under its OPEN SOCIETY marks, including OPEN SOCIETY FOUNDATIONS, OPEN SOCIETY INSTITUTE, and OPEN SOCIETY POLICY CENTER. Since at least as early as April 6, 2010, the Complainant has operated a website at “www.opensocietyfoundations.org” to promote its mission.
The Complainant owns at least three current U.S. registrations for its OPEN SOCIETY marks:
OPEN SOCIETY FOUNDATIONS (Registration No: 4,248,358, Registration Date: November 27, 2012)
OPEN SOCIETY POLICY CENTER (Registration No: 3,769,307, Registration Date: March 30, 2010)
OPEN SOCIETY INSTITUTE (Registration No: 2,412,029, Registration Date: December 12, 2000)
On April 6, 2010, the Complainant registered the domain name <opensocietyfoundations.org>.
The disputed domain name, <opensocletyfoundations.org> (hereafter the “Domain Name”) was registered on March 12, 2018.
Email messages have been sent from a [m…]@opensocletyfoundations.org which contained a link to the Domain Name webpage at “www.opensocletyfoundations.org”. At this webpage, a document designed to look like a legitimate page from the Complainant’s “www.opensocietyfoundations.org” website was displayed.
5. Parties’ Contentions
The following is a summary of the Complainant’s main contentions.
The Domain Name is confusingly similar to a trademark in which the Complainant has rights
The Domain Name is virtually identical and confusingly similar to the OPEN SOCIETY FOUNDATIONS trademark, and the domain name associated with that trademark. The Domain Name merely exchanges the single letter “I” for the single letter “L” in the word SOCIETY, in an obvious attempt to capitalize on typographical errors made by Internet users. Indeed, the lowercase letter “l” in the Domain Name was no doubt purposely chosen for its striking similarity with the letter “i”. A domain name that merely omits one letter or makes similar small changes to a registered trademark is confusingly similar to the mark in question.
The Respondent has no Rights or Legitimate Interests in the Domain Name
The Complainant believes that the Respondent has not made use of the Domain Name in connection with a bona fide offering of goods or services. The Complainant has not authorized or licensed the Respondent to use the OPEN SOCIETY FOUNDATIONS trademark, and the Respondent is not a provider of the Complainant’s services. In fact, the Respondent has been using the Domain Name for malicious purposes. Whilst the Domain Name is not currently linked to an active website, e-mails previously sent from an e-mail address using the Domain Name, included a link to a document posted on a website (as described earlier), which was used to steal recipients’ (of such e-mails) login credentials. Subsequently, the recipients were redirected to the Complainant’s website at “www.opensocietyfoundations.org”. Thus, if recipients of the e-mails entered the Domain Name into their browsers, they would have assumed that these “phishing” e-mails originated from the Complainant.
Further, to the Complainant’s knowledge, the Respondent has not been commonly known by the Domain Name. The Respondent has not used the Domain Name in connection with any legitimate business or offering of goods or services before it registered the Domain Name. Accordingly, the Respondent cannot now claim that it is commonly known by the Domain Name.
Moreover, the Respondent is not making legitimate noncommercial or fair use of the Domain Name. As described earlier, it is believed the Domain Name has been used for the purposes of “phishing” (“phishing” e-mails having been used to steal recipients’ login credentials).
The Domain Name was registered and is being used in bad faith
Bad faith may be shown where a respondent is aware of a complainant’s well-known trademark, has no connection to the owner of that trademark (or authorization therefrom) and has no legitimate purpose to utilize the mark.
The Respondent used the Domain Name in e-mail phishing attacks against employees of entities unaffiliated to the Complainant, taking advantage of the similarity between the Domain Name and the Complainant’s OPEN SOCIETY FOUNDATIONS trademark. These employees received targeted e-mail messages from an address that purported to come from an employee of the Complainant, i.e. [m…]@opensocletyfoundations.org, and contained a link to the Domain Name’s webpage, at which a document, designed to look like a legitimate page from the Complainant’s website, was displayed and used to steal login details. Moreover, the e-mail itself was malicious and contained embedded malware. These “phishing” e-mails were designed to fraudulently induce e-mail recipients to reveal their login credentials. Such use of the Domain Name was without the Complainant’s consent and had no legitimate purpose other than to illegally obtain information from individuals who have mistakenly thought that the Complainant had sent the e-mails.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires a complainant to prove that a respondent has registered a domain name which is: (i) identical or confusingly similar to a trademark or service mark in which a complainant has rights; and (ii) that the respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith. A complainant must prove each of these three elements to succeed.
A. Identical or Confusingly Similar
The Complainant is the owner of the OPEN SOCIETY FOUNDATIONS trademark with a registration date of November 27, 2012 (as well as others containing the words “open society”). The Complainant clearly has rights in the OPEN SOCIETY FOUNDATIONS trademark.
Ignoring the generic Top-Level Domain “.org” (as the Panel may do for comparison purposes), the Domain Name comprises the Complainant’s OPEN SOCIETY FOUNDATIONS trademark but with the letter “i” substituted for the letter “l” in the word, SOCIETY.
These letters are visually similar but as the OPEN SOCIETY FOUNDATIONS trademark and Domain Name are not identical, the issue of confusing similarity must be considered. Under the UDRP, the test for confusing similarity involves a comparison between the trademark and the domain name. To satisfy the test, the trademark to which the domain name is said to be confusingly similar would generally need to be recognizable as such within the domain name. The addition of common, dictionary, descriptive, or negative terms are usually regarded as insufficient to prevent confusing similarity. Application of the confusing similarity test under the UDRP typically involves a comparison, on a visual or aural level, between the trademark and the domain name.
The OPEN SOCIETY FOUNDATIONS trademark is clearly recognizable within the Domain Name. The substitution of the letter “i” for the letter “l” in the word SOCIETY does nothing to diminish the visual impression created by the Domain Name, i.e. that it is identical to the Complainant’s OPEN SOCIETY FOUNDATIONS trademark. To create such a visual impression was no doubt the very purpose in the Respondent choosing the Domain Name that it did. Given the switch of letter, the Domain Name and mark cannot be said to be identical, but the Domain Name is certainly confusingly similar to the Complainant’s OPEN SOCIETY FOUNDATIONS trademark.
The Panel finds that the Domain Name is confusingly similar to the OPEN SOCIETY FOUNDATIONS trademark for the purposes of the Policy and thus paragraph 4(a)(i) of the Policy has been established.
B. Rights or Legitimate Interests
By its allegations, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name and, as such, the burden of production shifts to the Respondent to come forward with arguments or evidence demonstrating that it does in fact have such rights or legitimate interests. The Respondent has not done so and accordingly, the Panel is entitled to find, given the prima facie case made out by the Complainant, that the Respondent indeed lacks rights or legitimate interests in the Domain Name. Despite the lack of any answer to the Complaint however, the Panel is entitled to consider whether there would be anything inappropriate in such a finding. The answer to that question must be a resounding “No”. It is difficult to conceive of any argument that could be advanced in the circumstances that would assist the Respondent. This is a clear case of typosquatting.
In the circumstances, the Panel concludes that the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Domain Name is confusingly similar to the OPEN SOCIETY FOUNDATIONS trademark and may well be mistaken as being identical. The Respondent has no legitimate rights or interests in the Domain Name. In fact, its only or prime interest in the Domain Name would appear to be illegitimate, given its use in a “phishing” exercise. This is a clear case of typosquatting, the Respondent choosing the Domain Name to impersonate the Complainant for its own nefarious purposes. No Response to the Complaint has been filed, no doubt because there is no response to the Complaint the Respondent could give which might cast doubt on the contention that registration and use of the Domain Name has been in bad faith.
The Panel finds that, for the purposes of the Policy, there is evidence of both registration and use of the Domain Name 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 Domain Name <opensocletyfoundations.org> be transferred to the Complainant.
Date: June 13, 2018