WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Brambles Ltd. v. WhoisGuard Protected / Emimimo Steven and Avoca Davis
Case No. D2018-1888
1. The Parties
The Complainants are Brambles Ltd. of Sydney, New South Wales, Australia and Brambles Ltd. of Orlando, United States of America (“United States”) represented by Michael L. Leetzow, P.A., United States (subsequently referred as “the Complainant”).
The Respondents are WhoisGuard Protected, WhoisGuard Inc., of Panama, Panama / Emimimo Steven of Cincinnati, Ohio, United States, and Avoca Davis of Carlisle, United Kingdom of Great Britain and Northern Ireland (“United Kingom” or “UK”).
2. The Domain Names and Registrar
The disputed domain names <chep-uk.com> and <chep-us.com> (the “Disputed Domain Names”) are registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 17, 2018. On August 20, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On August 20, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 23, 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 August 24, 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 Respondents of the Complaint, and the proceedings commenced on August 31, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 20, 2018. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on September 21, 2018.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on October 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 is a multi-national supply chain logistics company, which is headquartered in Sydney, Australia. The Complainant is also listed on the Australian Securities Exchange. The Complainant primarily conducts its business through its CHEP and IFCO trade marks, and has operations in over 60 countries. The Complainant, through its wholly-owned subsidiary CHEP USA and CHEP Technology Pty Limited, owns registered rights in the CHEP trade mark and related CHEP logos (“Chep Trade Marks”) in various jurisdictions, including the European Union, the United Kingdom and the United States. The Complainant’s earliest trade mark registration dates back to September 1967 (for instance, Australian Trademark Registration No. 213191 CHEP, registered from September 5, 1967).
The Disputed Domain Names <chep-us.com> and <chep-uk.com> were registered on July 31, 2018, and August 3, 2018, respectively. The Disputed Domain Names resolve to pay-per-click Websites.
5. Preliminary Issue: Multiple Respondents
The Complainant has alleged that while the Disputed Domain Names appear to have been registered by two different underlying registrants, that they are in fact controlled by a single person. In accordance with paragraph 3(c) of the Rules, the Complaint may relate to more than one domain name, provided that the Disputed Domain Names are registered by the same domain name holder.
As held in Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281: “the consolidation of multiple registrants as respondents in a single administrative proceeding may in certain circumstances be appropriate under paragraph 3(c) or 10(e) of the Rules provided the complainant can demonstrate that the disputed domain names or the websites to which they resolve are subject to common control, and the panel, having regard to all of the relevant circumstances, determines that consolidation would be procedurally efficient and fair and equitable to all parties.”
In this case, the Disputed Domain Names both incorporate the words “chep” along with a geographical reference (i.e. “-us” and “-uk”), and were registered within 3 days of each other. The fraudulent emails sent by the Respondents to customers of the Complainant, which are allegedly sent by Chep UK Ltd, refer to the email address linked with the <chep-us.com> Disputed Domain Name, and vice versa. Further, it cannot be mere coincidence that the contents of the letters and emails sent by the Respondents to customers of the Complainant are virtually identical.
In light of the above, and given the lack of any submissions or evidence to the contrary from the Respondents, the Panel finds that the Complainant has established that the Disputed Domain Names are more likely than not under common control. In the circumstances, the consolidation of the multiple Disputed Domain Names and Respondents would also be equitable and procedurally efficient.
The Panel will therefore allow the consolidation as requested by the Complainant.
6. Parties’ Contentions
The Complainant’s contentions can be summarized as follows:
(a) The Complainant is well-known worldwide and has 432 trade mark registrations worldwide, including in the United Kingdom, the United States, Australia and the European Union. The Complainant also has 343 domain names that include the CHEP trade mark, including <chep.us> and <chep.uk>.
(b) The Respondents registered the Disputed Domain Names <chep-us.com> and <chep-uk.com> on July 31, 2018 and August 3, 2018, respectively. The Disputed Domain Names are confusingly similar to the Complainant’s CHEP Trade Marks, with the only difference being the addition of the country codes for the United Kingdom and the United States. The inclusion of “-uk” and “-us” in the Disputed Domain Names does not mitigate any possible confusion with the Complainant’s CHEP Trade Marks.
(c) The Respondents have no rights or legitimate interests in the Disputed Domain Names. They have never been known by the CHEP mark, are not agents of the Complainant and have not been authorized to register or use the Disputed Domain Names. The Disputed Domain Names resolve to a holding page. The Respondents have been using email addresses linked to the Disputed Domain Names to send fraudulent emails and letters to vendors and customers of the Complainant to falsely inform them of a change in bank account information of the Complainant. The Respondents clearly intend to divert payments that are meant for the Complainant to other bank accounts not controlled by the Complainant.
(d) The Respondents have attempted to hide their true identity by using a proxy service provider, and providing false information to the Registrar. For example, the registered postal address for <chep˗us.com> is the address of a grocery store and the telephone number is the main telephone number for UPS, and the registered telephone number for <chep-uk.com> is for Flood Issue UK (an apparent government agency).
(e) The Respondents’ impersonation of the Complainant by using email accounts linked to the Disputed Domain Names to send fraudulent emails and letters is clearly a case of bad faith registration and use.
The Respondents did not reply to the Complainant’s contentions.
The fact that the Respondents have not submitted a Response does not automatically result in a decision in favor of the Complainant. However, the failure of the Respondents to file a Response may result in the Panel drawing appropriate inferences from such default. The Panel may also accept all reasonable and supported allegations and inferences flowing from the Complaint as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies, WIPO Case No. D2009-1437; and Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403).
7. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:
(i) the Disputed Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondents have no rights or legitimate interests in respect of the Disputed Domain Names; and
(iii) the Disputed Domain Names have been registered and are being used by the Respondents in bad faith.
A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in the CHEP trade mark, based on its numerous registrations, including in the European Union, United States, Australia and the United Kingdom.
The Disputed Domain Names incorporate the Complainant’s CHEP trade mark in its entirety, the only difference being the suffix “-uk” or “-us”. It is well established that in cases where the distinctive and prominent element of a disputed domain name is the complainant’s mark and the only deviation from this is the inclusion of a geographic indicator as a prefix or a suffix, such prefix or suffix does not typically negate the confusing similarity between the disputed domain name and the mark (see Kabushiki Kaisha Toshiba dba Toshiba Corporation v. WUFACAI, WIPO Case No. D2006-0768). In this case, “chep” is the distinctive and prominent component of the Disputed Domain Names and the addition of “-uk” or “-us” does nothing to negate the confusing similarity between the Disputed Domain Names and the Complainant’s CHEP trade mark.
It is also well established that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the generic top-level domain extensions, in this case “.com”, may be disregarded (see Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd, WIPO Case No. D2006-0762).
The Panel finds that paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states that once a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent, the respondent then carries the burden of demonstrating that it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Panel accepts that the Complainant began using the CHEP trade mark decades before the Disputed Domain Names were registered by the Respondents, and the Complainant has never authorised the Respondents to use its trade marks. Accordingly, the Panel is of the view that a prima facie case has been established and it is for the Respondents to prove that they have rights or legitimate interests in the Disputed Domain Names. As the Respondents have not submitted a Response to rebut the Complainant’s contentions, the Panel will assess the case based on the reasonable inferences that can be drawn from the Complainant’s evidence.
Pursuant to paragraph 4(c) of the Policy, the Respondents may establish rights or legitimate interests in the Disputed Domain Names by demonstrating any of the following:
(i) before any notice to them of the dispute, the Respondents’ use of, or demonstrable preparations to use the Disputed Domain Names or a name corresponding to the Disputed Domain Names was in connection with a bona fide offering of goods or services; or
(ii) the Respondents have been commonly known by the Disputed Domain Names, even if they have acquired no trade mark or service mark rights; or
(iii) the Respondents are making a legitimate noncommercial or fair use of the Disputed Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Respondents have been using the Disputed Domain Names to send fraudulent emails to the Complainant’s customers and vendors. In particular, the emails sent by the Respondents were allegedly sent by a director or chief operating officer of “Chep UK Ltd” or “Chep USA”, and they incorporate the CHEP device mark registered and owned by the Complainant. The Panel also notes that the email signature seems to include the genuine address for the Complainant’s office in the United Kingdom. The emails falsely inform customers or vendors of the Complainant that “Chep UK Ltd” or “Chep USA” (as applicable) have changed their banking details and that all payments should be made to the new bank account.
The Respondents are obviously trying to use the Disputed Domain Names and the related email addresses to confuse the Complainant’s customers into believing that they are legitimate emails originating from the Complainant, in order to defraud the Complainant’s customers. This cannot amount to a right or legitimate interest in the Disputed Domain Names.
The Panel finds that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
For the reasons stated above, the Respondents clearly registered and are using the Disputed Domain Names to carry out fraudulent activities in the hope of confusing vendors and customers of the Complainant into believing that emails sent by the Respondents in fact originate from the Complainant in order to divert payments away from the Complainant. Further, the Respondents have clearly sought to hide their identity by using false information to register the Disputed Domain Names. The Respondents have therefore registered and are using the Disputed Domain Names in bad faith.
The Panel finds that paragraph 4(a)(iii) of the Policy is satisfied.
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 Names <chep-uk.com> and <chep-us.com> be transferred to the Complainant.
Date: October 30, 2018