WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Titus Group, Inc. v. WhoisGuard, Inc. / Thomas Sal
Case No. D2018-2816
1. The Parties
The Complainant is Titus Group, Inc. of Dallas, Texas, United States of America, represented by Munsch, Hardt, Kopf & Harr, P.C., United States of America.
The Respondent is WhoisGuard, Inc. of Panama City, Panama / Thomas Sal of Bergen, Norway.
2. The Domain Name and Registrar
The disputed domain name <tituslndustrial.com> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 10, 2018. On December 11, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 11, 2018, the Registrar transmitted by email 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 email communication to the Complainant on December 13, 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 December 18, 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 December 19, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 8, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default January 9, 2019.
The Center appointed Eva Fiammenghi as the sole panelist in this matter on January 17, 2019. 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.
On January 30, 2019 the Center formally notified the Parties of the Panel’s Administrative Procedural Order No. 1.
Pursuant to paragraphs 10 and 12 of the UDRP Rules the Panel requested that the Complainant provides evidence of use for its trademark TITUS sufficient to establish unregistered or common law trademark rights for purposes of the UDRP.
In accordance with the Rules the due date for submissions in response to the Procedural Order was February 1, 2019 for the Complainant and February 6, 2019 for the Respondent. The Decision due date was extended to February 13, 2019.
The Complainant’s submission was filed on February 1, 2019.
The Respondent did not submit any response.
4. Factual Background
The Complainant declares that it has been using its trademark TITUS INDUSTRIAL since 2016 in connection with structural parts used in the oil business, although Titus Distribution, LLC was formed on or about December 14, 2014, the Complainant demonstrated use only from 2016.
With its submission in response to the Procedural Order, the Complainant proved that he has established common law trademark rights in the trademarks TITUS and TITUS INDUSTRIAL for purposes of the Policy.
The Complainant declared that he has generated the following per annum sales (appx.): 2016 – USD 1,000,000; 2017 – USD 10,000,000; 2018 – USD 22,000,000.
The Complainant has received media recognition for its services and products, all marketed under the Complainant’s mark.
The disputed domain name used by the Respondent utilizes an identical reproduction of the Complainant’s trademark, except the Respondent has replaced the capital letter “I” of “industrial” with the lowercase letter “l” as per “London”.
The disputed domain name was registered on November 27, 2018. At the time of drafting of this Decision, the disputed domain name resolved to pay-per-click website. According to evidence provided by the Complainant, the disputed domain name has been used to send fraudulent emails to at least one of the Complainant’s vendors.
5. Parties’ Contentions
The Complainant argues that the only element of difference between the disputed domain name and the Complainant’s trademark is related to the use of the lowercase letter “I” in the disputed domain name, and can mislead Internet users. The Complainant alleges that the Respondent’s conduct is recognized as “typosquatting”.
The Complainant argues that the disputed domain name is identical or at least confusingly similar to its unregistered TITUS and TITUS INDUSTRIAL trademarks.
The Complainant argues that the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent is not affiliated with the Complainant and there is no evidence to suggest that the Respondent has registered the disputed domain name to advance legitimate interests. The Complainant has never licensed or otherwise permitted the Respondent to use its trademark or to register any domain name including its trademark.
The Complainant further argues that the disputed domain name was registered and is being used in bad faith, within the meaning of paragraph 4(b)(iv) of the Policy. The Complainant requests that the disputed domain name be transferred to it.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must prove 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 was registered and is being used in bad faith.
These elements are discussed in turn below. In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
A. Identical or Confusingly Similar
The Complainant has shown it owns unregistered trademark rights in the TITUS and TITUS INDUSTRIAL trademarks through evidence of sales and use for purposes of the Policy.
The disputed domain name <tituslndustrial.com> is confusingly similar to the Complainant’s trademarks TITUS and TITUS INDUSTRIAL. The sole replacement of the capital letter “I” of “Industrial” with the lowercase letter “l” as per “London” does not eliminate the confusing similarity. This kind of “typosquatting” is based on confusion resulting from typing errors commonly made by Internet users (see Wikimedia Foundation Inc. v. Kevo Ouz a/k/a Online Marketing Realty, WIPO Case No. D2009-0798).
In view of the above, the Panel finds that the disputed domain name registered by the Respondent is confusingly similar to the Complainant’s trademarks, in which the Complainant has demonstrated, to the satisfaction of the Panel, that it has rights through commercial use of the product under its trademarks for several years.
The first element of the Policy has, therefore, been met.
B. Rights or Legitimate Interests
According to the Policy, paragraph 4(a)(ii), the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent is not in any way affiliated with the Complainant, nor has the Complainant authorized or licensed the Respondent to use its trademarks, or to seek registration of any domain name incorporating said trademarks.
The Respondent has not demonstrated that it has rights or legitimate interests in the disputed domain name. The Complainant contends that there is no relationship with the Respondent that gives rise to any license, permission, or other right to which the Respondent could enjoy such use of any domain name incorporating the Complainant’s TITUS and TITUS INDUSTRIAL trademarks.
The Complainant has provided evidence that the disputed domain name is used to disrupt the Complainant’s business. The Respondent has attempted to communicate with the Complainant’s vendors under the guise of fraudulent email accounts. Upon information and belief, a competitor of the Complainant has registered the disputed domain name, and is impersonating Complainant, in an effort to obtain confidential information. See Banco Bradesco S.A. v. Fernando Camacho Bohm, WIPO Case No. D2010-1552.
The Panel finds no evidence that the Respondent has used, or undertaken any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
Likewise, no evidence has been adduced that the Respondent has been commonly known by the disputed domain name; nor, for the reasons mentioned above, is the Respondent making a legitimate noncommercial or fair use of the disputed domain name.
The Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain name. On the record, the Panel therefore finds that the Complaint fulfills the second element of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The fact that the disputed domain name is being used to send phishing emails is a strong indication that the Respondent’s intentions for the disputed domain name are also not well-meaning.
On the basis of the above, the Panel finds that the Respondent registered the disputed domain name to disrupt the Complainant’s business and attract Internet users, for commercial gain, by creating a likelihood of confusion with the Complainant’s trademarks and domain names (Policy, paragraphs 4(b)(iii) and (iv)).
Accordingly, this Panel finds that the disputed domain name was registered and is being used in bad faith by the Respondent.
On this basis, the Panel finds that the Complainant has satisfied the third element of the Policy (paragraph 4(a)(iii)).
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 <tituslndustrial.com> be transferred to the Complainant.
Date: February 13, 2019