WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Beiersdorf AG v. PrivacyGuardian.org / Edward Peter Inc.
Case No. D2019-0149
1. The Parties
The Complainant is Beiersdorf AG of Hamburg, Germany represented by Hedi Schmidt, Germany.
The Respondent is PrivacyGuardian.org of Phoenix, Arizona, United States of America (“United States”) / Edward Peter Inc of New York, United States.
2. The Domain Name and Registrar
The disputed domain name <beiersdorfs.com> (‘the Domain Name’) is registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 23, 2019. On January 23, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 24, 2019, 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 February 1, 2019 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 amendment to the Complaint on February 5, 2019.
The Center verified that the Complaint and Amendment to 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 7, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 28, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 28, 2019.
The Center appointed Dawn Osborne as the sole panelist in this matter on March 5, 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.
4. Factual Background
The Complainant is the owner of the trade mark BEIERSDORF registered, inter alia, in the European Union in 1996 (European Union registration No. 363143).
The Domain Name registered in 2018 has been used in an e-mail scam.
5. Parties’ Contentions
The Complainant’s contentions can be summarised as follows:
The Complainant was founded in 1882 and is the owner of the trade mark BEIERSDORF for cosmetics and skincare first registered on April 10, 1900 in Germany. It is the owner of <beiersdorf.com>.
The Respondent has no rights or legitimate interests in the Domain Name. It is not authorised by the Complainant.
The Domain Name registered in 2018 has been registered and used in bad faith to confuse Internet users in particular in an e mail scam requesting payment of fraudulent invoices.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Domain Name in this Complaint combines a misspelling of the Complainant’s BEIERSDORF mark (registered, inter alia, in the European Union since 1996 for cosmetic and medical goods) adding merely the letter “s” and the generic Top-Level Domain (“gTLD”) .com.
The addition of a single letter “s” and/or a gTLD does not negate confusing similarity between a domain name and a trade mark contained within it.
Accordingly, the Panel finds that the Domain Name is confusingly similar to a mark in which the Complainant has rights for the purpose of the Policy.
B. Rights or Legitimate Interests
The Complainant has not authorised the use of its mark or a sign confusingly similar to it. The Respondent has not answered this Complaint and there is no evidence or reason to suggest the Respondent is, in fact, commonly known by the Domain Name.
The Domain Name has been used in an attempted fraudulent e-mail scheme designed to be deceptive and confusing and an impersonation by the Respondent of the Complainant. As such it cannot amount to a bona fide offering of goods and services or a legitimate noncommercial or fair use.
As such the Panel finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
C. Registration and Use in Bad Faith
Impersonating a complainant by use of the complainant’s mark in an attempted fraudulent e-mail scam is disruptive and the fraudulent e-mail scam attempt is confusing in that recipients of any such mails would reasonably believe those e-mails are connected to or approved by the Complainant as a misspelling of the Complainant’s mark is used. This mimicking by the Respondent of the Complainant shows that the Respondent was aware of the Complainant and its business and rights and constitutes impersonation. Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users by creating a likelihood of confusion with the Complainant’s trade marks as to the source, sponsorship, affiliation or endorsement of electronic content on the Internet under Policy 4 (b)(iv).
Typosquatting in the circumstances is evidence of relevant bad faith registration and use.
As such, the Panel believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under para 4(b)(iv) and 4 (b)(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 <beiersdorfs.com> be transferred to the Complainant.
Date: March 8, 2019