WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Marlink SA v. Uwe Yase / NHE
Case No. D2019-0176
1. The Parties
The Complainant is Marlink SA of Brussels, Belgium represented by Inlex IP Expertise, France.
The Respondent is Uwe Yase / NHE of Westland, Michigan, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <marlink-fr.com> is registered with Click Registrar, Inc. d/b/a publicdomainregistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 24, 2019. On January 25, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 25, 2019, 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 4, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 24, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 25, 2019.
The Center appointed Tuukka Airaksinen 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 a company based in Belgium, specialized in providing telecommunication and cyber security services in the maritime industry. It is the proprietor of the trademark MARLINK, registered inter alia as a European Union trademark No 15333487 with priority from April 13, 2016.
The disputed domain name was registered on January 14, 2019.
5. Parties’ Contentions
The disputed domain name contains the Complainant’s distinctive trademark in its entirety. The addition of the geographical indication “fr”, referring to France, merely suggests to Internet users that the disputed domain name is related to the Complainant’s business in France. It is therefore not sufficient to remove confusing similarity between the Complainant’s trademark and the disputed domain name.
The Respondent has not been authorized by the Complainant to use the trademark MARLINK or to register domain names incorporating the Complainant’s trademark. The Respondent has no rights or legitimate interests to the disputed domain name and has no bona fide or legitimate reason to use the disputed domain name.
The Respondent is taking advantage of the Complainant’s trademark by generating profits with email services attached to the disputed domain name. Immediately after registering the disputed domain name, the Respondent sent at least one email in the name of the Complainant’s Chief Executive Officer, using the disputed domain name, to ask for a payment. The Respondent’s intention was to obtain fraudulent payments.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order to obtain the transfer of a domain name, a complainant must prove the three elements of paragraph 4(a) of the Policy, regardless of whether the respondent files a response to the complaint. The first element is that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. The second element a complainant must prove is that the respondent has no rights or legitimate interests in respect of the domain name. The third element a complainant must establish is that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires that the Complainant establish that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. Consequently, the Complainant must prove that it has rights to a trademark, and that the disputed domain name is identical or confusingly similar to this trademark.
The disputed domain name includes the Complainant’s trademark in its entirety combined with the geographical abbreviation for France, namely “fr” see the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The addition of a geographic term does not prevent a finding of confusing similarity under the first element. Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s respective trademark and hence the first element of the Policy has been fulfilled.
B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires that the Complainant establish that the Respondent has no rights or legitimate interests in the disputed domain name.
It is widely accepted among UDRP panels that once a complainant has made a prima facie showing indicating the absence of the respondent’s rights or legitimate interests in a disputed domain name the burden of production shifts to the respondent to come forward with evidence of such rights or legitimate interests. If the respondent fails to do so, the complainant is deemed to have satisfied the second element of the Policy. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270 and section 2.1 of the WIPO Overview 3.0.
The Complainant has credibly submitted that the Respondent is neither affiliated with the Complainant in any way nor has he been authorized by the Complainant to use and register the disputed domain name, that the Respondent has no prior rights or legitimate interests in the disputed domain name, and that the Respondent has not made and is not making a legitimate non-commercial or fair use of the disputed domain name and is not commonly known by the disputed domain name in accordance with paragraph 4(c)(ii) of the Policy.
Accordingly, the Panel finds that the Complainant has made a prima facie case that has not been rebutted by the Respondent. In light of the Panel’s findings below, the Panel finds that there are no other circumstances that provide the Respondent with any rights or legitimate interests in the disputed domain names. Therefore, the Panel finds that the second element of the Policy is fulfilled.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the Complainant establish that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy provides that the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that [the respondent has] registered or has acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) [the respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business or competitor; or
(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.”.
The Complainant has submitted evidence that the disputed domain name was used to send email in the name of the Complainant’s Chief Executive Officer. The email was sent from the email address [email@example.com] and its content was purportedly to carry out a payment to a new vendor. The Panel considers that the disputed domain name was used in an attempt to obtain a fraudulent payment from the Complainant.
Such activity resembles closely phishing, i.e. a form of fraud that aims to obtain valuable information or monetary transaction by fraudulently causing confusion among Internet users as to the identity of the sender of the email. This is not merely evidence of bad faith, but possibly also evidence of criminal activity.
Hence, the Panel finds that the disputed domain name was registered and is being used in bad faith. Therefore, the Panel finds that the third element of the Policy is fulfilled.
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, <marlink-fr.com> be transferred to the Complainant.
Date: March 13, 2019