WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Henkel AG & Co. KGaA v. WhoisGuard Protected, WhoisGuard, Inc. / Wyatt Hyatt, WyattHyatt Inc.

Case No. D2019-0403

1. The Parties

The Complainant is Henkel AG & Co. KGaA of Düsseldorf, Germany, represented by Day Pitney LLP, United States of America (“United States”).

The Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama, Panama / Wyatt Hyatt, WyattHyatt Inc of New York, New York, United States of America (“United States”).

2. The Domain Names and Registrar

The disputed domain names <henkkel.com> and <sexyhairs.co> (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 February 20, 2019. On February 21, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On February 21, 2019, 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 February 25, 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 amended Complaint on March 1, 2019.

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 March 5, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 25, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 26, 2019.

The Center appointed John Swinson as the sole panelist in this matter on April 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 Henkel AG & Co. KGaA, a company incorporated in Germany. The Complainant was founded in 1876. The Complainant is a global chemical goods developer and manufacturer providing hair care, beauty care and home care products for consumers, and adhesives, sealants and functional coatings for industrial clients.

The Complainant has various trade marks for HENKEL and SEXY HAIR in various jurisdictions (the “Trade Marks”) including:

- United States registration number 3,286,561 for HENKEL registered on August 28, 2007; and
- United States registration number 4,446,753 for SEXY HAIR registered on December 10, 2013.

The Complainant also owns domain names which incorporate the Trade Marks, being <henkel.com> and <sexyhair.com>.

The Respondent is Wyatt Hyatt, WyattHyatt Inc, of New York, United States. No response was received from the Respondent and consequently little information in known about the Respondent. The Respondent registered the Disputed Domain Names on November 19, 2018. The Disputed Domain Names do not currently resolve to active websites, however, evidence submitted in the Complaint indicates the Disputed Domain Names were used in a fraudulent email scheme.

5. Parties’ Contentions

A. Complainant

Identical or Confusingly Similar

The Disputed Domain Names are confusingly similar to the Trade Marks. The Disputed Domain Names incorporate the Trade Marks in their entirety. The addition of the letter “k” to the <henkkel.com> domain name, and the addition of the letter “s” in the <sexyhairs.co> domain name do not distinguish the Disputed Domain Names from the Trade Marks. By registering the Disputed Domain Names, the Respondent has engaged in typosquatting.

Rights or Legitimate Interests

The Respondent has no bona fide rights or legitimate interests in respect of the Disputed Domain Names. The Respondent’s registration of the Disputed Domain Names is fraudulent, as the Respondent has attempted to impersonate the Complainant and solicit payment from the Complainant’s business partners. The Respondent is not using the Disputed Domain Names for any purpose other than to facilitate an email‑based fraud scheme, as the Disputed Domain Names do not resolve to any substantive website content.

The Respondent has no rights or legitimate interests in the Disputed Domain Names. The Respondent does not have any license, authorization or consent from the Complainant to use the Trade Marks. The Respondent has no connection or affiliation with the Complainant. The Respondent’s registration and use of the Disputed Domain Names is intended to mislead the Complainant’s business partners and consumers for commercial gain by profiting from the similarity between the Dispute Domain Names and the Trade Marks.

Registered and Used in Bad Faith

The Respondent’s activities constitute bad faith. The Respondent is using the Disputed Domain Names as the origin for phishing emails to intentionally attempt to attract, for commercial gain, payment from Complainant’s distributors. The Respondent has used the name of the Complainant’s actual headquarters in order to carry out the fraudulent scheme impersonating the Complainant.

The Respondent has already been found to have engaged in abusive domain name registration (see Sexy Hair Concepts, LLC v. WhoisGuard Protected, WhoisGuard, Inc. / Wyatt Hyatt, WIPO Case No. D2018-2779; Henkel AG & Co. KGaA v. Wyatt Hyatt / WyattHyatt Inc, FA1812001819416) and therefore has engaged in a pattern of abusive conduct. The Respondent’s use of a privacy service is further evidence of bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:

(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 Respondent has 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 in bad faith.

The onus of proving these elements is on the Complainant.

A. Procedural Issues

Consolidation

This Complaint is in relation to two domain names. Paragraph 3(c) of the Rules provides that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder. Paragraph 10(e) of the Rules gives the Panel discretion to decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and the Rules.

In this instance, the Disputed Domain Names are owned by the same Respondent and both relate to trade marks owned by the Complainant. Accordingly, this Panel concludes that the consolidation of the multiple domain name disputes asserted by the Complainant against the Respondent is consistent with the Policy and Rules.

Response

The Respondent’s failure to file a formal Response does not automatically result in a decision in favor of the Complainant (see, e.g., Airbus SAS, Airbus Operations GmbH v. Alesini Pablo Hernan / PrivacyProtect.org, WIPO Case No. D2013-2059). However, the Panel may draw appropriate inferences from the Respondent’s lack of a formal Response.

B. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Names are identical or confusingly similar to the Trade Marks.

The Disputed Domain Names are misspellings of the Trade Marks. The addition of the letter “k” to the middle of the <henkkel.com> domain name, and the addition of the letter “s” at the end of the <sexyhairs.co> domain name do not prevent the confusing similarity between the Disputed Domain Names and the Trade Marks.

A domain name which consists of a common, obvious, or intentional misspelling of a trade mark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element. Accordingly, the Panel considers that the Disputed Domain Names are confusingly similar to the Trade Marks and that this is case of typosquatting. The Complainant succeeds on the first element of the Policy.

C. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.

The Panel considers the Complainant has made out a prima facie case. This finding is based on the following:

- The Respondent has not used, or made demonstrable preparations to use, the Disputed Domain Names in connection with a bona fide offering of goods or services. The Complainant has provided evidence that the Respondent is attempting to mislead the Complainant’s business partners and consumers for commercial gain by profiting from the similarity between the Dispute Domain Names and the Trade Marks. The Panel finds that the Respondent is using the Disputed Domain Names as the origin for these phishing emails. Phishing websites are illegal in most jurisdictions and cannot amount to a bona fide offering of goods or services (see the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.13, and, e.g., Diageo Ireland v. Guinnessclaim, WIPO Case No. D2009-0679).

- The Panel accepts the Complainant’s submission that the Complainant has not authorized or otherwise given the Respondent permission to use the Disputed Domain Names.

- There is no evidence that the Respondent has been commonly known by the Disputed Domain Names, or has registered or common law trade mark rights in relation to these names.

- The Respondent has not been making a legitimate noncommercial or fair use of the Disputed Domain Names without intent for commercial gain. As stated above, the Respondent is attempting to use the Disputed Doman Names to profit off the Complainant’s reputation and Trade Marks.

- As previous panels have found, typosquatting does not usually constitute a legitimate use of the Disputed Domain Name (see, e.g., Edmunds.com, Inc. v. Yingkun Guo, dba This domain is 4 sale, WIPO Case No. D2006-0694; Barnes & Noble College Bookstores, Inc. v. Oleg Techino, WIPO Case No. D2006-1537).

The Respondent had the opportunity to demonstrate its rights or legitimate interests, but did not do so. As such, the prima facie case established by the Complainant has not been rebutted and the Complainant succeeds on the second element of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Names in bad faith.

The Complainant was founded in 1876. The Complainant has had registered rights in the HENKEL trade mark since 2007 and registered rights in the SEXY HAIR trade mark since 2013. The Complainant’s registration of the Trade Marks predates the registration of the Disputed Domain Names by a number of years. The Panel is satisfied that the Complainant has built up a successful reputation in both of these brands. The Panel considers that the Respondent registered the Disputed Domain Names with the Complainant in mind.

The Complainant submits that the email addresses associated with the Disputed Domain Names are being used in connection with a phishing scam. The Complainant has provided copies of emails in which the Respondent has used the email address to inform the Complainant’s customers that their bank details have changed. In light of this, the Panel can reasonably infer that the Respondent is using the email addresses associated with the Disputed Domain Names for some illegitimate purpose, and likely to fraudulently obtain funds through the Complainant’s customers. The use of a domain name for illegitimate activity such as phishing can never confer rights or legitimate interests on a respondent; such behavior is manifestly considered evidence of bad faith (see section 3.1.4 of the WIPO Overview 3.0).

The Respondent has already been found to have engaged in abusive domain name registration (see Sexy Hair Concepts, LLC v. WhoisGuard Protected, WhoisGuard, Inc. / Wyatt Hyatt, WIPO Case No. D2018-2779; Henkel AG & Co. KGaA v. Wyatt Hyatt / WyattHyatt Inc, NAF Claim No. 1819416) and therefore has engaged in a pattern of abusive conduct.

It is clear that the Respondent knew of the Complainant and it is highly likely that the Respondent registered the Disputed Domain Names because of the reputation of the Complainant’s trade marks.

The Respondent’s use of a privacy service when registering the Disputed Domain Names supports the Panel’s conclusion regarding bad faith.

In light of the above, and in the absence of a response and any evidence rebutting bad faith registration and use, the Complainant succeeds on the third element of the Policy.

7. Decision

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 <henkkel.com> and <sexyhairs.co> be transferred to the Complainant.

John Swinson
Sole Panelist
Date: April 19, 2019