WIPO Arbitration and Mediatin Center

ADMINISTRATIVE PANEL DECISION

Erb Transport Limited v. Contact Privacy Inc. / Michael Baic, Erb Group

Case No. D2019-0741

1. The Parties

The Complainant is Erb Transport Limited, Canada, represented by Gowlings WLG (Canada) LLP, Canada.

The Respondent is Contact Privacy Inc., Canada / Michael Baic, Erb Group, Canada.

2. The Domain Name and Registrar

The disputed domain name <erbgroups.com> is registered with Google LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 2, 2019. On April 2, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 2, 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 April 8, 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 April 8, 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 April 11, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 1, 2019. The Center received four email communications from a third party between April 16 and May 8, 2019. The Center did not receive any formal Response. Accordingly, on May 8, 2019 the Center informed the Parties it will proceed to panel appointment.

The Center appointed Cherise Valles as the sole panelist in this matter on May 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.

4. Factual Background

The Complainant is a transportation and trucking company founded in 1959. It has over 1500 employees, and has terminals in across Canada as well as in 48 U.S. states.

The Complainant owns a number of Canadian and U.S. trademarks for ERB, including the following:

- Canadian trademark No. TMA608026 for ERB, registered on April 20, 2004 in classes 35 and 39;
- Canadian trademark No. TMA613406 ERB Design, registered on June 22, 2004 in classes 35 and 39;
- Canadian trademark No. TMA608013 for ERB-X Design, registered on April 20, 2004 in class 39;
- United States trademark No. 2731646 for ERB, registered on July 1, 2003 in classes 35 and 39; and
- United States trademark No. 2761097 for ERB Design, registered on September 9, 2003 in classes 35 and 39.

The Complainant is also the owner of the common law trademarks ERB GROUP and ERBGROUP.COM by virtue of extensive and continuous use since at least 1998 in association with, inter alia, online information services in the field of trucking and transportation.

The disputed domain name was registered on February 23, 2019.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that each of the elements enumerated in paragraph 4(a) of the Policy and the corresponding provisions in the Rules have been satisfied. In particular, the Complainant asserts that:

The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.

- The disputed domain name is confusingly similar to the Complainant’s registered trademark, ERB, in light of the fact that it wholly incorporates the Complainant’s mark.

The Respondent lacks rights or legitimate interests in the disputed domain name.

- The Complainant states that the Respondent should be considered as having no rights or legitimate interests in the disputed domain name. The Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name that included its trademarks.

The disputed domain name has been registered and is being used in bad faith.

- The Complainant asserts that the disputed domain name was registered and is being used in bad faith. The disputed domain name was used to impersonate the Complainant with the intention of attempting to defraud the Complainant’s customers and providers.

The Complainant requests the Panel to issue a decision finding that the disputed domain name be transferred to the Complainant, in accordance with paragraph 4(i) of the Policy. In the cover email to of April 8, 2019, to the Amended Complaint, the Complainant requested that the following comments be considered by the Panel as part of the Amended Complaint:

It is a well-established principle that the adoption of a fake or fictitious identity is evidence of bad faith as per the Policy (Crédit Industriel et Commercial S.A. v. Joaquim Veiga, WIPO Case No. D2016-0833; Compagnie Generale des Etablissements Michelin-Michelin & Cie. v. Tgifactory, WIPO Case No. D2000-1414; Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

As held by the panel in Compagnie Genrale des Etablissements Michelin-Michelin & Cie. v. Tgifactory, “the fact that the Domain Name was registered under the fictitious name of a non-existing entity is a further indication that the Domain Name was registered in bad faith by the individual who purported to act under the name of TGIFACTORY. (Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003; 3636275 Canada, dba eResolution v. eResolution.com, WIPO Case No. D2000-0110; Parfums Christian Dior v. Javier Garcia Quintas and christiandior.net; WIPO Case No. D2000-0226; Hyosung Corporation v. HH, WIPO Case No. D2000-0236).”

The Complainant further stated that it has no record of Mr. Michael Baic working at Erb Group and that the email address, namely, provided is unconnected to the Complainant.

Accordingly, the identity of the Respondent is fictitious and further supports a finding of bad faith as per the Policy. This is particularly the case given that the Respondent has misappropriated the disputed domain name in furtherance of a fraudulent scheme.

B. Respondent

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

6. Discussion and Findings

The Policy provides specific remedies to trademark owners against registrants of domain names where the owner of the mark (a complainant) establishes each of the following elements:

- the domain name is identical or confusingly similar to a trademark in which the complainant has rights;

- the respondent has no rights or legitimate interests in respect of the domain name; and

- the domain name was registered and is being used in bad faith.

The Complainant has the burden of proof in establishing each of these elements.

The Respondent has failed to file a Response in this proceeding. The Panel may draw appropriate inferences from the available evidence submitted by the Complainant.

A. Identical or Confusingly Similar

To prove this element, the Complainant must have trademark rights and the disputed domain name must be identical or confusingly similar to the Complainant’s trademark.

The disputed domain name <erbgroups.com> consists of the Complainant’s ERB trademark and the generic term “groups”. Previous UDRP panels have found that the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for the purposes of the Policy (see, e.g., Research In Motion Limited v. One Star Global LLC, WIPO Case No. D2008-1752). Moreover, the disputed domain name is nearly identical to the Complainant’s ERB GROUP and ERBGROUP.COM trademarks.

Previous UDRP panels have held that the generic Top-Level Domain (“gTLD”) “.com” is not to be taken into account when assessing whether a domain name is identical or confusingly similar to a trademark. See, e.g., Research In Motion Limited v. International Domain Names Inc./Moniker Privacy Services, WIPO Case No. D2008-0780. The gTLD “.com” cannot be used as an element of distinction between the disputed domain name and the Complainant’s registered trademark.

In the light of the foregoing, the Panel finds that the disputed domain name <erbgroups.com> is confusingly similar to the Complainant’s registered trademark and that paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

The burden of proof is on the Complainant to establish that the Respondent lacks rights or legitimate interests in the disputed domain name. Under the UDRP, if a prima facie case is established by the Complainant, then the burden of production of evidence shifts to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name.

Paragraph 4(c) of the Policy enumerates three non-exclusive ways in which a respondent may demonstrate rights or legitimate interests in a domain name (with “you” referring to the respondent):

“[a]ny of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

The Respondent did not submit a response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws adverse inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b).

The Panel understands that there has never been any relationship between the Complainant and the Respondent. The Respondent is not licensed, or otherwise authorized, be it directly or indirectly, to register or use, the Complainant’s trademarks in any manner whatsoever, including in, or as part of, a domain name.

Previous UDRP panels have held that an unauthorized party cannot claim a legitimate interest in a domain name that contains, or is confusingly similar to, a complainant’s mark, as the activities of such a party cannot be said to constitute a bona fide offering of goods or services. See, e.g., Dr. Ing. h.c. F. Porsche AG v. ANC Online Avrasya Bilisim Tekn San ve Dis Tic A S, WIPO Case No. D2006-0912. Further, it has been held by previous UDRP panels that use that intentionally trades on the notoriety of another cannot constitute a bona fide offering of goods or services. See Chanel, Inc. v. Cologne Zone, WIPO Case No. D2000-1809.

It has also been established that using a disputed domain name in as part of an email address in order to impersonate a complainant as part of a fraudulent scheme constitutes prima facie evidence of a lack of legitimate rights. See, e.g., TVS Motor Company Limited v. Vistaprint Technologies Limited, WIPO Case No. DCO2014-0007.

There is no evidence to suggest that the Respondent has ever used, or demonstrated preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. The Respondent registered the disputed domain name as part of a fraudulent scheme to extract money from unsuspecting individuals who believed that the Respondent was the Complainant. Using the disputed domain name as part of an email address that is virtually identical to that of the Complainant created the false impression that an email sent by the Respondent was in fact sent by the Complainant. Furthermore, the use of the Complainant’s stylized ERB trademark in the Respondent’s email signature is further evidence of an intention to deceive.

In the light of the foregoing, the Panel finds that the Complainant has established an unrebutted prima facie case and concludes that paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;

(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;

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line 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 its website or location.

Previous UDRP panels have held that using a disputed domain name as an email address to impersonate a complainant in the furtherance of a fraudulent scheme is evidence of bad faith. See TVS Motor Company Limited v. Vistaprint Technologies Limited, WIPO Case No. DCO2014-0007.

The disputed domain name wholly incorporates the Complainant’s ERB trademark and is virtually identical to the ERB GROUP and ERBGROUP.COM trademarks. The disputed domain name would likely confuse potential consumers into believing that the Respondent is somehow affiliated with, or endorsed by, the Complainant.

The fact that the disputed domain name <erbgroups.com> is being passively held by the Respondent cannot constitute bona fide use, nor can it confer any rights or legitimate interests in this domain name. It has been established by previous UDRP panels that passive holding does not, as such, confer any rights or legitimate interests in the domain name. Moreover, the use of the disputed domain name as an email address in furtherance of a fraudulent scheme constitutes use in bad faith.

The fact that the Complainant had registered its ERB trademarks and had used the ERB name for years before the registration of the disputed domain name, and that the Respondent is impersonating the Complainant through its use of the disputed domain name, suggests that the Respondent had actual knowledge of the Complainant’s ERB trademarks at the time of registration. Previous UDRP panels have found that a respondent’s actual or constructive knowledge of a complainant’s rights in a domain name at the time of registration reinforces a finding of bad faith. See, e.g., Document Technologies v. International Electronic Communications, Inc., WIPO Case No. D2000-0270.

The Complainant alleges that the Respondent has been using the disputed domain name as an instrument of fraud. It claims that the Respondent has been issuing email correspondence from the email address [“info@erbgroups.com”], as part of a calculated phishing scheme to secure financial information under the guise of offering employment at ERB Transport.

The Respondent’s emails also include the Complainant’s stylized ERB trademark as part of the email signature. By selecting a domain name that was nearly identical to the ERB GROUP and ERBGROUP.COM trademarks and domain name, it is likely that the Respondent registered the disputed domain name in an attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant as to source or sponsorship.

In addition to the above, the Respondent has engaged in typo-squatting in registering the disputed domain name. Previous panels have held that of typo-squatting is by itself evidence of bad faith registration. See, e.g., Longs Drug Stores Cal., Inc. v. Shep Dog, WIPO Case No. D2004-1069.

Accordingly, the Panel concludes that the Complainant has satisfied its burden of showing bad faith registration and use of the disputed domain name under paragraph 4(a)(iii) 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 name <erbgroups.com> be transferred to the Complainant.

Cherise Valles
Sole Panelist
Date: May 29, 2019