WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ingenico Group v. Sammi Wilhi, Lng Group Pty Ltd
Case No. D2019-1079
1. The Parties
The Complainant is Ingenico Group, France, represented by Markplus International, France.
The Respondent is LNG GROUP PTY LTD / Sammi Wilhi, Lng Group Pty Ltd Australia.
2. The Domain Names and Registrar
The disputed domain name <ingeniico.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 May 9, 2019. On May 10, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 11, 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 May 13, 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 May 16, 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 May 17, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 6, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 7, 2019.
The Center appointed Reynaldo Urtiaga Escobar as the sole panelist in this matter on June 20, 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.
The proceeding is conducted in English, this being the language of the registration agreement for the disputed domain name, as confirmed by the Registrar.
4. Factual Background
The Complainant is a France-based payment solutions company delivering point of sale terminals, software, and payment services covering in-store, online, and mobile channels in 170 countries. The Complainant’s website is “www.ingenico.com”.
The Complainant owns the following international trademark registrations:
No. 1004927 for INGENICO (word mark), with a registration date of October 9, 2008, covering goods and services included in international classes 9, 16, 35, 36, 37, 38, and 42. The trademark registration has been renewed through October 9, 2028.
No. 1210578 for INGENICO (figurative mark), with a registration date of January 3, 2014, covering goods and services included in international classes 9, 35, 36, 37, 38, and 42. The trademark registration has been renewed through January 3, 2024.
Copies of the respective trademark registration certificates were appended to the Complaint. Both international trademark registrations take effect in Australia, the Respondent’s country of record.
The disputed domain name was registered by the Respondent on May 2, 2019. The disputed domain name has been used in connection with email accounts and messages impersonating the Complainant.
5. Parties’ Contentions
In summary, the Complainant contends as follows:
i) The Complainant and its INGENICO mark enjoy a worldwide reputation;
ii) The Complainant owns numerous INGENICO trademark registrations around the world;
iii) The Respondent’s address on WhoIs seems to be fake for it corresponds to a coffee shop named Gumption (“www.gumptioncoffee.com”);
iv) The disputed domain name reproduces the Complainant’s mark with the addition of one “i”, which is a typical typosquatting conduct;
v) The “.com” generic Top-Level Domain (“gTLD”) is not to be taken into account when assessing confusing similarity under the Policy;
vi) The Respondent is not affiliated with the Complainant in any way, nor has it been authorized by the Complainant to use and register its INGENICO mark, or seek registration of any domain name incorporating said mark;
vii) The Respondent has used the disputed domain name to impersonate the Complainant by sending fraudulent emails to the Complainant’s customers;
viii) An email address sent by the Respondent was supposedly signed by a Complainant’s employee, and included the INGENICO logo, to make recipients believe that said email originated from the Complainant;
ix) The Respondent has used the disputed domain name for phishing purposes to steal sensitive information or receive bank deposits from the Complainant’s deceived customers;
x) Given the INGENICO mark’s reputation, opportunistic bad faith can be inferred from the Respondent’s misappropriation and use of the disputed domain name;
xi) Considering that the disputed domain name falls within a typical typosquatting scenario, it is impossible that the Respondent did not have the Complainant’s INGENICO mark in mind when registering the disputed domain name;
xii) Previous UDRP panels have held that typosquatting is evidence of bad faith registration per the Policy;
xiii) Fraudulent emails have been sent to the Complainant’s customers by using the disputed domain name, which demonstrate that the disputed domain name has been primarily registered for phishing purposes.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed in this administrative proceeding, 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 first element has a low threshold for it merely serves as a standing requirement under the Policy. See section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) (the standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name).
The Complainant holds international trademark registrations No. 1004927 (word mark) and No. 1210578 (figurative mark) for INGENICO.
The disputed domain name is exclusively formed with the Complainant’s INGENICO mark, plus an additional “i”, which falls within a prototypical example of typosquatting.
The “.com” extension in the disputed domain name is viewed as standard registration suffix and as such is disregarded under the first element.
Under these circumstances, the Panel finds that the disputed domain name is virtually identical or at the very least confusingly similar to the INGENICO mark on which the Complaint is based.
The Complainant has therefore satisfied its burden of proof for this element of the Policy.
B. Rights or Legitimate Interests
The second element under the Policy is that the Respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii)). Paragraph 4(c) of the Policy provides that “any 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 [the Respondent’s] 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.”
As noted in section 2.1 of the WIPO Overview 3.0, the onus is on the Complainant to establish the absence of the Respondent’s rights or legitimate interests in the disputed domain name. However, because of the inherent difficulties in proving a negative, the consensus view is that the Complainant need only put forward a prima facie case that the Respondent lacks rights or legitimate interests. The burden of production then shifts to the Respondent to rebut that prima facie case (see also, e.g., World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306).
The Respondent has not been authorized by the Complainant to use the INGENICO mark in connection with the disputed domain name or otherwise. Likewise, there is no evidence in the file to indicate that the Respondent is commonly known by the disputed domain name.
The Complainant has put forward a prima facie case of the Respondent’s lack of rights or legitimate interests in the disputed domain name, while the Respondent did not allege, much less prove, that it has rights or legitimate interests under the Policy.
Furthermore, the Respondent’s sending of emails impersonating the Complainant cannot be characterized as a bona fide use of the disputed domain name as it is well-settled that the use of a domain name for fraudulent and phishing purposes negates rights and legitimate interests within the purview of the Policy. See paragraph 2.13 of WIPO Overview 3.0, “Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent.”
In sum, the Panel finds that the Respondent does not possess rights or legitimate interests in the disputed domain name.
The Complainant has satisfied its burden of proof for this element of the Policy.
C. Registered and Used in Bad Faith
Pursuant to Policy, paragraph 4(a)(iii), in order to be granted relief, the Complainant must show that the disputed domain name was registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets forth the following non-exhaustive grounds of bad faith registration and use:
“(i) circumstances indicating that you [the respondent] have registered or 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 your [the respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) you [the respondent] have 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 you [the respondent] have engaged in a pattern of such conduct; or
(iii) you [the respondent] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you [the respondent] have intentionally attempted to attract, for commercial gain, Internet users to your [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 your [the respondent’s] website or location or of a product or service on your [the respondent’s] website or location.”
First off, the Panel finds that the Respondent’s typosquatting in and of itself constitutes bad faith registration of the disputed domain name for the purpose of Policy paragraph 4(a)(iii).
Furthermore, the Complainant has shown that the Respondent registered and used the disputed domain name to operate a scam aimed to obtain personal information and bank deposits from the Complainant’s customers.
The Panel holds that the Respondent tarnished the Complainant’s brand and reputation by including the INGENICO trademarked logo in the fraudulent emails.
The Panel also finds that the Respondent’s use of the disputed domain name for phishing purposes constitutes bad faith in and of itself.
Lastly, the Panel notes that the Respondent’s contact information on WhoIs is bogus, which lends support to a finding of bad faith.
In sum, the Panel is persuaded that the disputed domain name was registered and has been used in bad faith under the Policy.
Thereby, the Complainant has discharged its burden in relation to paragraph 4(a)(iii) of the Policy.
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 <ingeniico.com> be transferred to the Complainant.
Reynaldo Urtiaga Escobar
Date: July 12, 2019