WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Afton Chemical Corporation v. Meche Kings
Case No. D2019-1082
1. The Parties
The Complainant is Afton Chemical Corporation, United States of America (“United States”), represented by Day Pitney LLP, United States.
The Respondent is Meche Kings, Nigeria.
2. The Domain Name and Registrar
The disputed domain name <aftonchimecal.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 10, 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 13, 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 May 20, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 9, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 11, 2019.
The Center appointed David J.A. Cairns as the sole panelist in this matter on June 18, 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 manufacturer of fuel and lubricant additives with offices in eighteen countries.
The Complainant is the owner of a number of trademark registrations. These registrations include the United States service mark AFTON CHEMICAL No. 3,059,527, registered on February 14, 2006; and United States trademarks AFTON CHEMICAL No. 3,121,557 and 3,136,572, registered on July 25, 2006 and August 29, 2006, respectively.
The Complainant operates a website at the domain name <aftonchemical.com>.
The disputed domain name was registered on April 14, 2019. The Panel entered the disputed domain name on June 21, 2019 and found no webpage associated with the disputed domain name. According to the evidence provided by the Complainant, the disputed domain name has been used to create an email address to send communications impersonating some of the Complainant’s employees.
5. Parties’ Contentions
The Complainant is a chemical developer and manufacturer of fuel and lubricant additives.
The Complainant first became aware of the disputed domain name when one of its customers in Indonesia received an email on April 15, 2019 from an account making use of the disputed domain name to impersonate Afton Customer Relationship Specialists. The names used were of actual Afton employees, but these individuals were not responsible for the unauthorized email. The email asked the customer to provide the date when it planned to make the next scheduled payment to the Complainant. A subsequent email sent the next day, April 16, 2019, provided the customer with new bank account details. An email sent on April 18, 2019 demanded the customer “make your payments”. The Complainant’s customer forwarded the emails to Complainant for confirmation regarding their authenticity. The Complainant confirmed the fraudulent scam and instructed its customer to disregard the emails.
The Complainant states that it is the registered owner of the AFTON CHEMICAL trademark in a number of jurisdictions, in addition to the registrations referred to above.
The Complainant states that the disputed domain name is identical or confusingly similar to the Complainant’s AFTON CHEMICAL trademark. It states that the reversing of the letters “i” and “e” and resulting misspelling of Complainant’s mark in the disputed domain name does not serve to differentiate it from the AFTON CHEMICAL trademark, and that the disputed domain name is a classic example of “typosquatting” whereby a widely known mark is intentionally misspelled in order to create a domain name that is confusingly similar to the real name. Further, the registration and use of the disputed domain name to perpetrate a phishing scam that fraudulently solicits payment from Complainant’s customers is evidence of the inescapable confusing similarity between the disputed domain name and AFTON CHEMICAL trademark, and also of the Respondent’s intention to deceive the Complainant’s customers.
The Complainant states that the Respondent has no rights or legitimate interests in the disputed domain name. It states that upon information and belief, the Respondent (i) does not own any trademark or service mark registrations encompassing the disputed domain name, nor any variations thereof; (ii) is not commonly known by the disputed domain name; and (iii) is not making a legitimate, noncommercial, or fair use of the disputed domain name without intent for commercial gain.
The Complainant says that the Respondent is not using the disputed domain name for any purpose other than to facilitate an email-based fraud scheme, as the disputed domain name does not resolve to any website content. The Respondent has used the disputed domain name to create an email address confusingly similar to the AFTON CHEMICAL trademark so as to impersonate the Complainant and fraudulently solicit payment from the Complainant’s customer. The Complainant states that such abusive use of a domain name cannot rise rights or legitimate interests in the disputed domain name. The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services.
The Complainant sates that the disputed domain name was registered and is being used in bad faith. The Complainant states that the Respondent’s activities constitute bad faith under paragraph 4(b)(iv) of the Policy. The Respondent’s attempted impersonation of two Afton Customer Relationship Specialists illustrates that the Respondent knew of the Complainant at the time of registration, and intended to carry out a fraudulent scheme impersonating the Complainant and the Complainant’s employees for purposes of soliciting fraudulent payment. The Complainant also argues that the practice of “typosquatting” has been held under the Policy to be presumptive of bad faith registration and use of a disputed domain name. The Respondent’s incorporation of the AFTON CHEMICAL trademark into the disputed domain name without any plausible explanation or permission from Complainant for doing so is further evidence of Respondent’s bad faith and registration of the disputed domain name.
The Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Panel is required to decide on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable (paragraph 15(a) of the Rules).
The Policy requires the Complainant to prove all three of the following elements to be entitled to the relief sought: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy elaborates some circumstances that shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(c) of the Policy sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all evidence presented, shall demonstrate that the Respondent has rights or legitimate interests in the disputed domain name.
A. Identical or Confusingly Similar
The Panel accepts that the Complainant owns the United States trademark registrations for AFTON CHEMICAL referred to above.
The disputed domain name is not identical to the Complainant’s AFTON CHEMICAL trademark. The disputed domain name closely replicates the Complainant’s AFTON CHEMICAL trademark but inverts the positions of the vowels “e” and “I” in the second word, to create the misspelling “chimecal”. As it is a domain name, the space between the words “afton” and “chemical” in the registrations does not appear.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7, states that the test for identity or confusing similarity “typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name”. And it continues saying that “in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”.
Section 1.9 of the WIPO Overview 3.0 states that “A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element”, and goes on to add that “Examples of such typos include […] (v) the inversion of letters and numbers”.
In the present case, the Panel considers that the disputed domain name is confusingly similar to the Complainant’s AFTON CHEMICAL service and trademarks for the following reasons: (i) the disputed domain name consists of the Complainant’s trademark with the inversion of two vowels (‘e’ to ‘i’) which does not create any new word, or give the disputed domain name any distinctive meaning; (ii) the disputed domain name is a deliberate misspelling of the one element of the Complainant’s AFTON CHEMICAL trademark (“typosquatting”); and (iii) visually and phonetically the disputed domain name so resembles the Complainant’s AFTON CHEMICAL trademark that confusing similarity is inevitable between them.
For the above reasons, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s AFTON CHEMICAL registrations.
B. Rights or Legitimate Interests
The Panel notes the following circumstances in relation to any possible rights or legitimate interests of the Respondent in the disputed domain name: (i) there is no evidence that the Respondent has any proprietary or contractual rights in any registered trademark corresponding to the disputed domain name; (ii) the Respondent is not authorized or licensed by the Complainant to use the Complainant’s AFTON CHEMICAL trademark or to register and use the disputed domain name; and (iii) there is no evidence that the Respondent has been commonly known by the disputed domain name.
Paragraph 4(c) of the Policy provides three circumstances, any of which is sufficient to evidence that the Respondent has rights or legitimate interests in the disputed domain name. In relation to paragraphs 4(c)(i) and (iii) there is no evidence that the Respondent has made any bona fide offering of goods and services or a noncommercial and fair use of the disputed domain name. Rather, the only purpose of the registration of the disputed domain name on the evidence available to the Panel has been to deceive and defraud the Complainant’s customers. The disputed domain name is not associated with any good or services, except those of the Complainant for which the Respondent is fraudulent seeking to divert payment.
The undisputed evidence of impersonation, deception and fraud nullifies any possible basis for the acquisition of rights or legitimate interests by the Respondent.
In light of the above, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that a disputed domain name was registered in bad faith and also that is being used in bad faith. Paragraph 4(b) of the Policy sets out four circumstances “in particular but without limitations” which, if found to be present by a Panel, shall be evidence of the registration and use of a domain name in bad faith.
The Panel finds that the disputed domain name was used by the Respondent immediately after registration to impersonate the Complainant in a communication with a customer of the Complainant, and to fraudulently solicit payment for the goods and services of the Complainant. The Panel concludes that the disputed domain name was registered and used for the purposes of fraudulent impersonation, which constitutes bad faith under the Policy.
Bad faith registration within the meaning of the Policy also exists in the present case because the Respondent’s choice of the term “aftonchimecal” for the disputed domain name, a misspelling of the Complainant’s AFTON CHEMICAL trademark, was not merely coincidental but was deliberate and in full knowledge of the Complainant’s registrations. This is a clear case of typosquatting which in itself, constitutes registration and use in bad faith (see National Association of Professional Baseball Leagues, Inc., d/b/a Minor League Baseball v. John Zuccarini WIPO Case No. D2002-1011; January 21, 2003: “Typosquatting […] is the intentional misspelling of words with intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith”).
There is also bad faith within the meaning of paragraph 4(b)(iv) of the Policy because the Respondent has used the disputed domain name to establish a deceptive online presence in order to attempt to attract, for commercial gain, Internet users (specifically, a customer of the Complainant) by creating a likelihood of confusion by reason of affiliation with the Complainant’s AFTON CHEMICAL trademark.
For these reasons, the Panel finds that the Respondent has registered and is using the disputed domain name in bad faith.
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 <aftonchimecal.com> be transferred to the Complainant.
David J.A. Cairns
Date: June 28, 2019