WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Compagnia Generale Telemar S.p.A. v. chu cash
Case No. D2019-1445
1. The Parties
The Complainant is Compagnia Generale Telemar S.p.A., Italy, represented by Inlex IP Expertise, France.
The Respondent is chu cash, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <telernar.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 June 21, 2019. On June 24, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 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 Complain 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 July 4, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 24, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 25, 2019.
The Center appointed Mihaela Maravela as the sole panelist in this matter on August 12, 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 an Italian company operating internationally, specializing in providing telecommunications and Internet services and providing an integrated offering of marine bridge electronics, onboard and maintenance services, as well as satellite communications.
The Complainant is the exclusive owner of a number of registered trademarks consisting of the word “telemar” in various jurisdictions throughout the world, including the following:
- the Benelux Trade Mark for TELEMAR with registration number 0780651, registered on November 30, 2005;
- the Italian Trademark for TELEMAR, having registration number 302015000082867, registered on December 21, 2016.
The Complainant is the owner of domain name registrations containing the TELEMAR trademark, respectively, <telemargroup.com> and <telemarspa.it>.
The disputed domain name was registered in June 14, 2019, and does not resolve to an active website. According to the evidence provided by the Complainant, the disputed domain name has been used as an email address pretending to be the acounting assistant for one of the Complainant’s subsidiaries.
5. Parties’ Contentions
The Complainant argues that the disputed domain name is highly similar to the Complainant’s TELEMAR trademark since the only difference is the replacement of the fifth letter “m” from the Complainant’s trademark with two letters “r” and “n” in the disputed domain name. The Complainant argues these two lowercase letters together, “rn”, are very close to the lowercase “m” on a visual standpoint and the difference is located in the middle of the sign and will not catch the attention of an Internet user. The Complainant further shows that the substitution of the letter “m” with the two letters “r” and “n” is a classical typosquatting case and the confusion in Internet users’ mind is unavoidable.
The Complainant also argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name as there is no business or legal relationship between the Complainant and the Respondent. The Complainant has neither authorized nor licensed the Respondent to use its trademarks in any way. Also, the Respondent is not commonly known under the disputed domain name and no link between the name TELEMAR and the Respondent is revealed by public searches. Moreover, the Respondent has provided false contact information when registering the disputed domain name.
In addition, the Complainant contends that the Respondent has created email exchanger records (MX Record) for sending emails and that the Respondent uses the MX Record to create and use an email address impersonating an employee of the Complainant, such as the accounting assistant for one of its subsidiaries. Such email address is and has been used for sending emails to the Complainant’s customers and clients, claiming a huge amount of money based on a pending invoice. The Complainant argues that such behavior of the Respondent can be considered as phishing scam which can never confer rights or legitimate interests on a respondent.
Further, such activity is evidence of bad faith registration and use of the disputed domain name. In addition, the Complainant contends that the Respondent is involved in the reservation of many domain names, similar to famous and registered trademarks, including <telemar.us>, in this case probably with the intention to impersonate the Complainant and mislead consumers in order to fraudulently obtain money.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Notwithstanding the fact that no Response has been filed, the Panel shall consider the issues present in the case based on the statements and documents submitted by the Complainants.
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”, paragraph 15(a) of the Rules.
Paragraph 4(a) of the Policy directs that the Complainants must prove each of the following elements:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant must establish that it has a trademark or service mark and that the disputed domain name is identical or confusingly similar to that trademark or service mark for the Complainant to succeed.
Given the evidence put forward by the Complainant, the Panel is satisfied that the Complainant has proved its rights over the TELEMAR trademark.
As regards the question of identity or confusing similarity for the purpose of the Policy, it requires a comparison of the disputed domain name with the trademarks in which the Complainant holds rights. According to section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “this test 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”.
Here the disputed domain name consists of the obvious misspelling of the TELEMAR trademark of the Complainant, with the substitution of the letter “m” with the letters “r” and “n” in the disputed domain name, which are visually similar-appearing characters when put together – i.e. “rn”. This misspelling in the disputed domain names, also referred as typosquatting, is insufficient to avoid a finding of confusing similarity. See Virgin Enterprises Limited v. Registration Private, Domains by Proxy, LLC / Name Redacted, WIPO Case No. D2018-0644 (<virgingalaitic.com>); Comerica Bank v. Online Management / Registration Private, Domains By Proxy, LLC, WIPO Case No. D2014-1018, and also section 1.9 of the WIPO Overview 3.0.
It is well accepted by UDRP panels that a generic Top-Level Domain (“gTLD”), such as “.com”, is typically ignored when assessing whether a domain name is identical or confusing similar to a trademark.
This Panel concludes that the disputed domain name is identical to the Complainant’s trademarks and therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate the respondent’s rights or legitimate interests in the disputed domain name:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in section 2.1 of the WIPO Overview 3.0, which states: “[…] where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
In the present case the Complainant has established a prima facie case that it holds rights over the trademark TELEMAR and claims that the Respondent has no legitimate reason to acquire the disputed domain name.
There is no evidence that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Rather, according to the unrebutted evidence put forward by the Complainant, the Respondent used the disputed domain name for scamming activities and such activity cannot amount to a fair use of the disputed domain name by the Respondent. See Clifford Chance LLP v. WhoisGuard, Inc. / Ellen Cheung / ons onso / Domain Administrator, WIPO Case No. D2019-0050, and also section 2.13 of the WIPO Overview 3.0.
Also, there is no evidence indicating that the Respondent is commonly known by the disputed domain name, the name “telemar”, or the name “telernar”. See for a similar finding ALDI GmbH & Co. KG v. zhou xiaolei, WIPO Case No. D2014-0957.
By not replying to the Complainant’s contentions, the Respondent has failed to invoke any circumstances which could demonstrate any rights or legitimate interests in the disputed domain name. Accordingly, the Panel gives prevalence to the Complainant’s affirmation that no license or authorization was ever given for the use of the trademark TELEMAR in the disputed domain name.
With the evidence on file, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, the Complainant must establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the disputed domain name’s registration and use in bad faith.
The disputed domain name consists of a misspelling of the Complainant’s trademark TELEMAR. The email sent from the disputed domain name uses the name of the accounting assistant for one of the Complainant’s subsidiaries. Under these circumstances, it is most likely that the Respondent was aware of the Complainant’s trademark at the registration of the disputed domain name and sought to take advantage of the TELEMAR trademark.
Furthermore, according to the evidence submitted by the Complainant, the Respondent used the disputed domain name shortly after registration to pass-off as the accounting assistant for one of the Complainant’s subsidiaries, TELEMAR Singapore PTE LTD, apparently as part of a phishing scam. Given such evidence, the Panel agrees with previous UDRP decisions that, “the Respondent’s fraudulent use of the disputed domain name, which began almost immediately after its registration, confirms the possibility that the disputed domain name was registered to conduct a ‘social engineering’ attack or other type of scam”. For such reasons, the Panel finds that the Respondent must have been fully aware of the Complainant’s trademarks and activities when it registered the disputed domain name. See, e.g., Virgin Enterprises Limited v. Vincent Battista, WIPO Case No. D2018-1416.
As regards the use of the disputed domain name, given that the Respondent has registered the disputed domain name with a misspelling of the Complainant’s trademarks (“typosquatting”), an intention of the Respondent to attract Internet users and consumers for commercial gain by creating a likelihood of confusion with the Complainant and its business can be inferred. See Virgin Enterprises Limited v. On behalf of virgnimedia.com Owner, c/o whoisproxy.com / Tulip Trading Company, WIPO Case No. D2018-1135.
The Complainant argues that the Respondent is using the disputed domain name to impersonate the identity of an employee of the Complainant for purposes of sending emails to the Complainant’s customers and clients claiming a huge amount of money based on a pending invoice. The evidence put forward by the Complainant in this respect has not been rebutted by the Respondent.
The use of a domain name to send deceptive emails, e.g., to obtain sensitive or confidential personal information from prospective job applicants, or to solicit payment of fraudulent invoices by the complainant’s actual or prospective customers and employees constitutes bad faith on the side of the Respondent (section 3.4 of the WIPO Overview 3.0). See for similar findings, e.g. Elecnor, S.A. v. Helroo, Safop.biz, WIPO Case No. DCO2017-0044.
In the Panel’s view, these circumstances represent evidence of registration and use in bad faith of the disputed domain name. The Respondents failed to bring evidence as to the contrary. Consequently, the Panel concludes that the condition of paragraph 4(a)(iii) 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 <telernar.com> be transferred to the Complainant.
Date: August 26, 2019