WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
comScore, Inc. v. Colin King
Case No. D2019-1760
1. The Parties
The Complainant is comScore, Inc., United States of America, represented by Hyland Law PLLC, United States of America (the “United States”).
The Respondent is Colin King, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <comsscore.com> (“Domain Name”) 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 July 23, 2019. On July 24, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 25, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on July 26, 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 July 31, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 20, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 21, 2019.
The Center appointed Nicholas Smith as the sole panelist in this matter on August 27, 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 Delaware corporation established in 1999, which provides cross-platform media data analytics used inter alia in electronic commerce, business marketing and public opinion polling. The Complainant owns the domain name <comscore.com> from which it operates a website. The Complainant’s domain name is also used as the domain for emails sent by employees of the Complainant.
The Complainant holds a United States trade mark for the word mark COMSCORE (the “COMSCORE Mark”) (registration 2556866), registered on April 2, 2002 for services in classes 35 and 42).
The Domain Name <comsscore.com> was registered on February 21, 2019. At the date of notification, the Domain Name was inactive. The evidence in the Complaint is that, on the day the Domain Name was registered, the Respondent used the Domain Name as the return address for an email sent by the Respondent but purporting to be an official email from a representative of the Complainant, giving directions for the payment of funds to an account unconnected to the Complainant.
5. Parties’ Contentions
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant’s COMSCORE Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the COMSCORE Mark, having registered the COMSCORE Mark in the United States. The Domain Name contains a deliberate misspelling of the COMSCORE Mark in that it adds an additional letter “s” to the COMSCORE Mark.
There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Complainant has not granted any license or authorization for the Respondent to use the COMSCORE Mark. The Respondent does not use the Domain Name for a bona fide purpose or legitimate noncommercial purpose. Rather, the Domain Name is used for emails impersonating the Complainant (phishing), which does not grant the Respondent rights or legitimate interests in the Domain Name.
The Domain Name was registered and is being used in bad faith. The Domain Name is being used, to create emails to impersonate the Complainant for the purpose of directing that amounts be paid to bank accounts other than those operated by the Complainant. This amounts to an attempt to perpetuate fraud.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the COMSCORE Mark, having registrations for the COMSCORE Mark as a trade mark in the United States.
The Domain Name consists of a misspelling of the COMSCORE Mark, adding the letter “s” to the wholly incorporated COMSCORE Mark. The Panel finds that neither this minor misspelling, nor the addition of the “.com” generic Top-Level Domain prevents a finding of confusing similarity between the COMSCORE Mark and the Domain Name. The Panel finds that the Domain Name is confusingly similar to the Complainant’s COMSCORE Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“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 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 trade mark or service mark rights; or
(iii) you are making legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.”
The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the COMSCORE Mark or a mark similar to the COMSCORE Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial use. Rather, it appears from the evidence submitted by the Complainant that the Respondent has used the Domain Name to send an email passing itself off as the Complainant and directing that a (very large) payment be made to an account unconnected to the Complainant. Such conduct is fraudulent and is not a bona fide offering of goods or services.
The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has had an opportunity to rebut the prima facie case that it lacks rights or legitimate interests but has chosen not to do so. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith (Policy, paragraph 4(b)).:
(i) circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name to the Complainant who is the owners of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) the Respondent has registered the Domain Name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(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 the Respondent’s website or location.
The Panel finds that the Respondent was aware of the Complainant at the time the Domain Name was registered. The Domain Name, on the day of registration, was used to create an email account from which the Respondent sent an email purporting to be an email from the Complainant. The Respondent does not provide, nor is it apparent to the Panel, any reason why the Domain Name was registered other than by reference to the Complainant. The registration of the Domain Name in awareness of the Complainant and its rights in the COMSCORE Mark and in the absence of rights or legitimate interests amounts to registration in bad faith.
The Respondent is using the Domain Name to send spoof emails seeking to mislead recipients as to the identity of the sender for its own commercial gain. Such conduct is deceptive, illegal, and in previous UDRP decisions has been found to be evidence of registration and use in bad faith, see The Coca-Cola Company v. Marcus Steiner, WIPO Case No. D2012-1804. The Panel finds that the Respondent is using the Domain Name in bad faith.
Accordingly, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith under 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 Domain Name, <comsscore.com>, be transferred to the Complainant.
Date: August 29, 2019