WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Wesco Aircraft Hardware Corp. v. Contact Privacy Inc. Customer 1245095601 / Gulf Guns and Gear
Case No. D2019-2131
1. The Parties
Complainant is Wesco Aircraft Hardware Corp., United States of America (“United States”), represented by Umberg Zipser LLP, United States.
Respondent is Contact Privacy Inc. Customer 1245095601, Canada / Gulf Guns and Gear, United States.
2. The Domain Name and Registrar
The disputed domain name <wescoiar.com> (the “Domain Name”) is registered with Google LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 30, 2019. On September 2, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 Complainant on September 3, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant did not file an amendment to the Complaint.
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 Respondent, through all the contact information known to the Center, of the Complaint, and the proceedings commenced on September 11, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 1, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 2, 2019.
The Center appointed John C. McElwaine as the sole panelist in this matter on October 9, 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
Complainant is a California corporation and is a global distributor of products for the aerospace industry.
Complainant owns a United States trademark registration for the mark WESCO AIR, registered on August 18, 2015, with Registration No. 4795365, reciting, “distributorships featuring aerospace components and aircraft installation tooling, air craft hardware and fastener; wholesale services, namely, online store services and catalog services featuring aerospace components and aircraft installation tooling; presentation of goods, namely, aerospace components and aircraft installation tooling on communication media, for wholesale and retail purposes; advertising and business services including on-line services, in particular inventory management and the bringing together for the benefit of others a variety of goods, in particular aerospace components and aircraft installation tooling, enabling customers to conveniently view and purchase such products; organization of exhibitions for commercial or advertising purposes, in particular for aerospace components and for aircraft installation tooling; wholesale services, namely, online store services and catalog services featuring tooling designed for the installation of aerospace hardware and drilling and miscellaneous tools designed for use in aircraft manufacturing maintenance.”
Respondent’s identity was hidden by the Registrar’s privacy service. The Domain Name was registered on July 19, 2019. The Domain Name does not resolve to an active website, but has been used to send fraudulent emails.
5. Parties’ Contentions
Complainant alleges that it was founded in 1953 and has been using the mark WESCO AIR since at least as early as March 17, 2014. Complaint asserts to be known in the aerospace industry as one of the world’s leading distributors and providers of comprehensive supply chain management services to the global aerospace industry.
Complainant is the owner of the above-referenced United States trademark registration for the mark WESCO AIR, Registration No. 4765365 (the “WESCO AIR Mark”). In addition, Complainant alleges that it owns the domain name <wescoair.com> and United States Trademark Registration Nos. 2521481; 3924965; and 5111216, all for WESCO AIRCRAFT, and United States Trademark Registration No. 4372149 for WA WESCO AIRCRAFT + design.
Complainant contends that Respondent registered the Domain Name on July 19, 2019, and shortly thereafter began sending emails to Complainant’s customers to perpetrate a fraud scheme. Specifically, it is alleged that Respondent deliberately chose a visually similar domain name to Complainant’s own domain name and Complainant’s WESCO AIR Mark in an attempt to cause Complainant’s third party customers to send money to Respondent or its agents by making false claims in emails to said customers. Complainant provided copies of purported fraudulent emails that included a signature block that contains the correct email address of Complaint and contact information of an actual employee of Complainant, but the email originated from the Domain Name controlled by Respondent.
With respect to the first element of the Policy, Complainant asserts that the Domain Name is virtually identical to the WESCO AIR Mark, except that the Domain Name changes the order of the letters “a” and “i” in the word “air”. Complainant claims that the Domain Name consisting of the word “wescoiar” is confusingly similar to the WESCO AIR Mark and Complainant’s <wescoair.com> domain name. Complainant further points out that the Domain Name is a common typographical error in the spelling of Complainant’s WESCO AIR Mark.
Addressing the second element of the Policy, Complainant reiterates that Respondent registered the Domain Name for the purpose of impersonating Complainant and perpetrating a fraud. Complainant claims that there is no evidence to suggest that Respondent has been commonly known by the Domain Name, and there is no justification or apparent need for Respondent to use “wescoiar” in the Domain Name other than to confuse email recipients. Complainant contends that Respondent must have been aware of Complainant and the WESCO AIR Mark when registering the Domain Name because Respondent has intentionally used the Domain Name to unfairly take advantage of Complainant’s customers by capitalizing on Complainant’s goodwill and reputation. Moreover, Complaint asserts that Respondent’s use of the Domain Name is not in connection with any bona fide offering of goods or services or any legitimate noncommercial purpose or fair use.
Lastly, regarding the third element of the Policy, Complainant contends that the Domain Name was registered in bad faith, which is evidenced by Respondent registering the Domain Name after Complainant applied for the Wesco Air Mark with the United States Trademark Office, and by registering the Domain Name to be used to send fraudulent emails. Complainant asserts that Respondent acted in bad faith by purposefully creating a likelihood of confusion with the WESCO AIR Mark as to the source, sponsorship, affiliation, or endorsement of the email source. Complainant further asserts that due to the recognition of the WESCO AIR Mark, it is inconceivable that Respondent was not aware of Complainant’s WESCO AIR Mark at the time it registered the Domain Name, since Respondent was impersonating Complainant in its emails.
Likewise, with respect to bad faith use of the Domain Name, Complainant asserts that Respondent is acting in bad faith by purposefully creating a likelihood of confusion with the WESCO AIR Mark as to the source, sponsorship, affiliation, or endorsement of the email source, which may also cause damage to Complainant’s reputation. In addition, Complainant asserts that Respondent may continue use of the Domain Name in connection with fraudulent activities in the future and/or sell the Domain Name to a third party who could use it for the same malicious purposes.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Even though Respondent has defaulted, paragraph 4 of the Policy requires that, in order to succeed in this UDRP proceeding, Complainant must still prove its assertions with evidence demonstrating:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
Because of Respondent’s default, the Panel may accept as true the reasonable factual allegations stated within the Complaint and may draw appropriate inferences therefrom. See St. Tropez Acquisition Co. Limited v. AnonymousSpeech LLC and Global House Inc., WIPO Case No. D2009-1779; Bjorn Kassoe Andersen v. Direction International, WIPO Case No. D2007-0605; see also paragraph 5(f) of the Rules (“If a respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint”). Having considered the Complaint, the Policy, the Rules, the Supplemental Rules and applicable principles of law, the Panel’s findings on each of the above cited elements are as follows.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires Complainant show that the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights. Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2 . Complainant has provided evidence that it is the owner of a United States trademark registration for WESCO AIR Mark.
As discussed in the WIPO Overview 3.0, section 1.9, the consensus view is 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”. Similarly, previous UDRP panels have consistently held that “a mere addition or a minor misspelling of Complainant’s trademark does not create a new or different mark in which Respondent has legitimate rights”. Express Scripts, Inc. v. Whois Privacy Protection Service, Inc. / Domaindeals, Domain Administrator, WIPO Case No. D2008-1302 (“Such insignificant modifications to trademarks is commonly referred to as ‘typosquatting’ or ‘typo-piracy,’ as such conduct seeks to wrongfully take advantage of errors by users in typing domain names into their web browser’s location bar.”). The spelling errors used in typosquatting have been found to produce domain names that are confusingly similar to the marks which they mimic. See, e.g., Yahoo! Inc. and GeoCities v. Data Art Corp., DataArt Enterprises, Inc., Stonybrook Investments, Global Net 2000, Inc., Powerclick, Inc., and Yahoo Search, Inc., WIPO Case No. D2000-0587. Here, the Domain Name is visually similar to the WESCO AIR Mark differing only by the switching of position of “a” and “i” in the word “air”. Further, Complainant submitted evidence of signature lines in emails sent from the Domain Name with the correct spelling of the WESCO AIR mark in the logo, email address and URL for Complainant’s website. This serves as strong evidence Respondent intended for the Domain Name to be confused with Complainant’s WESCO AIR Mark.
It is well established, and the Panel agrees, that typosquatting domain names are intended to be confusing and as such constitute confusing similarity. See, First American Financial Corporation v. VistaPrint Technologies Ltd, WIPO Case No. DCO2016-0008; National Association of Professional Baseball Leagues, Inc, d/b/a Minor League Baseball v. John Zuccarini, WIPO Case No. D2002-1011. Accordingly, the Panel finds that Complainant has met its burden of showing that the Domain Name is confusingly similar to the WESCO AIR Mark in which Complainant has valid subsisting trademark rights.
B. Rights or Legitimate Interests
Under the Policy, paragraph 4(a)(ii), Complainant has the burden of establishing that Respondent has no rights or legitimate interests in the Domain Name. Complainant needs to only make a prima facie showing on this element, at which point the burden of production shifts to Respondent to present evidence that it has rights or legitimate interests in the Domain Name. If Respondent has failed to do so, Complainant is deemed to have satisfied its burden under paragraph 4(a)(ii) of the Policy. See Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc., WIPO Case No. D2010-1141; see also Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415; Inter-Continental Hotels Corporation v. Khaled Ali Soussi, WIPO Case No. D2000-0252.
The Policy, paragraph 4(c), provides a non-exhaustive list of circumstances in which a respondent could demonstrate rights or legitimate interests in a contested domain name:
“(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.”
Complainant contents there is no right or legitimate interest in holding a domain name for the purpose of furtherance of a fraud through impersonation. Complainant further contends that Respondent is not commonly known by the Domain Name, that Complainant has not licensed, authorized or permitted Respondent to register the Domain Name, and that Respondent has not demonstrated any attempt to make legitimate use of the Domain Name.
Respondent has not denied any of Complainant’s assertions and has not put forth any evidence showing that it has a right or legitimate interest in the Domain Name. The Panel observes that the Domain Name does not resolve to any active webpage, but rather has been used to send emails in an attempt to impersonate an employee of Complainant for fraudulent purposes.
Moreover, the Panel finds that purpose of registering the Domain Name was to engage in an email scam or a phishing scheme, none of which is a bona fide offering of goods or services. WIPO Overview 3.0, section 2.13.1 (“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.”); see also, CMA CGM v. Diana Smith, WIPO Case No. D2015-1774 (finding that the respondent had no rights or legitimate interests in the disputed domain name holding, “such phishing scam cannot be considered a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Domain Name”.) The undisputed evidence of impersonation, deception and fraud nullifies any possible basis for the acquisition of rights or legitimate interests by Respondent. See Afton Chemical Corporation v. Meche Kings, WIPO Case No. D2019-1082.
Accordingly, Complainant made a prima facie showing of Respondent’s lack of any rights or legitimate interests and Respondent has failed to come forward to rebut that showing. As provided for by paragraph 14 of the Rules, the panel may draw such inference from Respondent’s default as it considers appropriate.
The panel finds that Respondent does not have rights or legitimate interests in the Domain Name and that Complainant has met its burden under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, Complainant must show that Respondent registered and is using the Domain Name in bad faith. A non-exhaustive list of factors constituting bad faith registration and use is set out in paragraph 4(b) of the Policy.
Bad faith registration can also be found where respondents “knew or should have known” of complainant’s trademark rights and nevertheless registered a domain name in which he had no right or legitimate interest. See Accor v. Kristen Hoerl, WIPO Case No. D2007-1722. Here, the WESCO AIR Mark represents the goodwill of a well-known aerospace products company. Based on Complainant’s submission, which was not rebutted by Respondent, Respondent must have known of Complainant’s WESCO AIR Mark when it registered the Domain Name. See WhatsApp Inc. v. Francisco Costa, WIPO Case No. D2015-0909 (finding that “it is likely improbable that Respondent did not know about Complainant’s WHATSAPP trademark at the time it registered the Disputed Domain Name considering the worldwide renown it has acquired amongst mobile applications, and the impressive number of users it has gathered since the launch of the WhatsApp services in 2009”.). Strongly supporting the inference that Respondent knew of Complainants’ trademark rights, Respondent registered a Domain Name that was a common typographical error of the WESCO AIR Mark and used Complainant’s correctly spelled trademark, Complainant’s logo and contact information in fraudulent emails.
In addition, it is well settled that the practice of typosquatting constitutes obvious evidence of the bad faith registration of a domain name. See, Admiral Group Plc and EUI Limited v. Cimpress Schweiz, Cimpress Schweiz GmbH, WIPO Case No. DCO2017-0043 (citing Longs Drug Stores California, Inc. v. Shep Dog, WIPO Case No. D2004-1069 (finding typosquatting to be evidence of bad faith domain name registration); Lexar Media, Inc. v. Michael Huang, WIPO Case No. D2004-1039 (“Typosquatting has been held under the Policy to be evidence of bad faith registration of a domain name”); Wal-Mart Stores, Inc. v. Longo, WIPO Case No. D2004-0816 (“[typosquatting] is presumptive of registration in bad faith”)). Typosquatting can be defined as “inherently parasitic and of itself evidence of bad faith”. Insurance Company v. Dyk Dylina/Privacy-Protect.org, WIPO Case No. D2011-0304. The Domain Name here was intentionally registered as a common typographical version or to appear confusingly similar to the WESCO AIR Mark.
The fact that the Domain Name was not used in connection with a competing website does not obviate a finding of bad faith. Section 3.3 of the WIPO Overview 3.0, instructs that panelists should examine the totality of the circumstances in each case and that the following factors that have been considered relevant in applying the passive holding doctrine: “(i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.” Id. It is used however in a sense, given the fraud perpetuated via email.
Here, Complainant’s WESCO AIR Mark is distinctive, strong and it is used in many countries. Complainant asserts that Respondent likely registered the Domain Name to send fraudulent email messages, including those that contain phishing attempts. Such activity would constitute a disruption of Complainant’s business and also establishes bad faith registration and use pursuant to Paragraph 4(b)(iii) of the Policy. Securitas AB v. Whois Privacy Protection Service, Inc. / A. H., WIPO Case No. D2013-0117 (Finding bad faith based upon the similarity of the disputed domain name and the complainant’s mark, the fact that the complainant is a well-known global security company and the fact that the disputed domain name is being used to perpetrate an email scam.). As discussed above, in its emails, Respondent also used the properly spelled trademarks, logos and the domain name of Complainant. In light of the actions undertaken by Respondent, it is inconceivable that Respondent coincidentally selected the Domain Name without any knowledge of Complainant. See e.g., Arkema France v. Steve Co., Stave Co Ltd., WIPO Case No. D2017-1632.
Finally, the use of a deceptive domain name for an email scam has previously been found by panels to be sufficient to establish that a domain name has been registered and is being used in bad faith. See Samsung Electronics Co., Ltd. v. Albert Daniel Carter, WIPO Case No. D2010-1367; Securitas AB v. Whois Privacy Protection Service, Inc. / A. H., WIPO Case No. D2013-0117.
For these reasons, the Panel holds that Complainant has met its burden of showing that Respondent registered and is using the 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 Domain Name <wescoiar.com> be transferred to Complainant.
John C McElwaine
Date: October 23, 2019