WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BTWN Exhibits, LLC v. Registration Private, Domains By Proxy, LLC / Ahmed Fawzy, ASM Marketing
Case No. D2020-0036
1. The Parties
Complainant is BTWN Exhibits, LLC, United States of America (“United States”), represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States.
Respondent is Registration Private, Domains By Proxy, LLC, United States / Ahmed Fawzy, ASM Marketing, United Arab Emirates.
2. The Domain Name and Registrar
The disputed domain name <btwn-exhibits.com> (“Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 9, 2020. On January 9, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 10, 2020, 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. The Center sent an email communication to Complainant on January 13, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. The Center received an email communication from Respondent on January 13, 2020. Complainant filed an amendment to the Complaint on January 14, 2020.
The Center verified that the Complaint, together with the amendment to 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 of the Complaint, and the proceedings commenced on January 15, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 4, 2020. Respondent did not provide a formal Response. Pursuant to paragraph 6 of the Rules, the Center notified the Parties on February 5, 2020, that it would proceed with panel appointment.
The Center appointed Marina Perraki as the sole panelist in this matter on February 11, 2020. 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 was founded on May 31, 2011, and provides trade show booth design, fabrication, and management. Complainant had revenue of approximately USD 5 million in 2019. Complainant’s clients include well-known brands such as HYUNDAI, AIRBUS, SAMSUNG, LUFTHANSA, and KIA MOTORS.
Complainant claims to be the owner of common law (unregistered) trademark rights in the trademark BTWN EXHIBITS, which it has used in commerce since at least May 2011. Complainant is also the registrant, through one of its founders, of the domain name <btwnexhibits.com>, which was created on May 24, 2011, and under which Complainant maintains its website.
Per Complaint, Complainant has used the BTWN EXHIBITS trademark in commerce since May 2011 in connection with its business of providing trade show booth design, fabrication, and management services.
The Domain Name was registered on July 20, 2019, and was used in connection with a phishing scam. The Domain Name was used to create a website redirecting Internet users to Complainant’s own website and to create an email address, used for communications with Complainant’s customers impersonating Complainant, submitting proposals appearing to be from Complainant, and requesting and collecting payment from customers who falsely believed that they were submitting payment to Complainant.
Complainant posted an “urgent fraud alert” message on its website that reads: “Please be careful if approached by individuals with email domains from btwn-exhibits.com. We have been made aware of a severe fraudulent activity claiming to be a Sales Manager of BTWN EXHIBITS from [...]@btwn-exhibits.com”.
Complainant contacted the Registrar about the Domain Name on December 20, 2019, after which the Domain Name stopped redirecting to Complainant’s website.
5. Parties’ Contentions
Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Name.
The Respondent did not submit a formal response. On January 13, 2020, a person using Respondent’s email address sent an email to the Center stating it did not want the Domain Name, as the Domain Name seemed to be connected to another company.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(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.
A. Identical or Confusingly Similar
The Panel finds that Complainant has provided sufficient evidence of its use of the BTWN EXHIBITS trademark to establish common law trademark rights in it, for purposes of the Policy.
The Domain Name incorporates Complainant’s unregistered trademark BTWN EXHIBITS in its entirety. This is sufficient to establish confusing similarity (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525).
The hyphen “-” which is added in the Domain Name does not avoid a finding of confusing similarity as it is non-distinctive (BHP Billiton Innovation Pty Ltd v. Oloyi, WIPO Case No. D2017-0284; Andrey Ternovskiy dba Chatroulette v. 1&1 Internet Inc / David Grandpierre, WIPO Case No. D2018-2237; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8).
The generic Top-Level Domain (“gTLD”) “.com” is also disregarded, as gTLDs typically do not form part of the comparison on the grounds that they are required for technical reasons (see Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275; Hay & Robertson InternationalLicensing AG v. C. J. Lovik, WIPO Case No. D2002-0122).
The Panel finds that the Domain Name is confusingly similar to the BTWN EXHIBITS mark of Complainant.
Complainant has established Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name.
Respondent has not submitted any formal response and has not claimed any such rights or legitimate interests with respect to the Domain Name. As per Complaint, Respondent was not authorized to register the Domain Name.
Respondent did not demonstrate, prior to the notice of the dispute, any use of the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services.
On the contrary, as Complainant demonstrates, the Domain Name redirected to the home page of Complainant’s website “www.btwnexhibits.com”. A respondent’s use of a complainant’s mark to redirect users to a complainant’s own website would not support a claim to rights or legitimate interests (WIPO Overview 3.0, section 2.5.3; PayPal Inc. v. Jon Shanks, WIPO Case No. D2014-0888).
Furthermore, as Complainant demonstrates, Respondent used the Domain Name for the purpose of a fraud scheme. The use of the Domain Name for an illegal activity such as constructing an email composition containing the Domain Name for deceiving purposes can never confer rights or legitimate interests on Respondent (L’Oréal v. Cimpress Schweiz GmbH, WIPO Case No. DCO2017-0021; Syngenta Participations AG v. Simon Laidler / Who Is Agent, WhoIs Privacy Protection Service, Inc., WIPO Case No. D2014-1702; Kramer Law Firm, P.A. Attorneys and Counselors at Law v. BOA Online, Mark Heuvel, WIPO Case No. D2016-0387).
The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Name.
Complainant has established Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation” are evidence of the registration and use of the Domain Name in bad faith:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Respondent has registered and used the Domain Name in bad faith. As per Complaint, Complainant’s BTWN EXHIBITS unregistered trademark is well known for trade show booth design, fabrication, and management. Because the BTWN EXHIBITS mark had been widely used at the time of the Domain Name registration by Respondent, the Panel finds it more likely than not that Respondent had Complainant’s mark in mind when registering the Domain Name (Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc., WIPO Case No. D2014-1754).
Respondent should have known about Complainant’s rights, due to the fact that Complainant’s mark had goodwill and reputation when the Domain Name was registered. Furthermore, such knowledge is readily obtainable through a simple browser search due to Complainant’s wide use of BTWN EXHIBITS mark on the Internet, namely at the website “www.btwnexhibits.com” (Caesars World, Inc. v. Forum LLC, WIPO Case No. D2005-0517; Compart AG v. Compart.com / Vertical Axis Inc., WIPO Case No. D2009-0462).
Lastly, it is apparent that Respondent was aware of Complainant and Complainant’s mark BTWN EXHIBITS when registering the Domain Name. As Complainant demonstrated, Respondent used the Domain Name to create an email address, send fraudulent emails to Complainant’ s customers, and to redirect to Complainant’s own website (Arla Foods Amba v. Michael Guthrie, M. Guthrie Building Solutions, WIPO Case No. D2016-2213).
As regards bad faith use, Complainant demonstrated that the Domain Name was used to create an email address to impersonate Complainant, to communicate with Complainant’s customers, and to actually collect payment from Complainant’s customers who falsely believed that they were submitting payment to Complainant. Use of a domain name for purposes other than to host a website may constitute bad faith. Such purposes include sending deceptive emails, phishing, identity theft, or malware distribution (WIPO Overview 3.0, section 3.4). This pattern can be used in support of a finding of bad faith registration and use (Yahoo! Inc. v. Aman Anand, Ravi Singh, Sunil Singh, Whois Privacy Corp., Domains By Proxy, LLC, WIPO Case No. D2016-0461; L’Oréal v. Cimpress Schweiz GmbH,WIPOCaseNo. DCO2017-0021; Monarch Airlines Limited v. Richard Nani, WIPO Case No. D2012-2484; La Française des Jeux v. MichaelE Wilkins, WIPO Case No. D2009-0898; and WIPO Overview 3.0, sections 3.3 and 3.4).
Under these circumstances and on this record, the Panel finds that Respondent registered and used the Domain Name in bad faith.
Complainant has established Policy, paragraph 4(a)(iii).
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 <btwn-exhibits.com> be transferred to Complainant.
Date: February 25, 2020