WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Methanex Corporation v. Contact Privacy Inc. Customer 1245377704 / Cathline Tufanoq, Methanex SSD
Case No. D2020-0094
1. The Parties
The Complainant is Methanex Corporation, Canada, represented by Vanguard Intellectual Property LLP, Canada.
The Respondents are Contact Privacy Inc. Customer 1245377704, Canada / Cathline Tufanoq United States of America and Methanex SSD, Canada (hereafter “the Respondent”).
2. The Domain Name and Registrar
The disputed domain name <methanexssd.com> is registered with Google LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 15, 2020. On January 16, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 17, 2020, 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 the Complainant on January 22, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 24, 2020.
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 January 28, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 17, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 27, 2020.
The Center appointed Alistair Payne as the sole panelist in this matter on March 9, 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
The Complainant is a federal Canadian corporation based in Vancouver and formed in 1992 and operates in the methanol sector as the world’s largest producer and supplier of methanol. It operates sales offices and production facilities in a range of countries and owns a shipping company that has one of the world’s largest fleets of methanol ocean tankers.
The Complainant owns registered trade mark rights for its METHANEX mark in multiple jurisdictions worldwide including a word mark registration in Canada under registration number 692285, registered on November 20, 1992 and the European Union Trade Mark, registration number 001026566, registered on April 5, 2000. The Complainant owns numerous domain names that contain its METHANEX trade mark, including <methanex.com> which was registered in 1995.
The disputed domain name was registered on September 2, 2019 and at the date of filing, it re-directed to a home page for Methanex SSD that is stated to have been created in 2019 and offers bank note cleaning services.
5. Parties’ Contentions
The Complainant submits that it owns registered trade mark rights as set out above for its METHANEX trade mark. It says that the disputed domain name wholly incorporates its trade mark together with the non distinctive descriptive letters “ssd” before the “.com” generic top level domain (”gTLD”). As a consequence, says the Complainant, the disputed domain name is confusingly similar to its METHANEX trade mark registration.
The Complainant submits that the Respondent does not have a corporate registration in Canada or in the United Kingdom in the addresses listed on its website, indicated as being its business contact addresses. The Complainant has investigated both these addresses and the Respondent’s stated Canadian telephone number and has provided search evidence and affidavit evidence that suggests that the Respondent does not in fact have offices at either location and that the telephone number does not exist. In fact, says the Complainant, there is no evidence to suggest that the Respondent has any connection with Canada at all.
The Complainant notes that it has operated since 1992 under the METHANEX trade mark, has registered the mark in Canada and in the European Union and that as it is neither a dictionary nor a descriptive term, there is no reason for the Respondent to have adopted the disputed domain name, other than for it to seek to mislead Internet users that it has some affiliation with the Complainant, possibly on the basis that there is a connection between the Respondent’s product that acts in relation to paint and the use of a derivative of methanol to produce paint. In addition the Complainant submits that the term “ssd” in the disputed domain name stands for “synthetic surfactant detergent” which is consistent with the description on the Respondent’s website that the business involves the cleaning of stained bank notes so as to make them usable using a “Black Dollar Cleaning Chemical Formula” and the “Black Dollar Cleaning Machine”.
Additionally, the Complainant notes that the website suggests that the Respondent offers “passports and ID Authentication” and “Grade A Counterfeit Bills”. No matter which interpretation one adopts as to what the Respondent is offering here the Complainant submits that it either amounts to carrying on an illegal activity or aiding and abetting an illegal activity. Illegality says the Complainant cannot constitute a legitimate right or interest for the purposes of this element of the Policy.
The Complainant notes that the content and presentation of the website to which the disputed domain name re-directs is substantially and substantively identical to the website at another website at <bestssdsolution.com> which was created on February 21, 2019, around six months prior to registration of the disputed domain name.
The Complainant says that the probable reason for the Respondent’s conduct is to create a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the website, or the geographical origin of the Respondent’s products, which strongly supports a finding of opportunistic bad faith (Wikimedia Foundation, Inc. v. Walter Gerbert, WIPO Case No. D2016-1346). It says that there is an absence of conceivable good faith use, given that all circumstantial evidence supports its case that the disputed domain name is used in engagement of fraud or illegitimate activities as described above.
The Complainant further notes that the use of false contact details and of a privacy shield to hide the registrants’ identity cast further doubt on the Respondent’s bona fides.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has demonstrated that it owns Canadian trade mark registration number 692285 registered on November 20, 1992 for its METHANEX trade mark. It also owns European Union trade mark 001026566 registered on April 5, 2000 for METHANEX.
The disputed domain name wholly incorporates the METHANEX trade mark. Previous panels have found that the wholesale incorporation of the complainant’s trade mark in the disputed domain name renders it confusingly similar. The addition of the abbreviation “ssd” after METHANEX and before the “.com” element of the disputed domain name does not alter this conclusion. The Panel notes that based on the evidence on the record the “ssd” element appears to be a descriptive and frequently used abbreviation in the relevant industry that is used in relation to the washing of black money.
For these reasons the Panel finds that the disputed domain name is confusingly similar to the Complainant’s METHANEX mark and the Complaint succeeds under this element of the Policy.
B. Rights or Legitimate Interests
The Complainant has submitted evidence that the Respondent does not appear to operate from its stated address in Canada or in the United Kingdom and that the telephone contact given for the business is not in service although the WhatsApp number does appear to be in service based on the evidence of the Complainant’s investigation. This elicited a confirmation from a representative of the Respondent that it operates from the United Arab Emirates and in the United Kingdom. In fact, submits the Complainant, there is no evidence to suggest that the Respondent has any business in or connection with Canada at all.
The Respondent’s business, as described on its website, involves the cleaning of stained bank notes so as to make them usable using a “Black Dollar Cleaning Chemical Formula” and the “Black Dollar Cleaning Machine”. It appears based the Complainant’s investigation that this machine is based in Dubai. The Respondent’s business also appears to involve, based on the website to which the disputed domain name directs, “passports and ID Authentication” and “Grade A Counterfeit Bills” and it is noted that one of the attached websites is “http://counterfietsupplier.com”. The Complainant’s investigation of this business garnered evidence of confirmation by the Respondent’s representative that confirms that its business involves cleaning currency.
In circumstances that the Respondent’s stated business premises on its website do not appear to exist and considering the description of activities appearing on the website as described above and as confirmed by the Complainant’s investigation, the Panel infers that the Respondent’s business activities are more likely than not illegal. Past panels have held that the use of a disputed domain name for illegal activity cannot confer rights or legitimate interests on a respondent (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.13 ).
The Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name which case has not been rebutted by the Respondent. For this reason and also as set out under Part C below, the Panel therefore finds that the Complainant has made out its case under this element of the Policy.
C. Registered and Used in Bad Faith
The Complainant notes that its METHANEX mark is neither a dictionary nor a commonplace term and that it has been registered since 1992 and used in Canada since that time and in the United Kingdom since around 2000 in relation to its very substantial and global methanol production and distribution business that is, according to the Complainant, the largest such business in the world and is based in Canada. Since 1995, the Complainant has also had a large web presence at the domain name <methanex.com> amongst other domain names.
In these circumstances it appears to the Panel that the Respondent, who purports, at least according to its website, to have an office in Canada, was most likely aware of the Complainant’s METHANEX mark and business at the date of registration of the disputed domain name and it seems possible, as suggested by the Complainant, that the Respondent sought to use this mark in the disputed domain name in order to establish some kind of linkage between the disputed domain name and the Complainant’s mark and methanol products. Again, the Panel notes that the Respondent has not sought to rebut the Complainant’s case in this regard and the Panel accordingly, infers on the balance of probabilities, that the Respondent did register the disputed domain name with knowledge of the Complainant’s METHANEX trade mark.
The Complainant submits that the probable reason for the Respondent’s conduct is to create a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the website at the disputed domain name. It says that there is an absence of conceivable good faith use, considering that all of the circumstantial evidence supports its case that the disputed domain name is used in the engagement of illegitimate activities as described above.
The Complainant has also noted that the content and presentation of the website to which the disputed domain name re-directs is substantially and substantively identical to the website at another website at <bestssdsolution.com> which was created on February 21, 2019, around six months prior to registration of the disputed domain name, although the contacts on this website appear to be different.
In the absence of any credible explanation by the Respondent, the Panel concludes that in all of the circumstances, it is more likely than not that the activities of the Respondent, as set out on the website to which the disputed domain name redirects and as described under Part B above are per se illegitimate or illegal. It follows, as noted above under Part B, that evidence of using a disputed domain name for such an activity has generally been considered by past panels to be evidence of bad faith and the Panel so finds in this case (see WIPO Overview 3.0, section 3.1.4).
The Panel considers that the Respondent’s use of false contact details and of a privacy shield to hide the registrant’s identity only serve to reinforce its findings, as set out above, of the Respondent’s likely illegal activities and therefore of bad faith.
As a result, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith and the Complaint also succeeds under this element 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 disputed domain name <methanexssd.com> be transferred to the Complainant.
Date: March 13, 2020