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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Dewberry Engineers Inc. v. Contact Privacy Inc. Customer 1245673319 / John, Siena

Case No. D2020-0347

1. The Parties

The Complainant is Dewberry Engineers Inc., United States of America (“United States” or “U.S.”), represented by McCandlish Holton, PC, United States.

The Respondent is Contact Privacy Inc. Customer 1245673319, Canada / John, Siena, United States.

2. The Domain Name and Registrar

The disputed domain name <deewberry.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 February 13, 2020. On February 14, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 17, 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 the Complainant on February 18, 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 February 20, 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 February 26, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 17, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 24, 2020.

The Center appointed Martin Schwimmer as the sole panelist in this matter on March 31, 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 an engineering, architecture, real estate services, and management firm, utilizing the trademark DEWBERRY (the “Mark”) for a variety of services since at least February 2003. It utilizes the domain name <dewberry.com>. The Respondent registered the Domain Name <deewberry.com> on October 16, 2019. The Domain Name does not resolve to any active webpage. The Complainant provided evidence that the Respondent utilizes the Domain Name to send emails to the Complainant’s customers fraudulently requesting funds.

5. Parties’ Contentions

A. Complainant

The Complainant has used the trademark DEWBERRY in relation to engineering, architecture, real estate services, and management services, since no later than February 2003. It utilizes the domain name <dewberry.com> to promote a wide array of services.

The Complainant owns U.S. trademark registrations including U.S. registration number 2991043 for the DEWBERRY word mark, and U.S. registration number 2991044 for DEWBERRY and design, both in relation to engineering, construction, and related services, both registered September 6, 2005, and alleging a date of first use of February 5, 2003.

The Respondent’s Domain Name <deewberry.com> is identical to the Complainant’s Mark but for the insertion of an extra “e”.

The Respondent has made no bona fide use of the Domain Name. The Respondent does not appear to be known by the Domain Name. The Domain Name is not utilized in connection with a website. The only use appears to be fraudulent emails. The Respondent appears to have utilized the Domain Name to send emails to clients of the Complainant, purporting to come from the Complainant and identifying real employees of the Complainant. These fraudulent emails assert that funds are owed to the Complainant apparently seeking to divert payment to the Respondent.

The Respondent’s actions constitute bad faith typosquatting.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has submitted evidence of its ownership of the trademark DEWBERRY, including U.S. registration numbers 2,991,043 and 2991044, both registered September 6, 2005. Furthermore, use of its DEWBERRY trademark is depicted at the Complainant’s website at the domain name <dewberry.com>.

The insertion of the extra letter “e” in the Respondent’s Domain Name, does not create a visually or phonetically different string from that in “dewberry”. The Mark is clearly recognizable in the Domain Name. Moreover, “deewberry” is not a word in English, and when entered as a search term in the Google search engine, the user is prompted with “did you mean: dewberry?”.

Accordingly, the Domain Name is confusingly similar to a trademark in which the Complainant has established rights according to paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant implies that the Respondent has received no authorization of any sort from the Complainant to use the DEWBERRY trademark or any variant thereof or include such marks in any domain name. The Respondent is not known by the name “Dewberry” or “Deewberry”, nor does it carry on any legitimate business under or by reference to those names. There is no bona fide use of the Domain Name as the disputed Domain Name, which is virtually identical to the Complainant’s trademark, does not resolve to any active webpage. The Complainant has submitted evidence that the Respondent utilizes the Domain Name to fraudulently solicit funds from the Complainant’s clients.

The Respondent has not filed any response asserting any rights or legitimate interests.

Therefore, the Panel holds that the Complainant has established an unrebutted, prima facie case that the Respondent does not have any rights or legitimate interests in the Domain Name, according to paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

There is unrebutted evidence that the Respondent transmitted emails to customers of the Complainant, utilizing the Domain Name, which emails identified actual employees of the Complainant, allegedly as part of a scheme to defraud the Complainant and its customers. It is thus inconceivable that the Respondent was unaware of the Complainant’s trademark. The registration of the Domain Name is a clear example of typosquatting, where the Respondent hopes in some way to make a profit or disrupt the business of the Complainant.

The registration and use of a domain name clearly intended to typosquat on a trademark reflects bad faith on the part of the Respondent. See, e.g., Tommy Bahama Group, Inc. v. Registration Private Domains by Proxy, LLC/Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2019-0198. The Panel holds that the Domain Name was registered and used in bad faith, according to paragraph 4(a)(iii) of the Policy.

7. Decision

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 <deewberry.com> be transferred to the Complainant.

Martin Schwimmer
Sole Panelist
Date: April 19, 2020

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