WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Unilever PLC v. Domains by Proxy, LLC / Nicholas Bourne and Shane Purcell
Case No. D2020-0535
1. The Parties
The Complainant is Unilever PLC, United Kingdom, represented by Stobbs IP Limited, United Kingdom.
The Respondent is Domains by Proxy, LLC, United States of America / Nicholas Bourne, United Kingdom and Shane Purcell, United Kingdom.
2. The Domain Names and Registrar
The disputed domain names <unilevermail.com> and <unileverweb.com> (the “Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 4, 2020. On March 4, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On March 5, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 6, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint or to file a separate complaint for each of the Domain Names. The Complainant filed an amended Complaint on March 11, 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 the 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 March 16, 2020. In accordance with the Rules, paragraph 5, the due date for the Response was April 5, 2020. On March 17, 2020, the Center received a non-substantive message from an email address associated with the Domain Names. It simply stated “Hi what is this”. The Respondent did not submit any formal response. The Center notified the Commencement of Panel Appointment Process on April 6, 2020.
The Center appointed Jon Lang as the sole panelist in this matter on April 15, 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.
This Complaint concerns two Domain Names and the Complainant submits that proceedings in respect of each should be consolidated and dealt with together as provided for by the Rules. The Complainant also requested, by email of March 24, 2020 that a third domain name <unileversms.com> be added to the Complaint.
4. Factual Background
The Complainant and its affiliated and subsidiary companies are the owners of the mark UNILEVER which is registered in various territories around the world, including in the United Kingdom (e.g. trade mark No. UK00000879310 with a registration date of May 11, 1965).
The Domain Names <unilevermail.com> and <unileverweb.com> were registered on August 20, 2017 and August 22, 2017 by Shane Purcell and Nicholas Bourne, respectively.
UNILEVER has been used as a brand since the Complainant’s creation from the merger of Lever Brothers and Margarine Unie in 1929. In addition to its registered rights, the Complainant has also accumulated substantial goodwill in the UNILEVER mark through its use. The Complainant had a turnover of over 50 EUR billion in 2018. It also has a strong online presence and is the owner of several domain names (registered before the Domain Names) containing the mark UNILEVER, e.g. <unilever.com> registered April 8, 1995.
5. Parties’ Contentions
The following is a brief summary of the main contentions of the Complainant.
Consolidation/ Addition of a third domain name
The Complainant asserts that the Domain Names are subject to common control and that consolidation would be fair and equitable to all parties.
As to “common control”, the Complainant relies on a number of factors including that the two Domain Names are used together e.g., the email, “[...]@unilevermail.com” was used on the website “www.unileverweb.com”, and also the similarity in naming patterns of the Domain Names.
As to it being fair and equitable to consolidate, the Complainant again relies on a number of factors including that it would be more efficacious to bring a single complaint, that the substance of the complaint in relation to each of the Domain Names is identical and that there would be no administrative burden on the Center.
As to the third domain name <unileversms.com> the Complainant, by its email of March 24, 2020, notes that Shane Purcell is also the registrant of the third domain name and asserts that this domain name is “clearly connected” to the Domain Names.
The Domain Names are being used by the Respondent to intentionally confuse members of the public into thinking that approaches being made to them are from the Complainant, but are in fact in order to engage in the illegal activity of phishing with the ultimate goal of defrauding the Complainant’s customers.
The Domain Names are confusingly similar to a trademark in which the Complainant has rights
The Complainant has both registered and unregistered rights in the mark UNILEVER and the Domain Names are each confusingly similar to the UNILEVER mark.
The Panel should ignore the generic Top-Level domain (“gTLD”) suffixes, “.com” from its assessment of confusing similarity.
The Domain Name <unileverweb.com> is confusingly similar to the UNILEVER mark. It contains the mark UNILEVER in its entirety. The additional term “web” is the only differentiator. It is a generic word and would be understood by Internet users in the context of online activity to refer to an information system where resources are identified by Uniform Resource Locators and accessed over the Internet. Recent Panel findings have confirmed that the term “web” can be disregarded when analysing similarity.
The Domain Name <unilevermail.com> is confusingly similar to the UNILEVER mark. Again, it contains the mark UNILEVER in its entirety. The additional term “mail” is the only differentiator. The word “mail” is generic and would be understood by Internet users in the context of domain names to refer to email capabilities. Here too, recent Panel findings have held that the word “mail” is generic and does not in itself negate confusing similarity between domain name and mark.
The Respondent has no rights or legitimate interests in respect of the Domain Names
As mentioned earlier (and explained further below), the Domain Names are being used in order to engage in phishing with the ultimate goal of defrauding Internet users. To this end, the email, “[...]@unilevermail.com” was used on the website “www.unileverweb.com” to impersonate a key employee of the Complainant, the Complainant’s figurative UNILEVER mark has also been used and a non-existent association with Unilever United Kingdom Ltd claimed. These factors lead the Complainant to conclude that the sole reason why the Respondent registered the Domain Names was to take advantage of the Complainant’s goodwill and valuable reputation.
The Respondent is not associated with the Complainant and does not own any rights to the UNILEVER mark. To the best of the Complainant’s knowledge, the Respondent has never been known as UNILEVER.
The Domain Names are being used by the Respondent in order to engage in illegal activities which cannot constitute a bona fide offering of goods or services, and there is nothing to suggest that the Respondent is making a legitimate noncommercial or fair use of the Domain Names. Use of a domain name for illegal activity can never confer rights or legitimate interests on a respondent.
Merely registering a domain name is not sufficient to establish rights or legitimate interests for the purposes of the Policy.
The Domain Names were registered and are being used in bad faith
The Complainant and its UNILEVER mark have been in existence for 90 years. The UNILEVER brand has received widespread recognition and thus it is clear that the Respondent was well aware of it at the time of registering the Domain Names.
The Domain Names are being used to intentionally confuse members of the public into thinking that approaches being made to them are from the Complainant. Members of the public have informed the Complainant that they have received text messages suggesting that they have won a cash prize of GBP 850,000 in a Unilever promotion campaign and that they could collect the prize at “unileverweb.com”. After entering their phone numbers and creating an account on “unileverweb.com”, they receive an email from a “[...]@unilevermail.com” purporting to be a senior manager of the Complainant. The email requires the recipients to pay approximately GBP 500 to a nominated bank account in order to receive the prize. There is a clear misrepresentation that “unileverweb.com” manages the promotion campaign on behalf of the Complainant by displaying a profile image and full name of the senior manager together with the UNILEVER (figurative) mark. The Domain Name <unilevermail.com> was used to register the email address “[...]@unilevermail.com” with the sole purpose of impersonating the Complainant’s senior manager.
Any use of a domain name for the purposes of phishing amounts to both bad faith registration and use.
In view of the distinctive nature of the UNILEVER mark and the expansive scope of the Complainant’s business, there is no way in which the Respondent could use the Domain Names without falling foul of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Preliminary matter – Consolidation / Addition of a third domain name
Under Paragraph 10 of the Rules (General Powers of the Panel), a Panel may consolidate multiple domain name disputes (Paragraph 10(e)). The WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 4.11.2 (Complaint consolidated against multiple respondents), provides that where “a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario”. A range of factors may be considered but the most persuasive in this proceeding is that the Domain Names appear to be used together to facilitate fraudulent activities. The Panel has no hesitation in allowing consolidation.
As to the third domain name <unileversms.com>, the Panel notes that it was raised after the Center notified the Respondent of the Complaint (and the proceedings commenced) on March 16, 2020, and that no case was put in relation to it in the Complaint. Section 4.12.2 of the WIPO Overview 3.0 deals with the “Addition of domain names following complaint notification” and provides that:
“Requests for addition of domain names to a complaint after it has been notified to the respondent and the proceedings have formally commenced would be addressed by the panel on appointment.
Except in limited cases where there is clear evidence of respondent gaming/attempts to frustrate the proceedings (e.g., by the respondent’s registration of additional domain names subsequent to complaint notification), panels are generally reluctant to accept such requests because the addition of further domain names would delay the proceedings (which are expected to take place with due expedition). Moreover, a panel declining such request would not prevent the filing of a separate complaint where such additional domain names may be addressed.
(...) in the event a panel would grant such a request, it may also order partial or full re-notification of the proceeding (which may impact case timelines).”
One of the main advantages of the Policy is that it provides an Administrative Procedure that is typically faster and cheaper than going to court. Proceedings under the Policy are intended to take place expeditiously. Whilst it might appear, at first blush, expeditious to simply add another domain name to existing proceedings involving similar domain names and a common registrant, expedition cannot trump due process. There cannot be some form of ad hoc summary process introduced dispensing with the need to articulate a case (and afford an opportunity for a Response), simply because a case has been made out in relation to a similar domain name having the same registrant. Thus it would be necessary to take further procedural steps in the proceedings if the Complainant’s request was to be granted e.g. a re-notification of proceedings, with all the attendant delay that that would bring.
Moreover, the Panel notes that the domain name <unileversms.com> was registered on February 18, 2019 i.e. before the filing of the Complaint on March 4, 2020, the provision of new information by the Center on March 6, 2020 (in its e-mail communication headed “Notice of Change - Multiple Underlying Registrants”) and the submission of the amended Complaint on March 11, 2020. The Complainant only requested the addition of the third domain name on March 24, 2020 after the notification of the Complaint on March 16, 2020.
Additionally, the Panel notes that the domain name <unileversms.com> expired on February 18, 2020, and that the current domain name status is “pending delete”. The Complainant may wish to contact the Registrar to discuss what options are available.
In the circumstances, the Panel takes the view that a Decision should be rendered in relation to the Domain Names only.
Paragraph 4(a) of the Policy requires a complainant to prove that a respondent has registered a domain name which is:
(i) identical or confusingly similar to a trademark or service mark in which a complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
A complainant must prove each of these three elements to succeed.
A. Identical or Confusingly Similar
The Complainant clearly has rights in its UNILEVER trademark.
Ignoring the generic Top-Level Domain (“gTLD”) “.com” (as the Panel may do for comparison purposes), the Domain Names incorporate the UNILEVER mark in its entirety but add the word “web” in the case of <unileverweb.com> and “mail” in the case of <unilevermail.com>.
Application of the confusing similarity test under the UDRP typically involves a comparison, on a visual or aural level, between the trademark and the domain name to determine whether the trademark is recognizable as such within the domain name. The addition of common, dictionary, descriptive or negative terms would not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview 3.0.
The UNILEVER mark is clearly recognizable within the Domain Names. The addition of “web” or “mail” do not prevent the Domain Names from being confusingly similar to the UNILEVER mark.
The Panel finds that the Domain Names are confusingly similar to the UNILEVER mark for the purposes of the Policy and thus paragraph 4(a)(i) of the Policy has been established.
B. Rights or Legitimate Interests
By its allegations, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Names.
Accordingly, the burden of production shifts to the Respondent to come forward with arguments or evidence demonstrating that it does in fact have such rights or legitimate interests. The Respondent has not done so and accordingly, the Panel is entitled to find, given the prima facie case made out by the Complainant, that the Respondent indeed lacks rights or legitimate interests in the Domain Names. Despite the lack of any answer to the Complainant’s contentions however, the Panel is entitled to consider whether there would be anything inappropriate in such a finding.
A respondent can show it has rights to or legitimate interests in a domain name in various ways even where it is not licensed by or affiliated with a complainant. For instance, it can show that it has been commonly known by the domain name or that it is 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. A respondent can also show that it is using a domain name in connection with a bona fide offering of goods or services. Here, however, the Respondent is not known by the Domain Names. Moreover, the Respondent appears to be using the (confusingly similar) Domain Names to engage in phishing activities with the ultimate aim of defrauding Internet users by imitating the Complainant. Such activity cannot possibly be a bona fide offering of goods or services under the Policy, nor a legitimate noncommercial or fair use.
The very purpose in the Respondent choosing the Domain Names it did was to deliberately create a false impression of association with the Complainant. The Respondent then sought to impersonate the Complainant as described earlier. The Respondent has not come forward with a formal Response or taken any other action to address the Complaint, no doubt because there is unlikely to be anything the Respondent could say that could justify its registration and use of the Domain Names.
There is no evidence before this Panel suggesting that the Respondent might have rights or legitimate interests in the Domain Name but a weight of evidence suggesting the contrary. Accordingly, the Panel finds that the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
There can be little doubt that the Respondent was aware of the Complainant’s UNILEVER mark at the time of registration of the Domain Names.
One way a complainant may demonstrate bad faith registration and use, as envisaged by the non-exhaustive list of circumstances described in paragraph 4(b) of the Policy, is to show that a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website (or other online location) by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website (or other location) or of products or services on it. This is the case in this instance.
Moreover, it has been held by past UDRP panels that where a domain name has been used, or connected with phishing activities, a finding of bad faith will follow (e.g. Confédération Nationale du Crédit Mutuel v. Daniel Delcore, WIPO Case No. DLC2009-0001). Needless to say, use of a domain name in connection with fraud would also support a finding of bad faith registration and use.
The Panel finds that, for the purposes of the Policy, there is evidence of both registration and use of the Domain Names 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 Names <unilevermail.com> and <unileverweb.com> be transferred to the Complainant.
Date: April 29, 2020