WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sumitomo Heavy Industries Construction Cranes Co., Ltd. v. Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / Colleen K Deleon
Case No. D2020-0826
1. The Parties
The Complainant is Sumitomo Heavy Industries Construction Cranes Co., Ltd., Japan, represented by Law Office of D. J. Jones PLLC, United States of America (the “United States”).
The Respondent is Domain Admin, Privacy Protect, LLC (PrivacyProtect.org), United States / Colleen K Deleon, United States.
2. The Domain Name and Registrar
The disputed domain name <hsc--cranes.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 3, 2020. On April 6, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 7, 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 April 8, 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 amendment to the Complaint on April 9, 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 the Respondent of the Complaint, and the proceedings commenced on April 9, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 29, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 30, 2020.
The Center appointed George R. F. Souter as the sole panelist in this matter on May 6, 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 Japanese company, known, until April 1, 2018, as Hitachi Sumitomo Heavy Industries Construction Crane Co. Ltd. It is the proprietor of United States Trademark Registration No 5677657, dating from February 19, 2019, and European Union Trademark Registration No 017232489, dating from February 7, 2018, both in respect of its trademark HSC CRANES. The Complainant uses its HSC CRANES trademark in connection with the sale of cranes, excavating machines and other goods, and in the repair and maintenance of excavation machinery, and other services.
The disputed domain name was registered on January 17, 2020. The Complainant has furnished the Panel, in a number of annexes to the Complaint, with details of a number of complaints by third parties as to the use being made by the Respondent. The complaints can be categorised as to the use of the disputed domain name in connection with a “fake check scheme”, which operates as follows: An individual victim (“victim”) is contacted by a purported corporate recruiter for the Complainant, who solicits the victim’s interest in acting as a sales agent for the Complainant. The purported corporate recruiter is not actually associated with Complainant. After the victim responds to this e-mail, they are contacted by an individual (“perpetrator”) using the fraudulent email address of [...]@hsc--cranes.com. The perpetrator sends e-mails from the fraudulent email address using the persona of a fictitious “Senior Vice President” of the Complainant. The perpetrator is not actually affiliated with Complainant. The perpetrator creates a falsified “Letter of Authorization” in the name of the Complainant’s President for the purpose of making the victim believe that they are authorized as a collection agent of the Complainant. The perpetrator creates a falsified invoice for a non-existent transaction by the Complainant. In at least one case, the victim collected a check in relation to a falsified invoice, which was dishonored. The perpetrator subsequently stopped further contact with the victim. The Complainant has received many inquiries regarding the fake check scheme from actual and potential victims, resulting in lost productivity.
5. Parties’ Contentions
The Complainant alleges that the disputed domain name is confusingly similar to its HSC CRANES trademark, containing its HSC CRANES in its entirety, with the inconsequential addition of a descriptive or non-distinctive element, namely a hyphen.
The Complainant alleges that the Respondent lacks rights or legitimate interests in the disputed domain name, in particular that the Complainant has never granted permission to the Respondent to use its HSC CRANES trademark in connection with a domain name or otherwise, and, to the best of the Complainant’s knowledge, the domain name in dispute has not been used for any purpose other than the fake check scheme described in the Factual Background above.
The Complainant alleges that the disputed domain name was registered in bad faith, and is being used in bad faith, in connection with the fake check scheme described above.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain name be transferred to the Complainant:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
It is well-established in prior decisions under the UDRP, with which the Panel agrees, that a generic Top-Level Domain (“gTLD”) indicator is irrelevant when comparing a trademark with a disputed domain name. Accordingly, the Panel considers the “.com” indicator to be irrelevant in the circumstances of the present case, and so finds.
It has been well-established in prior decisions under the UDRP that a disputed domain name which wholly contains a complainant’s well-known trademark together with the mere addition of descriptive or non distinctive elements is insufficient to avoid a finding of confusing similarity between a trademark and a disputed domain name. In the circumstances of the present case, the Panel considers that the mere addition of a hyphen is clearly the addition of nothing more than a descriptive or non-distinctive element, and does not distract from the Complainant’s HSC CRANES trademark, which is clearly recognizable within the disputed domain name. The Panel, accordingly, finds that the disputed domain name is confusingly similar to the Complainant’s HSC CRANES trademark, and that the Complainant has satisfied the test of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
It is the consensus view of UDRP panels, with which the Panel agrees, that a prima facie case advanced by the complainant will generally be sufficient for the complainant to be deemed to have satisfied the requirement of paragraph 4(a)(ii) of the Policy, provided the respondent does not come forward with evidence demonstrating rights or legitimate interests in the domain name and the complainant has presented a sufficient prima facie case to succeed under paragraph 4(a)(ii) of the Policy.
The Panel considers the submissions put forward by the Complainant as sufficient to be regarded as a prima facie case, and the Respondent did not take the opportunity to advance any claim of rights or legitimate interests in the disputed domain name to rebut this prima facie case.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel is of the view that the finding that a respondent has no rights or legitimate interests in a disputed domain name can lead, in appropriate circumstances, to a finding of registration of a disputed domain name in bad faith. The circumstance of the present case, in which the Panel is convinced that the Complainant’s HSC CRANES trademark was deliberately appropriated in the disputed domain name, are such that the Panel concludes that a finding of registration in bad faith is justified, and so finds.
The Panel considers that the use of the fake check scheme described above, which has already been the subject of a number of third party complaints, is clearly damaging to the Complainant’s interests, and to its reputation, not least in that it might leave a feeling that the Complainant might have been in some way associated with the nefarious behaviour set out in the fake check scheme described above. Accordingly, the Panel has had no difficulty in finding that the disputed domain name is being used in bad faith.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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 <hsc--cranes.com> be transferred to the Complainant.
George R. F. Souter
Date: May 20, 2020