WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Wärtsilä Technology Oy Ab v. Whois Privacy Protection Foundation / Manc Logis
Case No. D2020-0866
1. The Parties
The Complainant is Wärtsilä Technology Oy Ab, Finland, represented by SafeNames Ltd., United Kingdom.
The Respondent is Whois Privacy Protection Foundation, Netherlands / Manc Logis, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <waitsila.com> is registered with Hosting Concepts B.V. d/b/a Openprovider (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 8, 2020. On April 8, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 9, 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 14, 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 April 15, 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 April 17, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 7, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 8, 2020.
The Center appointed Miguel B. O’Farrell as the sole panelist in this matter on May 18, 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 Finnish corporation, which operates in the field of smart technologies and complete life cycle solutions for the marine and energy markets.
The Complainant, its affiliates, subsidiaries and associated companies own trademarks for the WÄRTSILÄ and WARTSILA marks (“WÄRTSILÄ/WARTSILA mark”) in different jurisdictions. Several of the Complainant’s trademark registrations are listed below:
WÄRTSILÄ, International Trademark No. 1005789 registered on May 22, 2009, in classes 7, 9, 11, 12, 35, 37, 41, and 42, designating multiple jurisdictions;
WÄRTSILÄ, United States Trademark No. 2078313 registered on July 15, 1997, in class 7;
WÄRTSILÄ, European Union Trade Mark No. 000838466 registered on February 21, 2000, in classes 7, 12, and 37;
WÄRTSILÄ, European Union Trade Mark No. 008304149 registered on November 25, 2009, in classes 7, 9, 11, 12, 35, 37, 41, and 42; and
WARTSILA, European Union Trade Mark No. 011765294 registered on September 18, 2013, in classes 7, 9, 11, 12, 35, 37, 41, and 42.
From its main website at “www.wartsila.com” the Complainant advertises its products and services, in addition to promoting its WÄRTSILÄ/WARTSILA mark globally. The Complainant holds a portfolio of many active domain name registrations incorporating the Complainant’s mark with country code Top-Level Domain (“ccTLD”) extensions as well as registrations with generic Top-Level Domain (“gTLD”) extensions, such as <wartsila.cm> and <wartsila.carreers>.
The Complainant has also established a social media presence and uses the WÄRTSILÄ/WARTSILA mark to promote its services on Facebook: “https://www.facebook.com/wartsila/”; Twitter: “https://twitter.com/wartsilacorp”; Instagram: “https://instagram.com/wartsilacorp” and others.
The disputed domain name was registered on March 23, 2020, and does not resolve to any active webpage. The Complainant has provided evidence that the Respondent is using the disputed domain name for phishing purposes against the Complainant’s clients.
5. Parties’ Contentions
The Complainant submits that it has developed substantial goodwill and recognition over its 180-year history, operating in over 200 locations across more than 80 countries, with approximately 19,000 employees. Its earliest above-mentioned trademark registrations predate the registration of the disputed domain name by over 20 years.
In summary, the Complainant claims that the disputed domain name is confusingly similar with the trademark in which the Complainant has rights; that the Respondent has no rights or legitimate interests in respect of the disputed domain name, which was registered and is being used in bad faith.
More specifically, the Complainant asserts that the Respondent has not been licensed by the Complainant to use domain names featuring the WÄRTSILÄ/WARTSILA mark and that none of the circumstances of paragraph 4(c) of the Policy (under which the Respondent may demonstrate legitimate interests in the disputed domain name) apply in this case.
The Respondent has not registered any trademarks for the term WÄRTSILÄ/WARTSILA nor has the Complainant found any evidence that the Respondent retains unregistered rights in the said trademark or in “waitsila”. The WÄRTSILÄ/WARTSILA mark is distinctive and not used in commerce other than by the Complainant.
The Complainant sustains that the Respondent is not known, nor has ever been known as “wärtsilä/wartsila” nor “waitsila”.
The Respondent has used the disputed domain name to encourage the Complainant’s client to pay an invoice to a bank account presumably controlled by the Respondent. Therefore, there is no doubt that the Respondent has incurred in deceptive practices with a view to making a commercial gain.
The Respondent, prior to notice of the Complaint, used the disputed domain name to hack and impersonate an official employee (the “Employee”) of the Complainant with the intention of deriving commercial gain from one of the Complainant’s clients (the “Client”). The subject email was written as a follow-up to the Employee’s previous message, adding to an existing communications thread between the Employee and the Client. This message suggested to the Client that payment for the Complainant’s services now be made to an overseas subsidiary bank of the Complainant. The communication also proposed the creation of new invoices to reflect these changes.
The Respondent used information available to it, from unauthorized access to the Employee’s email account, to tailor its communications with a view to phishing a payment from the Client.
The Complainant further submits that it sent a takedown request to the registrar on March 24, 2020, as a result of which the disputed domain name was suspended. The Complainant submits that the Registrar’s compliance with this request constitutes further evidence that the disputed domain name was used for fraudulent purpose.
Finally, the Complainant requests that the Panel order the transfer of the disputed domain name to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the disputed domain name, the Complainant must prove each of the following, namely that:
(i) the disputed domain name is identical or confusingly similar with 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 was registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has proved that it has rights in the WÄRTSILÄ/WARTSILA mark.
As set forth in section 1.7 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) the standing test for confusing similarity involves a reasoned but relatively straightforward comparison between the trademark and the disputed domain name to determine whether the domain name is confusingly similar with the trademark. The test involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name.
The Panel considers that the disputed domain name <waitsila.com> and the Complainant’s trademark WARTSILA are confusingly similar. The only difference being the replacement of the third letter “r” in the trademark by an “i” in the disputed domain name. The Panel further considers that such difference is the result of a blatant typosquatting and certainly does not suffice to avoid a finding of confusing similarity between the disputed domain name and the Complainant’s trademark.
For the purposes of assessing identity or confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the Top-Level Domain (“TLD”) as it is viewed as a standard registration requirement (section 1.11.1 of WIPO Overview 3.0). Thus, for the test for confusing similarity of this first prong the Panel shall disregard the “.com” included in the disputed domain name.
The Panel finds that the disputed domain name is confusingly similar to the trademark WARTSILA in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
B. Rights or Legitimate Interests
Although paragraph 4(c) of the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established, as it is put in section 2.1 of WIPO Overview 3.0, that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.
As sustained by the Complainant, there is no evidence in the present case that the Respondent has been commonly known by the disputed domain name, enabling it to establish rights or legitimate interest in the disputed domain name.
Furthermore, there is no evidence in the file to prove any of the circumstances mentioned in paragraph 4(c) of the Policy, nor any other to prove that the Respondent has legitimate interests or that it has established rights in the disputed domain name.
Likewise, and as further discussed under section 6C of this decision, it does not seem that the Respondent is making any legitimate noncommercial or fair use of the disputed domain name – which is confusingly similar to the Complainant’s above-mentioned trademarks – but rather that it intends to use the disputed domain name for the purpose of deriving unfair monitory advantage by confusing Internet users and leading them to believe that the website to which the disputed domain name relates is the official website of the Complainant.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not replied to the Complainant’s contentions and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the disputed domain name (Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name and that the requirement of paragraph 4(a)(ii) of the Policy has been fulfilled.
C. Registered and Used in Bad Faith
To succeed under the Policy, a complainant must show that the disputed domain name has been both registered and used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent must have been aware of the Complainant’s business and its WÄRTSILÄ/WARTSILA mark when it registered the disputed domain name <waitsila.com> on March 23, 2020.
The Respondent when registering the disputed domain name has targeted the Complainant’s trademark, in a typical act of typosquatting, by substituting the third letter “r” in the Complainant’s trademark by a “i” in the disputed domain name, so that both terms look almost identical, with the intention to confuse Internet users and capitalize on the fame of the Complainant’s trademark for its own monetary benefit.
The Complainant has proved that the Respondent has used the disputed domain name to encourage a Complainant’s client to make payment of an invoice to a bank account presumably controlled by the Respondent.
In similar circumstances a UDRP panel said: “The fact that the Respondent used the disputed domain name to create a business email account and sent a phishing email to the Complainant’s customers indicates not only that the Respondent had prior knowledge about the Complainant’s business and trademark, but also that it registered the disputed domain name with the aim of fraudulently obtaining monies by creating likelihood of confusion with the Complainant’s trademark.” (PwC Business Trust and Price Waterhouse Coopers LLP / Sarah Wakida, WIPO Case No. D2020-0232).
The Panel finds that the Respondent has registered and uses the disputed domain name intentionally to attempt to attract for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement. This amounts to bad faith under paragraph 4(b)(iv) 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 <waitsila.com> be transferred to the Complainant.
Miguel B. O’Farrell
Date: May 26, 2020