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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

JSP Limited v. Domain Administrator, See PrivacyGuardian.org / Andrei Costa

Case No. D2020-1495

1. The Parties

The Complainant is JSP Limited, United Kingdom, represented by Wynne-Jones IP Limited, United Kingdom.

The Respondent is Domain Administrator, See PrivacyGuardian.org, United States of America / Andrei Costa, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <jsp-safety.icu> is registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 9, 2020. On June 10, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 10, 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 June 17, 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 June 18, 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 June 22, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 12, 2020. On June 22, 2020, the Center received an informal email communication from the Respondent. The Respondent did not submit a formal Response. On July 15, 2020, the Center informed the Parties that it would proceed to panel appointment.

The Center appointed David Taylor as the sole panelist in this matter on July 30, 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

Founded in 1964, the Complainant is a company incorporated under the laws of England and Wales. The Complainant is a manufacturer of “above-the-neck” Personal Protective Equipment (“PPE”), specialising in head, eye, face, and respiratory protection.

For use in connection with its PPE products, the Complainant has registered the following trademarks:

- European Union Trade Mark No. 000622035, JSP, registered on December 13, 1999; and

- European Union Trade Mark No. 014370977, JSP, registered on November 11, 2015.

The Complainant is also the registrant of the domain name <jspsafety.com>, which resolves to a consumer-facing website that includes, inter alia, the Complainant’s product catalogue and locations of the Complainant’s authorised retailers.

The disputed domain name was registered on March 25, 2020. The disputed domain name resolves to a website (the “Respondent’s website”) that purports to offer the Complainant’s PPE products for sale. The Respondent’s website includes the Complainant’s “JSP” logo as displayed on the Complainant’s official website, the Complainant’s physical address, the Complainant’s United Kingdom Companies House details, and a reference to the Complainant’s website at “www.jspsafety.com” as its “parent site”.

5. Parties’ Contentions

A. Complainant

The Complainant asserts rights in the JSP trademark. The Complainant submits that the disputed domain name is identical to its trademark, if the suffix “safety.icu” is disregarded.

The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant asserts that it has never licensed or consented to the registration or use of the disputed domain name, that none of the circumstances listed in paragraph 4(c) of the Policy applies, and that there are no other circumstances that justify the Respondent’s registration and use of the disputed domain name.

The Complainant submits that the disputed domain name was registered and is being used in bad faith. The Complainant asserts that the Respondent is using the disputed domain name to falsely advertise the Complainant’s PPE products. The Complainant notes that the Respondent has included links on its website that redirect Internet users to the Complainant’s official website, and submits that the Respondent is attempting to deceive Internet users. The Complainant further asserts that it has attempted a number of “trap purchases”, and that the only means of payment is using cryptocurrency, and that the Complainant’s contact details are listed on the sales page and on invoices issued by the Respondent. The Complainant argues that the disputed domain name was registered bad faith in order to take advantage of the current Coronavirus disease 2019 (“COVID-19”) pandemic, and that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the disputed domain name.

The Complainant requests transfer of the disputed domain name.

B. Respondent

The Respondent did not submit any substantive reply to the Complainant’s contentions. The Respondent’s sole communication simply reads: “hi, let me know what you need from me. thank you”.

6. Discussion and Findings

In order to prevail in its Complaint, the Complainant must prove, on the balance of probabilities, that it has satisfied the requirements of paragraph 4(a) of the Policy, namely:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(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 finds that the Complainant has established rights in the JSP trademark, the registration details of which are provided in the factual-background section above.

The disputed domain name comprises the Complainant’s JSP trademark in its entirety, followed by a hyphen and the descriptive word “safety” under the generic Top-Level Domain (“gTLD”) “.icu”. Prior UDRP panels have consistently found that where the relevant trademark is recognisable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element of the Policy; see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8. The Panel finds that the Complainant’s trademark is clearly recognisable as the leading element of the disputed domain name. The gTLD “.icu” may be disregarded for the purposes of comparison under the first element; see WIPO Overview 3.0, section 1.11.1.

The Panel finds the disputed domain name to be confusingly similar to the Complainant’s trademark. The Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The disputed domain name resolves to a website via which the Respondent purports to offer the Complainant’s products for sale. The Respondent’s website makes prominent use of the Complainant’s logo, and includes the Complainant’s contact information, including a link to the Complainant’s contact page on its official website at “www.jspsafety.com”. The Respondent appears to have misappropriated images of the Complainant’s products from the Complainant’s website. The Respondent’s website copies the overall “look and feel” of the Complainant’s website, and gives a clear impression of being a website operated by the Complainant.

The Panel notes that the Complainant has not authorised the Respondent to make any use of its JSP trademark in a domain name or otherwise, and finds that the Respondent’s use of the disputed domain name is intended to give the false impression that the Respondent’s website is either operated by or authorised by the Complainant. The Complainant has also called into question the genuineness of the Respondent’s offerings of goods via its website, asserting that the goods are falsely advertised, and that the Respondent’s website is intended to deceive Internet users. The Respondent has not come forward with any evidence to rebut the Complainant’s allegations in this regard. Prior UDRP panels have categorically held that use of a domain name for illegal activity (e.g., the sale of counterfeit goods, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent; see WIPO Overview 3.0, section 2.13. In light of the above, the Panel finds that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy.

The Panel further finds that the Respondent, who registered the disputed domain name using a privacy service, and whose underlying details list “Andrei Costa” as the registrant, is not commonly known by the disputed domain name pursuant to paragraph 4(c)(ii) of the Policy. Nor is the Respondent making any legitimate noncommercial or fair use of the disputed domain name, as contemplated by paragraph 4(c)(iii) of the Policy.

The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The contents of the Respondent’s website, as described above, clearly indicate that the Respondent was well aware of the Complainant and its prior rights in the JSP trademark at the time that the Respondent registered the disputed domain name. The Respondent’s registration of a domain name whose second level closely resembles that of the Complainant’s domain name <jspsafety.com> serves as further evidence of the Respondent’s intent to target the Complainant. The Panel finds that the Respondent, having no relationship with or authorisation from the Complainant to make use of its JSP trademark, registered the disputed domain name in order to create a misleading impression of association with the Complainant, in bad faith.

The Panel accepts the Complainant’s submission that by using the disputed domain name, the Respondent has attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s JSP trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website, in bad faith pursuant to paragraph 4(b)(iv) of the Policy.

The Panel further finds that the Respondent’s registration of the disputed domain name using a privacy service, its display of the Complainant’s contact information on its website as if it were its own, its use of images misappropriated from the Complainant’s website, its acceptance of payment in cryptocurrency only, and the Respondent’s failure to produce any evidence to support a claim that the Respondent’s business offerings are genuine, all serve as further indicators of the Respondent’s bad faith.

The Panel finds that the disputed domain name was registered and is being used in bad faith. The Complainant has satisfied the requirements of 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 disputed domain name <jsp-safety.icu> be transferred to the Complainant.

David Taylor
Sole Panelist
Date: August 15, 2020

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