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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Wärtsilä Technology Oy Ab v. McKeith Powers

Case No. D2020-1525

1. The Parties

The Complainant is Wärtsilä Technology Oy Ab., Finland, represented by SafeNames Ltd., United Kingdom.

The Respondent is McKeith Powers, Djibouti.

2. The Domain Name and Registrar

The disputed domain name <wartsile.com> (the “Disputed Domain Name”) 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 June 11, 2020. On June 11, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 12, 2020, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that 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 June 22, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 12, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 13, 2020.

The Center appointed Colin T. O’Brien as the sole panelist in this matter on July 24, 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 lifecycle solutions for the marine and energy markets. As of 2019, the Complainant had net sales of EUR 5.2 billion with approximately 19,000 employees. The Complainant has operations in over 200 locations across more than 80 countries. The Complainant was established in and has been operating continually since 1834.

The Complainant owns the following trademark registrations:

WÄRTSILÄ International Reg. No. 1005789 Registered May 22, 2009 in Classes 7, 9, 11, 12, 35, 37, 41, and 42;

WÄRTSILÄ United States of America Reg. No. 2078313 Registered July 15, 1997 in Class 7;

WÄRTSILÄ European Union Reg. No. 838466 Registered February 21, 2000 in Classes 7, 12, and 37;

WÄRTSILÄ European Union Reg. No. 8304149 Registered November 25, 2009 in Classes 7, 9, 11, 12, 35, 37, 41, and 42; and

WARTSILA European Union Reg. No. 11765294 Registered September 18, 2013 in Classes 7, 9, 11, 12, 35, 37, 41, and 42.

The Complainant also owns the following domain names: <wartsila.club>, <wartsila.cm>, <wartsila.co>, <wartsila.co.jp>, <wartsila.com>, <wartsila.com.co>, <wartsila.company>, <wartsila.careers>, and <wartsila.biz>.

The Complainant operates the following social media pages:

Facebook: “https://www.facebook.com/wartsila/-”

Twitter: “https://twitter.com/wartsilacorp-”

Instagram: “https://www.instagram.com/wartsilacorp/-”

LinkedIn: “https://www.linkedin.com/company/wartsila-”

YouTube: “https://www.youtube.com/user/wartsilacorp”

The Disputed Domain Name <wartsile.com> was registered on May 31, 2020.

5. Parties’ Contentions

A. Complainant

The Complainant has spent a considerable amount of time, money and effort promoting, marketing and using the WÄRTSILÄ or WARTSILA mark to identify and distinguish its services domestically and internationally. The WÄRTSILÄ and WARTSILA marks have acquired distinctiveness in the market worldwide with customers that rely on the brand’s name and quality.

Previous UDRP panels have recognized the value of the WÄRTSILÄ/WARTSILA trademark and its association with the Complainant including Wärtsilä Technology Oy Ab v. Zhaoxingming, WIPO Case No. DCC2018-0003 and Wärtsilä Corporation v. Öckeröborgen IT AB, WIPO Case No. D2017-1354.

The Disputed Domain Name is confusingly similar to the Complainant’s trademark. Due to the Respondent’s replacement of the letter “a” at the end of the Disputed Domain Name with the letter “ee”.

The generic Top-Level domain “.com” featured in the Disputed Domain Name should be disregarded.

The Respondent lacks a right and a legitimate interest in the Disputed Domain Name.

The Respondent has not registered any trademarks for the term “Wärtsilä” or “Wartsila”, and there is no evidence that the Respondent holds any unregistered right to the term “Wärtsilä” or “Wartsila”. The Respondent has not received any license from the Complainant to use a domain name which features the WÄRTSILÄ or WARTSILA trademark. All active trademarks for the term “Wärtsilä” or “Wartsila” are held by the Complainant.

The Respondent does not use the Disputed Domain Name to host an active website but does use the Disputed Domain Name to facilitate email phishing attacks. The Respondent has used the Disputed Domain Name to send out email communications purporting to originate from the Complainant, specifically, a senior employee from the Complainant’s business, to contact clients of the Complainant in an attempt to request money transfers to be redirected to an unauthorized bank account through the process of sending “spoofing emails” which incorporate the Disputed Domain Name.

The Respondent has used the Disputed Domain Name in an attempt to impersonate a senior employee of the Complainant’s business. The Respondent has achieved this not only through the email spoofing tactic but by also including official contact information and the Complainant’s logo in the signature of the email.

The Respondent is not known, nor has it ever been known as “Wärtsilä/Wartsila”. The WÄRTSILÄ or WARTSILA trademark is distinctive and not used in commerce other than by the Complainant. There is no plausible reason for the registration of the Disputed Domain Name, other than to take advantage of the goodwill and valuable reputation attached to the WÄRTSILÄ or WARTSILA brand.

The Respondent is not making legitimate non-commercial use of the Disputed Domain Name. The Respondent has used the Disputed Domain Name with the sole intention of generating commercial gain through misleading clients of the Complainant to redirect invoices to the Respondent’s bank account.

The Complainant’s earliest WÄRTSILÄ or WARTSILA trademark registration predates the creation date of the Disputed Domain Name by at least 20 years. The Complainant has accrued substantial goodwill and recognition since the Complainant’s establishment in 1834. The Respondent had actual knowledge of the Complainant’s rights in the WÄRTSILÄ or WARTSILA trademark before registering the Disputed Domain Name. This knowledge is evident because the Respondent used the Disputed Domain Name to host an email address which is designed to appear to so closely similar to the Complainant’s trademark.

The Disputed Domain Name consists of an intentional misspelling of the Complainant’s trademark. The Respondent has used the Disputed Domain Name with the intention to profit off the likelihood that users, on the receiving end of the fraudulent emails, will be confused as to the source, sponsorship or affiliation of the Disputed Domain Name. Specifically, misleading users with the confusing similarity of the Disputed Domain Name with the Complainant’s trademark, as they are unlikely to notice the small change in the email address once they press reply.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has demonstrated it owns registered trademark rights in the WÄRTSILÄ or WARTSILA trademark worldwide. The only difference between the Disputed Domain Name and the Complainant’s trademark is the purposeful misspelling of WARTSILA in which the final “a” is replaced by an “e”. The Panel finds that the Complainant has met its burden of proof and has established that the Disputed Domain Name is confusingly similar to the trademark in which the Complainant has rights. See, Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775.

B. Rights or Legitimate Interests

The Complainant has presented a prima facie case that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; has not at any time been generally known by the Disputed Domain Name; and is not making a legitimate noncommercial of fair use of the Disputed Domain Name. The Complainant has also presented prima facie evidence the Respondent is using the Disputed Domain Name to send out email communications purporting to originate from the Complainant, specifically, a senior employee from the Complainant’s business, to contact clients of the Complainant in an attempt to request money transfers to be redirected to an unauthorized bank account through the process of sending “spoofing emails” which incorporate the Disputed Domain Name.

After a complainant has made a prima facie case, the burden of production shifts to the respondent to present evidence demonstrating rights or legitimate interests in the domain name. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.

Here, the Respondent has provided no evidence of any right or legitimate interest in the Disputed Domain Name.

In the absence of any evidence indicating a legitimate reason for registering the Disputed Domain Name, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Pursuant to Policy, paragraph 4(a)(iii), in order to be granted relief, the Complainant must show that the Disputed Domain Name was registered and is being used in bad faith.

Paragraph 4(b) of the Policy sets forth the following non-exhaustive grounds of bad faith registration and use:

(i) circumstances indicating that you [the respondent] have registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your [the respondent’s] documented out-of-pocket costs directly related to the domain name; or

(ii) you [the respondent] have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you [the respondent] have engaged in a pattern of such conduct; or

(iii) you [the respondent] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you [the respondent] have intentionally attempted to attract, for commercial gain, Internet users to your [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your [the respondent’s] website or location or of a product or service on your [the respondent’s] website or location.

The Panel finds that the Complainant has satisfied its burden of proof in establishing the Respondent’s bad faith registration and use. Paragraph 4(b)(iv) states that evidence of bad faith may include a respondent’s use of a domain name to intentionally attempt to attract, for commercial gain.

Due to the renown of the WARTSILA mark, it is inconceivable that the Respondent registered the Disputed Domain Name without knowledge of the Complainant.

The Complainant has also submitted evidence that the Respondent has used the Disputed Domain Name to send spoofing emails to the Complainant’s clients in an attempt to request money transfers to be redirected to an unauthorized bank account. This is clearly indicative of bad faith on the part of the Respondent.

In the absence of any evidence or explanation from Respondent, the Panel finds that the only plausible basis for registering the Disputed Domain Name has been for illegitimate purposes.

Accordingly, the Panel concludes that the Complainant has satisfied 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 <wartsile.com> be transferred to the Complainant.

Colin T. O’Brien
Sole Panelist
Date: August 7, 2020

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