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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Schibsted ASA v. WhoisGuard Protected, WhoisGuard, Inc. / Stefano Daal

Case No. D2020-1545

1. The Parties

The Complainant is Schibsted ASA, Norway, represented by Ports Group AB, Sweden.

The Respondent is WhoisGuard Protected, WhoisGuard, Inc. / Stefano Daal, United States of America.

2. The Domain Name and Registrar

The disputed domain name <schibsled.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 12, 2020. On June 12, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 22, 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 June 24, 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 July 3, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 23, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 28, 2020.

The Center appointed Adam Samuel as the sole panelist in this matter on September 1, 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 multinational corporation headquartered in Oslo, Norway whose principal activities are in e-commerce and media. It provides online marketplaces in Norway, Sweden and Finland, through its subsidiaries such as Blocket. The Complainant owns a number of trademarks for the name SCHIBSTED including European Union Trade Mark SCHIBSTED (word), Registration Number 006476501, registered on October 3, 2008.

The Respondent registered the disputed domain name on April 23, 2020. Initially, the disputed domain resolved to a parking page. Currently, the disputed domain name resolves to a website which indicates the existence of an issue with the domain name.

The Complainant promotes its activities through the domain name <schibsted.com>, registered on October 18, 1996.

5. Parties’ Contentions

A. Complainant

The disputed domain name is composed of the verbal element “schibsled” and the generic Top-Level Domain (“gTLD) “.com”. “Schibsled is almost identical to the Complainant’s trademark except that the letter “t” in the trademark has been replaced by the letter “l”. The two letters are similar in appearance. The disputed domain name contains an obvious misspelling of the Complainant’s trademark. The Complainant’s trademark is clearly recognizable within the disputed domain name.

The Complainant has not authorized the Respondent to use the Complainant’s trademark and the Respondent does not own any trademark rights in the name “Schibsted” or “Schibsled”. There is no evidence that the Respondent is commonly known by the disputed domain name. The respondent has never made any use of or demonstrable preparations to use the disputed domain name or any name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.

The disputed domain has been used to create an email address which the Respondent has used to send at least one fraudulent email to a customer of the Complainant purporting to come from Blocket, a Swedish online market place owned by the Complainant. This invites the recipient to click on the email to “synchronize your account” (in the English translation of the Swedish original). The email ends “Schibsted family”. It was sent the day after the disputed domain name’s registration.

The use of a domain name to send deceptive emails to Internet users cannot be regarded as fair use or as conferring rights or legitimate interests on the Respondent. The Respondent deliberately registered a misspelled version of the Complainant’s trademark in a domain name to confuse Internet users as the source of a phishing email. This behaviour demonstrates that the Respondent knows all about the Complainant and registered the disputed domain name to convince Internet users into believing that the Respondent’s emails came from the Complainant. The absence of content on the website when it was first registered, shows that registration of the disputed domain name was purely for the purposes of sending phishing emails. This is reinforced by the Respondent’s use of the privacy service and failure to respond to the Complainant’s cease and desist letter.

B. Respondent

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

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:

(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 has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The disputed domain name consists of the Complainant’s trademark, with the replacement of the letter “t” with the letter “l”, and the gTLD “.com”. The gTLD is irrelevant here because it does not affect the meaning of the disputed domain name and is a standard registration requirement. See section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

This is an example of typo-squatting. The change of one letter does not prevent the disputed domain name from being confusingly similar to the Complainant’s trademark. See section 1.9 of the WIPO Overview 3.0. Like the Complainant’s trademark, the misspelt version of it, used in the disputed domain name, has no ordinary meaning. For all these reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark.

B. Rights or Legitimate Interests

The Respondent is not called “schibsled” or anything similar. There is no evidence that the Complainant has ever authorized the Respondent to use its trademarks. The Respondent does not appear to have used the disputed domain name for any purpose other than sending at least one email purporting to be a subsidiary of the Complainant. Based on the available record, and in the absence of any response on this point, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

The day after registering the disputed domain name, the Respondent emailed a customer of the Complainant, from the address <[…]@schibsled.com>, purporting to be Blocket, a subsidiary of the Complainant and ending the message with “Schibsted family”. Based on this information, the Panel concludes that the Respondent registered the disputed domain name, knowing about the Complainant and one of its subsidiaries and intending to use the disputed domain name as it did, the following day, to send emails dishonestly pretending to be the Complainant or a member of its corporate group. This demonstrates that the Respondent registered and has used the disputed domain name in bad faith. See section 3.1.4 of the WIPO Overview 3.0.

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 <schibsled.com> be transferred to the Complainant.

Adam Samuel
Sole Panelist
Date: September 14, 2020

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