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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Perstorp AB v. Bruce C. Whitehurst, Xray Eye & Vision Clinics

Case No. D2020-1668

1. The Parties

The Complainant is Perstorp AB, France, represented by Ports Group AB, Sweden.

The Respondent is Bruce C. Whitehurst, Xray Eye & Vision Clinics, Slovenia.

2. The Domain Name and Registrar

The disputed domain name <prestorp.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 June 25, 2020. On June 25, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 26, 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 July 2, 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 July 2, 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 July 7, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 27, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 29, 2020.

The Center appointed Tuukka Airaksinen as the sole panelist in this matter on August 10, 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 was founded in 1880 in Sweden and is today one of the world’s leading chemical companies, employing over 1,300 employees in Asia, Europe and North America. The Complainant owns the trademark PERSTORP, registered in various jurisdictions such as in the European Union under No. 5786348 as of January 22, 2008.

The disputed domain name was registered on June 11, 2020.

5. Parties’ Contentions

A. Complainant

The disputed domain name is almost identical to the verbal element of the Complainant’s trademark PERSTORP , the only difference being the position of the letters of “r” and “e”. The disputed domain name is an obvious misspelling of the Complainant’s trademark.

The Respondent has no rights or legitimate interests in the disputed domain names. The Respondent is not commonly known by the disputed domain name, it is not used for the bona fide offering of goods or services and the Respondent is not making any legitimate or noncommercial fair use of the disputed domain name. The Complainant has not authorized the Respondent to register the disputed domain names.

The Respondent has sent a fraudulent email to a customer of the Complainant, trying to divert a bank transmission from the Complainant. By registering a misspelled version of the Complainant’s trademark, the Respondent was seeking to create confusion with the Complainant’s trademark by making Internet users to believe that the phishing email was sent by the Complainant.

B. Respondent

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

6. Discussion and Findings

In order to obtain the transfer of a domain name, a complainant must prove the three elements of paragraph 4(a) of the Policy, regardless of whether the respondent files a response to the complaint. The first element is that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. The second element a complainant must prove is that the respondent has no rights or legitimate interests in respect of the domain name. The third element a complainant must establish is that the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires that the Complainant establish that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. Consequently, the Complainant must prove that it has rights to a trademark, and that the disputed domain name is identical or confusingly similar to this trademark.

The Complainant has shown that it is the owner of the registered trademark PERSTORP.

In the disputed domain name, the Complainant’s trademark is included in its entirety, the only exception being that in the disputed domain name the letters “e” and “r” have changed places. This does not render the disputed domain name substantially different to the trademark, as the misspelling merely changes the order of two letters of the Complainant’s trademark. The Complainant’s trademark is clearly recognizable in the disputed domain name. The Panel considers that this is a typical case of typosquatting, see section 1.9 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)

Accordingly, the Panel finds that the disputed domains name is confusingly similar to the Complainant’s respective trademark and hence the first element of the Policy has been fulfilled.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy requires that the Complainant establish that the Respondent has no rights or legitimate interests to the disputed domain name.

It is widely accepted among UDRP panels that once a complainant has made a prima facie showing indicating the absence of the respondent’s rights or legitimate interests in a disputed domain name the burden of production shifts to the respondent to come forward with evidence of such rights or legitimate interests. If the respondent fails to do so, the complainant is deemed to have satisfied the second element of the Policy. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270 and section 2.1 of WIPO Overview 3.0.

The Complainant has credibly submitted that the Respondent is neither affiliated with the Complainant in any way nor has it been authorized by the Complainant to use and register the disputed domain name, that the Respondent has no prior rights or legitimate interests in the disputed domain name, and that the Respondent has not made and is not making a legitimate noncommercial or fair use of the disputed domain name and is not commonly known by the disputed domain name in accordance with paragraph 4(c)(ii) of the Policy.

Accordingly, the Panel finds that the Complainant has made a prima facie case that has not been rebutted by the Respondent. Considering the Panel’s findings below, the Panel finds that there are no other circumstances that provide the Respondent with any rights or legitimate interests in the disputed domain name. Therefore, the Panel finds that the second element of the Policy is fulfilled.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires that the Complainant establish that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy provides that the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

“(i) circumstances indicating that [the Respondent has] registered or has 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 the Complainant, for valuable consideration in excess of [the Respondent’s] documented out-of-pocket costs directly related to the domain name; or

(ii) the Respondent has 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 [the Respondent has] engaged in a pattern of such conduct; or

(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business or competitor; or

(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to 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 [the Respondent’s] website or location or of a product or service on the Respondent’s website or location.”

Considering that the Complainant has been using the trademark since 1880 and is a major company in the chemical industry, it is clear that the Respondent must have been aware of the Complainant when registering the disputed domain name. Therefore, the disputed domain name was registered in bad faith.

The disputed domain name has been used in a phishing attempt in order to confuse Internet users into believing that the email has been sent by the Complainant and to divert a financial transaction to the Respondent’s benefit.

By creating confusion with the Complainant’s trademark and using it to intentionally mislead Internet users as to the source of the email, to the Panel considers that the disputed domain name has been used to attract, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, Internet users into believing that the Respondent’s email is in fact sent by one of the Complainant’s employee.

Therefore, the Panel finds that the third element of the Policy is fulfilled.

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 <prestorp.com> be transferred to the Complainant.

Tuukka Airaksinen
Sole Panelist
Date: August 24, 2020

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