WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sobeys Capital Incorporated v. Private By Design, LLC / Max Bill and Billi Max

Case No. D2020-1670

1. The Parties

The Complainant is Sobeys Capital Incorporated, Canada, represented by Gowlings WLG (Canada) LLP, Canada.

The Respondents are Private By Design, LLC, United States of America / Max Bill, Canada and Billi Max, Canada (collectively, the “Respondent”).

2. The Domain Names and Registrar

The first disputed domain name <interview-sobeys.com> (the “First Disputed Domain Name”) is registered with Eranet International Limited.

The second disputed domain name <job-sobeys.com> (the “ Second Disputed Domain Name ”, the First Disputed Domain Name and the Second Disputed Domain Name being collectively referred to as the “Disputed Domain Names”) is registered with Porkbun LLC (collectively, the “Registrars”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 25, 2020. On June 26, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On June 27, 2020, and July 7, 2020, the Registrars transmitted by email to the Center their verification responses disclosing registrants and contact information for the Disputed Domain Names, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 7, 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 7, 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 13, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 2, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 3, 2020.

The Center appointed Jacques de Werra as the sole panelist in this matter on August 27, 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 1907, the Complainant, together with its corporate affiliates, is part of a group of companies, which is a national grocery retailer in Canada, with 1,500 retail grocery stores located in all provinces and territories of Canada. The Complainant’s grocery stores are operated under retail banners including “Sobeys”. The Complainant is also a major Canadian employer, and employs over 120,000 employees across Canada. In fiscal year 2019, the Complainant’s revenues were CAD 25.1 billion.

The Complainant has registered the <sobeys.com> domain name and operates a website associated to that domain name since at least as early as 2000. The Complainant also owns a dedicated domain name and operates a corresponding website to advertise and to promote career opportunities <jobs.sobeyscareers.com>.

The Complainant is the owner of many trademark registrations and applications which contain, or are comprised of, the element “Sobeys” and it has used SOBEYS as a trademark for over 70 years in association with its businesses. The Complainant is the owner of the Canadian word trademark SOBEYS Registration No. TMA486397, which was registered in classes 1, 4, 5, 6, 8, 10, 16, 18, 24, 25, 29, 30, 31, 32, 33, 34, and 35 on November 27, 1997 (“the Trademark”), including for the services of “operating supermarkets and grocery stores”.

The Respondent registered the First Disputed Domain Name on May 29, 2020 and the Second Disputed Domain Name on May 6, 2020. The First Disputed Domain Name is used to direct users to a fake SOBEYS website, which prominently features the Complainant’s Trademark, trade name, and other details about the Complainant, all without any authorization. This fake website is used to solicit “job applications” from prospective employees requiring the provision of confidential personal information.

Email addresses associated with the Disputed Domain Names have also been used to send third parties solicitation emails purporting to emanate from the Complainant and offering employment with the Complainant’s business. These fraudulent emails represent that they are being sent by human resources personnel employed by the Complainant, and solicit confidential personal and financial information from the victims of the scam. Among other things, recipients are requested to sign an “Employment Contract” and to also provide confidential personal and financial information including copies of government documents, banking information, and postal addresses in order to “accept” the employment position offered by the Respondent posing as “Sobeys” after first submitting a “job application” through the fake website hosted at the First Disputed Domain Name. As with the fake website operated by the Respondent, the “Employment Contract” and other materials sent to recipients of these emails prominently feature the Complainant’s Trademark and include references to the Complainant’s actual activities.

Since May 2020, the Complainant has received numerous complaints from third party victims of this phishing scam alerting it to the Respondent’s fraudulent activities in association with the Disputed Domain Names.

On June 8, 2020, shortly after the Complainant became aware of the Respondent’s use of the First Disputed Domain Name, it sent correspondence through counsel to the Respondent demanding that steps be taken to stop the unauthorized use of the First Disputed Domain Name and the Trademark. No response has been received from the Respondent to this correspondence, nor has the Respondent otherwise complied with the Complainant’s demands to halt its activities.

5. Parties’ Contentions

A. Complainant

The Complainant claims in essence that the Disputed Domain Names are confusingly similar to the Complainant’s Trademark, both individually and collectively, because each of the Disputed Domain Names misappropriates the whole of the Complainant’s distinctive, registered Trademark and because the addition of descriptive or non-distinctive terms will not militate against a finding of confusion.

The addition of either the “jobs” or “interview” element does not distinguish the Disputed Domaine Names from the Complainant’s Trademark, but if anything serves to reinforce the connection to the Complainant and the Trademark and convey the false impression that the Disputed Domain Names emanate from the human resources or careers departments of the Complainant. The Disputed Domain Names are therefore confusingly similar to the Trademark in which the Complainant had rights both before and after the date of registration.

The Complainant claims that the Trademark is famous or very well known in Canada in association with the Complainant’s retail grocery business, and among the Canadian public generally. In view of the reputation and significant portfolio of registered trademarks, to the extent necessary, it is reasonable to infer that the Respondent had actual or constructive knowledge of the Complainant’s <sobeys.com> domain name and website and of the Trademark when it registered the Disputed Domain Names.

There has never been any relationship between the Complainant and the Respondent and the Respondent is not licensed, or otherwise authorized, be it directly or indirectly, to register or use, the Trademark in any manner whatsoever, including in, or as part of, any domain name.

The Respondent is making fraudulent use of the First Disputed Domain Name and email addresses connected with both Disputed Domain Names by sending email messages to third parties from persons claiming to be working for the Complainant. This use of emails associated with the Disputed Domain Names to engage in fraudulent behavior and to invite prospective job applicants to provide personal and financial information in order to pursue employment opportunities with the Complainant constitutes a prima facie showing of the Respondent’s lack of rights or legitimate interests in the Disputed Domain Names.

The Respondent has never been commonly known by the Disputed Domain Names and the fact that the First Disputed Domain Name currently resolves to a fake “Sobeys” website featuring the Complainant’s logos and Trademark demonstrates that this Disputed Domain Name is being used as part of a phishing scam or for some other illegitimate purpose. In addition, the manner in which the Respondent has used the email addresses associated with both Disputed Domain Names further demonstrates that the Respondent has intended its use of the Disputed Domain Names to be confusing with and exploit the Trademark and reputation of the Complainant for its own commercial benefit. Nor does the Respondent’s current use of either of the Disputed Domain Names constitute a legitimate, noncommercial or fair use of the Disputed Domain Names. To the contrary, the Respondent’s activities in association with the Disputed Domain Names are manifestly commercial in nature. The Respondent has attempted to “phish” confidential personal and financial information from third parties through their use of the Disputed Domain Names. The Complainant has consequently made out a prima facie case that the Respondent lacks rights or legitimate interests, and so the burden of proof on this element shifts to the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the Disputed Domain Names. In the absence of any such evidence, it must be found that the Complainant has satisfied the second element.

The Respondent registered the Disputed Domain Names for the purpose of disrupting the business of the Complainant. By registering and using the Disputed Domain Names which are confusingly similar to the Complainant’s well-known Trademark, the Respondent has attempted to take advantage of the goodwill in the Trademark in an attempt to exploit, for commercial gain, Internet users who are likely to believe there is some connection between the Respondent’s fake “Sobeys” website and fraudulent email solicitations and the Complainant’s business. The use of the Disputed Domain Names is disruptive to the Complainant, as Internet users are likely to be confused into believing that the Respondent’s activities are affiliated with, or sponsored by, the Complainant when that is not the case. Indeed, numerous prospective employees of the Complainant have contacted the Complainant expressing such confusion.

The Respondent’s targeting of prospective employees of the Complainant is particularly disruptive to the Complainant’s business. The Complainant uses its own <jobs.sobeyscareers.com> domain name to advertise and promote career opportunities, and enjoys a strong, positive reputation among current and prospective employees as a prominent and major Canadian employer. Any association between the fraudulent activities of the Respondent and the Complainant’s business and Trademark in the mind of the public, and particularly those seeking employment with the Complainant, is certain to harm the valuable goodwill in its well-known Trademark and constitute a serious disruption to the Complainant’s business. In the circumstances, it is inconceivable that the Respondent registered the Disputed Domain Names without clear prior knowledge of the Complainant and the Trademark, or that the Respondent was unaware that its choice of the Disputed Domain Names would attract Internet users in a manner that was likely to create confusion.

The fact that the Respondent provided false contact information (street addresses falsely linked to one of the Complainant’s own stores and the offices of a competitor), together with the Respondent’s choice to register the Disputed Domain Names with a privacy shield, demonstrates bad faith on the part of the Respondent and an intention to prevent efficient enforcement of the Complainant’s legitimate trademark rights. The use of a privacy shield and the provision of false contact information, having regard to the choice of the Disputed Domain Names and purposes for which they have been used, further demonstrates bad faith. Given that the Respondent is using the Disputed Domain Names and associated email addresses in association with a phishing scam to acquire victims’ personal and confidential information, it is clear that the use of the Disputed Domain Names has been an intentional attempt to attract commercial gain and that this use constitutes a bad faith use of the Disputed Domain Names under the Policy even in case of absence of active use of the Disputed Domain Names.

B. Respondent

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

6. Discussion and Findings

6.1 Procedural issue: Consolidation of the Proceedings

The Panel must decide whether it can decide in these proceedings on the First Disputed Domain Name and on the Second Disputed Domain Name.

Paragraph 10(e) of the Rules grants a panel the power to consolidate multiple domain name disputes. At the same time, paragraph 3(c) of the Rules provides that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.1.

Where a complaint is filed against multiple respondents, UDRP panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario. WIPO Overview 3.0, section 4.11.2.

UDRP panels have considered a range of factors, typically present in some combination, as useful to determining whether such consolidation is appropriate, such as similarities in or relevant aspects of (i) the registrants’ identity(ies) including pseudonyms, (ii) the registrants’ contact information including email address(es), postal address(es), or phone number(s), including any pattern of irregularities, (iii) relevant IP addresses, name servers, or webhost(s), (iv) the content or layout of websites corresponding to the disputed domain names, (v) the nature of the marks at issue (e.g., where a registrant targets a specific sector), (vi) any naming patterns in the disputed domain names (e.g., <mark-country> or <mark-goods>), (vii) the relevant language/scripts of the disputed domain names particularly where they are the same as the mark(s) at issue, (viii) any changes by the respondent relating to any of the above items following communications regarding the disputed domain name(s), (ix) any evidence of respondent affiliation with respect to the ability to control the disputed domain name(s), (x) any (prior) pattern of similar respondent behavior, or (xi) other arguments made by the complainant and/or disclosures by the respondent(s).

The Complainant has indicated (without being contradicted by the Respondent who has not participated in these proceedings) that the respective registrant information relating to the Disputed Domain Names shows similarities. For example, the registrant of the First Disputed Domain Name is identified as “Billi Max”, while the registrant of the Second Disputed Domain Name uses the very similar name/pseudonym “Max Bill”. In addition, the Disputed Domain Names share the same naming pattern, consisting of a descriptive word associated with employment (“interview” and “job”) followed by a hyphen and then followed by the Complainant’s Trademark. The postal addresses included in the respective registrant information relating to each of the Disputed Domain Names also share a pattern of irregularities. The address associated with the First Disputed Domain Name is the address of one of the Complainant’s retail grocery stores located in London, Ontario and the postal address associated with the Second Disputed Domain Name is the address of offices of one of the Complainant’s competitors in the Canadian grocery industry. In addition, the manner in which the Disputed Domain Names have been used demonstrate that they are under common control. Specifically, the Respondent has used the same name in association with similarly structured email addresses associated with both Disputed Domain Names (“career@interview-sobeys.com” and “career@jobsobeys.com”) to send unsolicited emails with virtually identical content to third parties as part of a fraudulent phishing scam. The Respondent has further sent follow up emails to those third parties using the same name in association with similarly structured email addresses associated with both Disputed Domain Names (“humanresource@interview-sobeys.com” and “humanresource@jobsobeys.com”).

As a result, the Complainant alleges that the similarities in the registrant information itself, the naming pattern of the Disputed Domain Names, and the manner of use of the Disputed Domain Names demonstrate that they are under common control such that consolidation is appropriate in this case.

On this basis, the Panel considers based on the uncontradicted submission of the Complainant that the Disputed Domain Names are held by the same Respondent so that this would not constitute a submission of a complaint against multiple respondents. Even if this were the case, the Panel considers on the basis of the elements submitted that the Disputed Domain Names are subject to common control, that the consolidation of the proceedings would be fair and equitable to all parties (also in the light of the choice of the Respondent not to participate in these proceedings) and that such consolidation would foster procedural efficiency.

On this basis, the Panel holds that it can consolidate in these proceedings the disputes relating to the First Disputed Domain Name and to the Second Disputed Domain Name.

6.2 Substantive Issues

Paragraph 4(a) of the Policy provides that the complainant must prove each of the following three elements in order to succeed in a UDRP proceeding:

(i) the respondent’s domain name is identical or confusingly similar to 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 domain name; and

(iii) the respondent’s domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel is satisfied that the Complainant has rights to a trademark or service mark as reflected in the Trademark.

A comparison between the First Disputed Domain Name and the Trademark shows that the First Disputed Domain Name is confusingly similar to the Trademark. The First Disputed Domain Name <interview‑sobeys.com> contains the Trademark, which constitutes the distinctive element of the First Disputed Domain Name, which is preceded by the descriptive word “interview”, whereby this addition does not affect the finding of confusing similarity between the First Disputed Domain Name and the Trademark.

A comparison between the Second Disputed Domain Name and the Trademark similarly shows that the Second Disputed Domain Name is confusingly similar to the Trademark. The Second Disputed Domain Name <job-sobeys.com> contains the Trademark, which constitutes the distinctive element of the Second Disputed Domain Name, which is preceded by the descriptive word “job”, whereby this addition does not affect the finding of confusing similarity between the Second Disputed Domain Name and the Trademark.

As a result, based on the rights of the Complainant in the Trademark and on the confusing similarity between the Disputed Domain Names and the Trademark, the Panel finds that the condition of paragraph 4(a)(i) of the Policy is met.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the Disputed Domain Names by demonstrating any of the following:

(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the Disputed Domain Names or a name corresponding to the Disputed Domain Names in connection with a bona fide offering of goods or services; or

(ii) the Respondent has been commonly known by the Disputed Domain Names, even if it has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Names, without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests, and once such prima facie case is made the burden of production shifts to the respondent to come forward with relevant evidence of rights or legitimate interests in the domain name. WIPO Overview 3.0, section 2.1.

In the Panel’s opinion, the Complainant has made a prima facie case against the Respondent. The Respondent indeed registered the Disputed Domain Names that reflect the highly distinctive Trademark owned by the Complainant without its authorization. The way how the Disputed Domain Names have been used in order to mislead potential job applicants looking for job opportunities by misusing the Complainant’s Trademark, website and email addresses clearly establishes that the Respondent targeted the Complainant’s Trademark and corporate activities.

The Panel notes that it is established that the use of the Disputed Domain Names and of corresponding email addresses in order to mislead potential job applicants and to obtain confidential information from them cannot confer rights or legitimate interests on the Respondent. WIPO Overview 3.0, section 2.13.1.

The Complainant has thus established prima facie that the Respondent has no rights or legitimate interests in the Disputed Domain Names, which has not been challenged by the Respondent (even assuming that it could be challenged) who has not participated in the proceedings.

On this basis, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Names and that paragraph 4(a)(ii) of the Policy is met.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of registration and use of a domain name in bad faith:

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

(ii) circumstances indicating that the respondent 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) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its 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 its website or location.

The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.

In this case, the Panel holds that the Respondent registered the Disputed Domain Names in bad faith because the Trademark distinctively identify the Complainant’s Trademark so that the choice of the Disputed Domain Names, which are clearly intended to replicate the Trademark and to refer to the Complainant’s activities, cannot be reasonably explained otherwise than as a reference to the Trademark owned by the Complainant.

The Panel further notes that the use of the Disputed Domain Names for purposes other than hosting trademark-abusive content in order to send deceptive emails to obtain sensitive or confidential personal information from prospective job applicants constitutes bad faith use under the Policy. WIPO Overview 3.0, section 3.4.

On this basis, the Panel finds that the Respondent registered and uses the Disputed Domain Names in bad faith pursuant to paragraph 4(b) of the Policy, so that the conditions of paragraph 4(a)(iii) of the Policy are met.

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 names <interview-sobeys.com> and <job-sobeys.com> be transferred to the Complainant.

Jacques de Werra
Sole Panelist
Date: September 15, 2020