WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Médecins Sans Frontières ASBL, MSF Supply SCRL, Médecins Sans Frontières International v. WhoIs Privacy Protection Foundation / Cherry Bliss
Case No. D2020-2146
1. The Parties
The Complainant is Médecins Sans Frontières ASBL, Belgium, MSF Supply SCRL, Belgium, Médecins Sans Frontières International, Switzerland, internally represented.
The Respondent is WhoIs Privacy Protection Foundation / Cherry Bliss, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <brusselsmsf.org> is registered with Hosting Concepts B.V. d/b/a Openprovider (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 14, 2020. On August 14, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 17, 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 September 4, 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 September 8, 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 September 9, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 29, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 30, 2020.
The Center appointed Knud Wallberg as the sole panelist in this matter on October 6, 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 Complainants in this administrative proceeding are Médecins Sans Frontières ASBL, hereinafter referred to as Médecins Sans Frontières Belgium, together with MSF-Supply SCRL, hereinafter called MSF-Supply, and Médecins Sans Frontières International.
Médecins Sans Frontières Belgium is an association under Belgian law which carries out humanitarian medical operations, more specifically which provides medical assistance to populations whose life or health is threatened in the event of armed conflict, epidemics, pandemics, natural disasters or exclusion from care.
MSF-Supply is in charge of providing Médecins Sans Frontières Belgium operations, from purchase to transport to their destination, with equipment, materials and medicines for ongoing programmes and emergency interventions (displaced populations, epidemics, natural disasters, conflicts, etc.).
Médecins Sans Frontières International is an association under Swiss law that brings together the different legal entities of the MSF movement and provides leadership for the medical action of its members. It is responsible worldwide for the use of names, trademarks, domain names and other intellectual property rights and for the conclusion of licensing agreements on these rights.
Médecins Sans Frontières International is the owner of several trademark registrations including a European Union registration of the mark MSF, registered on December 20, 2004, under registration number 2609584 and covering goods and services in classes 16, 36, 41, 44 and 45.
The disputed domain name was registered on June 3, 2020, and has been used as part of a sophisticated hacking and attempted fraud scheme, as described below in section 5 A. 3.
5. Parties’ Contentions
1. The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights
The Complainants assert that the disputed domain name is confusingly similar to the trademark MSF since it contains this mark with the addition of the purely descriptive name Brussels. In addition, the disputed domain name <brusselsmsf.org> is identical to the domain name <brussels.msf.org> owned and effectively used by Médecins Sans Frontières Belgium since January 16, 1995, except for the dot between MSF and Brussels, which does not appear in the disputed domain name.
2. The Respondent has no rights or legitimate interests in respect of the disputed domain name
The Complainants further asserts that the Respondent has no rights or legitimate interests in the disputed domain name. No link exists between the holder of the disputed domain name and the Complainants. On the contrary, the Respondent is clearly using the disputed domain name in an unfair and illegitimate manner, to carry out fraudulent acts.
3. The disputed domain name was registered and is being used in bad faith
Finally, the Complainants assert that the disputed domain name has been registered and is being used in bad faith as part of a hacking and attempted fraud scheme. According to the Complainant it is thus clear that the disputed domain name was registered and has been used exclusively for the purpose of disrupting the operations of the Complainants by creating a likelihood of confusion with the trademarks owned by Médecins Sans Frontières International and with the domain name <brussels.msf.org>.
The Panel finds that it is in the public interest to gain insight into this blatant abuse of the domain name system, so below is a detailed excerpt of the description in the Complaint of how the disputed domain name has been used.
In May 2020, MSF-Supply placed an order for surgical masks with a Chinese trader1 , hereafter referred to as the “real supplier”, whose email address is […]@yyy.cn.
At the end of May 2020, an email account of a Médecins Sans Frontières Belgium employee (Accounting Manager) is corrupted by a hacker via phishing. The employee’s email address was then used to send messages to other employees belonging to the MSF movement. Attached to these messages were attachments that corrupted the accounts of the recipients who opened them and entered their identifiers. The corrupted accounts included the account of the Purchase & Inventory Officer of MSFSupply and this account was later used as part the below described fraudulent activities.
In the beginning of June 2020, MSF-Supply received an email that it believed is from the real supplier communicating the shipping documents. In reality it is a “false supplier” who used the email address […]@yyy.pro, which is almost identical to the email address of the real supplier […]@yyy.cn, the only difference being the Top-Level designation. It is thus likely that the false supplier had knowledge of the order placed by MSF-Supply through the above-mentioned corrupted email accounts.
Shortly after, the false supplier wrote to MSF-Supply stating that its Board of Directors had decided that all international payments should be made to the false suppliers subsidiary bank account in Hong Kong, China, and the false supplier sent an invoice to MSF-Supply with the bank details. When MSF-Supply initiated the payment to the said bank account it was refused by the bank as the account was considered as suspicious.
A later lookup in the relevant WhoIs database revealed that the Registrant of the […]@yyy.pro email address was identical to the Registrant of the disputed domain name in this case.
Immediately following the registration of the disputed domain name <brusselsmsf.org> on June 3, 2020, the disputed domain name was used to create several email addresses comprising of email@example.com, and where both the first names and the names corresponded to those of existing MSF-Supply employees. The signature used in the fraudulent emails included the MSF mark.
In the following month, the Registrant of the disputed domain name corresponded with the real supplier pretending to be MSF employees by using the disputed domain name as described above, and without the real supplier realizing the deception. One of these emails contained a false proof of payment to make the real supplier believe that MSF had made the payment in its favor.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that a complainant must prove each of the following:
(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules, or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar (in the sense of the Policy) to the Complainant, Médecins Sans Frontières International’s, registered trademark MSF, since the disputed domain name contains the mark MSF in its entirety together with the term “brussels”. See Section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The generic Top-Level Domain (“gTLD”) “.org” is a standard registration requirement and as such is generally disregarded under the first element confusing similarity test. See Section 1.11.1 of the WIPO Overview 3.0.
The Panel finds that the conditions in paragraph 4(a)(i) of the Policy are therefore fulfilled in relation to the disputed domain name.
B. Rights or Legitimate Interests
It is obvious from the Complaint, that the Complainants have not licensed or otherwise permitted the Respondent to use the trademark MSF.
Further, given the circumstances of this case, the Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not rebutted this, and the way the Respondent has been and is using the disputed domain name (see below in the section 6.C) effectively excludes any possible finding of rights or legitimate interests. See section 2.13.2 of the WIPO Overview 3.0.
Consequently, the Panel finds that the conditions in paragraph 4(a)(ii) of the Policy are also fulfilled.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove both registration and use of the disputed domain name in bad faith. Paragraph 4(b) of the Policy provides examples of circumstances which shall be evidence of registration and use in bad faith:
(i) circumstances indicating that the holder 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 complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder 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 holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’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 holder’s website or location or of a product or service on the holder’s website or location.
Accordingly, for the Complainant to succeed, the Panel must be satisfied that the disputed domain name has been registered and is being used in bad faith.
Given the circumstances of the case, in particular the way the disputed domain name has been used, it is obvious to the Panel in the current circumstances that the Respondent registered the disputed domain name in bad faith.
It is equally obvious to the Panel that the Respondent uses the disputed domain name as part of an sophisticated attempt to deceive customers of the Complainants by creating a likelihood of confusion with the Complainants and with the Complainants’ mark as to the source of the Respondent’s activities. This constitutes bad faith use under the Policy, see section 3.4 of the WIPO Overview 3.0.
The Panel therefore finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.
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 <brusselsmsf.org> be transferred to the Complainant, Médecins Sans Frontières ASBL.
Date: October 20, 2020
1 The name of the Chinese supplier as well as it’s true email address is not reproduced in the decision, since these informations have no relevance for the understanding of nor for the outcome of the case.