WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Middleby Corporation v. WhoisGuard Protected, WhoisGuard, Inc. / Leila Yang
Case No. D2020-2307
1. The Parties
The Complainant is The Middleby Corporation, United States of America (“United States”), represented by CSC Digital Brand Services AB, Sweden.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama, / Leila Yang, People’s Republic of China.
2. The Domain Name and Registrar
The disputed domain name <middleby.cam> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 3, 2020. On September 3, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 10, 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 10, 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 September 14, 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 September 16, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 6, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 7, 2020.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on October 12, 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.
On October 20, 2020, the Panel issued Procedural Order No. 1, requesting clarification by the Complainant of annex 9 of the Amended Complaint. The reply was forwarded to the Panel by the Center on October 23, 2020.
4. Factual Background
The Complainant trades in the United States and internationally as a supplier of commercial and residential systems and equipment associated with food processing and baking. Its origins trace back, through previous ownership, to 1888 as a Chicago bakery supplier founded by Joseph Middleby and John Marshall. Middleby Marshall Inc., is an operating subsidiary of the Middleby Corporation. The scale of the Complainant is illustrated by its being listed on the Nasdaq Global Market and declaring a gross profit in excess of USD 1 billion for 2018 and 2019.
The Complainant owns trademarks for MIDDLEBY, MIDDLEBY-MARSHALL or MIDDLEBY-MARSHALL registered under the jurisdictions of Brazil, China, the United States, Mexico, Canada, Australia and Spain:
MIDDLEBY, Brazilian National Institute of Intellectual Property, registered March 13, 2018, registration number 909269394, in class 11;
MIDDLEBY-MARSHALL, National Intellectual Property Administration of the People’s Republic of China (“CNIPA”), registered September 14, 1998, registration number 1207431, in class 11;
MIDDLEBY-MARSHALL, United States Patent and Trademark Office, registered December 28, 1978, registration number 1109952, in class 11;
MIDDLEBY MARSHALL, Mexican Institute of Intellectual Property, registered February 24, 1989, registration number 570383, in class 11;
MIDDLEBY-MARSHALL, Canadian Intellectual Property Office, registered March 3, 1989, registration number TMA352547, in classes 4 and 11;
MIDDLEBY MARSHALL, IP Australia, registered November 14, 1990, registration number 483891, in class 11;
MIDDLEBY MARSHALL, Spanish Patent and Trademark Office, registered July 8, 1997, registration number M2103299, in class 11.
The Complainant also owns and promotes itself through the website “www.middleby.com” and owns, directly or indirectly, some 63 domain names including <middleby.global>, <middleby.site>, <middleby.us> and <middleby.com.cn>.
No background information is available about the Respondent except for the name and contact details provided at the time of registration of the disputed domain name, which, according to the WhoIs record, appears to have been created on or about July 2, 2020. The disputed domain name has not resolved to an active website but has been used as a source of email messages.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s trademark. The Complainant has been known as “Middleby” for over a century and is the owner of the registered trademarks MIDDLEBY, MIDDLEBY MARSHALL and MIDDLEBY-MARSHALL. The Complainant says that in addition to being its registered trademark, MIDDLEBY, is a distinctive identifier that consumers associate with the Complainant’s goods, and that has acquired unregistered or common law trademark rights satisfactory for the purposes of the present proceeding.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has the exclusive right to use its trademarks in connection with goods or services in the classes for which they are registered.
The Complainant says it is not associated with the Respondent and has not given the Respondent any permission to use the Complainant’s trademarks in any way. The Complainant says furthermore that there is no evidence that the Respondent, who has provided the name “Leila Yang”, is commonly known by the disputed domain name.
The Complainant says the Respondent has not used the disputed domain name for any bona fide offering of goods or services but has used it as a source of allegedly fraudulent email communications intended to appear to come from employees of the Complainant. The Complainant means to say that the Respondent has created email addresses in the form “@middleby.cam” preceded by a personal identifier, and in sending them has “spoofed” the apparent sender’s address so that it appears to be the Complainant’s address “@middleby.com”. The purpose of the emails has been to induce recipients to make payments to the Respondent while thinking they are going to the Complainant.
The Complainant further contends that the disputed domain name was registered and is being used by the Respondent in bad faith. By registering the disputed domain name similar to the Complainant’s trademark, the Respondent has demonstrated its knowledge of the Complainant and its business.
The Complainant alleges, and has annexed a series of emails from the Respondent in support, that the Respondent has engaged in attempted fraud by impersonation of the Complainant, and says this is further evidence the Respondent cannot have been unaware of the Complainant and its business.
Specifically, as alluded to above, the disputed domain name is not in use for a website but is in use for the sending of emails. These are dressed up to make them appear to have been sent by employees of the Complainant, also by falsifying the sender’s email address to appear to be that of the Complainant, and by the reproduction of header and footer material portraying the Complainant. The Complainant alleges the purpose of the emails is for phishing, i.e., to trick the recipient into divulging valuable confidential information or into sending money.
The Complainant submits that the use of the disputed domain name for illegitimate phishing activity is clear evidence of its registration and use in bad faith.
The Complainant also submits that, in the present circumstances, the Respondent’s use of a privacy service in order to hide its identity constitutes further evidence of registration and use of the disputed domain name in bad faith.
The Complainant has cited a number of previous decisions under the Policy that it considers to support its position.
The Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable dispute-resolution provider, in compliance with the Rules, that:
“(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith”.
The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
A. Identical or Confusingly Similar
The Complainant has produced copies of registration documents for the trademarks MIDDLEBY, MIDDLEBY MARSHALL and MIDDLEBY-MARSHALL registered variously between December 28, 1978, and March 13, 2018. The Panel is satisfied by the evidence that the Complainant has rights in these trademarks.
It is necessary to find, by a direct and objective comparison, whether the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. At this stage it is not necessary to consider such matters as the relative registration dates of the trademark and the disputed domain name, the Complainant’s repute or the Respondent’s possible rights.
The Complainant’s trademark MIDDLEBY, standing alone, was registered in Brazil on March 13, 2018. Disregarding the generic Top-Level Domain (“gTLD”) “.cam”, the disputed domain name is clearly identical to the trademark MIDDLEBY, and the Panel so finds.
The trademarks MIDDLEBY MARSHALL and MIDDLEBY-MARSHALL commence with the element MIDDLEBY, to which the disputed domain name is identical. In particular the trademark MIDDLEBY-MARSHALL was registered in the People’s Republic of China, being the Respondent’s stated domicile, on September 14, 1998. On balance, the Panel finds the disputed domain name to be confusingly similar to the Complainant’s trademarks MIDDLEBY MARSHALL and MIDDLEBY-MARSHALL.
Accordingly the Panel finds for the Complainant under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has stated that it has no association with the Respondent, who has not been granted permission to use the Complainant’s trademarks in any way. The Complainant asserts prima facie that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Paragraph 4(c) of the Policy provides for the Respondent to contest the Complainant’s prima facie case under paragraph 4(a)(ii) of the Policy and to establish rights or legitimate interests in a disputed domain name by demonstrating, without limitation:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.
The Respondent has not replied and has not asserted rights or legitimate interests in the disputed domain name with reference to paragraphs 4(c)(i), (ii) or (iii) of the Policy or otherwise.
There is no evidence of use of, or of demonstrable preparations to use, the disputed domain name in connection with any bona fide offering of goods or services under paragraph 4(c)(i) of the Policy. The evidence is to the effect that the disputed domain name has been used as the basis for a family of email addresses that, as discussed in more detail in section 6C below, do not reflect any activity that could be regarded as bona fide under the Policy.
There is no evidence to the effect that the Respondent, “Leila Yang”, is commonly known by the disputed domain name under paragraph 4(c)(ii) of the Policy.
In terms of paragraph 4(c)(iii) of the Policy, the evidence indicates, as discussed in further detail in section 6C below, that the disputed domain name has indeed been used for intended commercial gain in order to divert consumers misleadingly from the Complainant to interests associated with the Respondent.
Accordingly the Panel finds under paragraph 4(a)(ii) of the Policy that the Respondent does not have rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
The Complainant must prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered in bad faith and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(i) circumstances indicating that you have registered or you have 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 documented out-of-pocket costs directly related to the domain name; or
(ii) you 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 have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location”.
The provisions of paragraph 4(b) of the Policy are without limitation and bad faith may be found alternatively by the Panel.
The screen capture produced by the Complainant shows the disputed domain name not to resolve to any meaningful website. The screen reads in part “This site can’t be reached” and “midleby.cam’s server IP address could not be found”.
The disputed domain name has, however, been used to send emails. The Complainant has annexed a file of emails with dates commencing June 16, 2020, concerning negotiations between its Regional Sales Manager, its Chain Accounts & Area Sales Manager, and the intending purchaser of a commercial quantity of kitchen equipment such as fryers and griddles. The purchaser sent its purchase order to the Complainant, and requested a pro forma invoice, on June 30, 2020.
After this date, email messages were received by the purchaser that were made to look as though they were from the Complainant, but they were not. For example, the “From” line of the email header contained the name of a purported entity of the Complainant, and a changed “mailto:” reply address pretended to be the Complainant. Email systems can be rigged such that the displayed reply path is false but nevertheless leads back to the true sender, in this case the Respondent. The Complainant has provided a print of an email dated July 6, 2020, addressed to the purchaser with the sender’s apparent address being the Complainant’s address “@middleby.com”, together with a version of the same email with its header unmasked to reveal that in reality it was sent by an entity of the Respondent “@middleby.cam”.
The purchaser replied to some of the deceptive emails as though replying to the Complainant and thereby was actually deceived by the Respondent.
The thrust of the deceptive emails from the Respondent was evidently to divert the purchaser’s payment to the Respondent’s benefit. A deceptive email dated July 1, 2020, masquerading as from the Complainant, asked the purchaser to change the name of the payee from the Complainant to “Middleby XME, S.L.U”, with an address in Spain. This email was clearly the start of a series sent by the Respondent, and the discrepancy that July 1, 2020, was the day before the apparent registration date of the disputed domain name, as shown in the WhoIs, could have numerous inconsequential explanations. A deceptive email dated July 2, 2020, masquerading as from the Complainant, claimed that the bank account previously provided by the Complainant was in error and asked for it to be changed. In deceptive emails dated July 6, 2020, the Respondent twice provided the purchaser with different account numbers for payment to a Mexican bank, at which the Complainant says it does not have an account. A deceptive attachment, bearing a reproduction of the Complainant’s logo letterhead and a rubber stamp either copied from one of the Complainant’s or composed for the purpose, gave payment instructions to a misleading payee name and bank account details.
On the totality of the evidence, and on the balance of probabilities, the Panel concludes that the Respondent is likely to have been monitoring the flow of emails between the Complainant and the purchaser and had interceded at the appropriate moment in order to try to induce the purchaser to make its payment to a bank account controlled by the Respondent. Without recourse to the provisions of paragraph 4(b) of the Policy for a finding of bad faith, which are without limitation, the Panel is satisfied that the Respondent’s conduct, often described as “phishing”, being an attempt to extract valuable information by misrepresentation, has in this case amounted to registration and use of the disputed domain name in bad faith.
More specifically in the terms of paragraph 4(b)(iv) of the Policy, the Respondent is found to have used the disputed domain name in order to attract Internet users to its on-line location, being its email address, by confusion with the Complainant, constituting use in bad faith, and to have registered the disputed domain name for that specific purpose.
Accordingly, on the evidence and on the balance of probabilities, the Panel finds the Respondent to have registered and used the disputed domain name in bad faith in the terms of paragraph 4(a)(iii) of the Policy.
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 <middleby.cam> be transferred to the Complainant.
Dr. Clive N.A. Trotman
Date: October 29, 2020