WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dycom Industries, Inc. v. Elif Bayrak
Case No. D2020-2660
1. The Parties
The Complainant is Dycom Industries, Inc., United States of America (“United States”), internally represented.
The Respondent is Elif Bayrak, United States.
2. The Domain Name and Registrar
The disputed domain name <dycomin.com> is registered with eNom, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 12, 2020. On October 13, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 13, 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 October 19, 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 October 22, 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 October 27, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 16, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 27, 2020.
The Center appointed Nels T. Lippert as the sole panelist in this matter on December 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 Complainant uses and has registered in the United States the word mark DYCOM, United States Registration No. 3,193,496, issued January 2, 2007 and the word mark DYCOM INDUSTRIES INC. Registration No 5.528,888, issued July 31, 2018. Both trademarks are used in connection with “installation of utility, cable and gas distribution systems, installation, maintenance and repair of power, cable, fiber optic, and various other telecommunication systems” and “electronically locating and marking placement of underground cables, pipes and wires for utility companies; design for others in the field of engineering and communication and power transmission systems.” The Complainant uses the domain name <dycomind.com> which it registered on January 20, 1997 and which resolves to the Complainant’s website.
The disputed domain name was registered on September 19, 2020 and resolves to a website for what appears to be a solar energy-related company but according to the Complainant (as is described below) has been used for fraudulent purposes.
5. Parties’ Contentions
The Complainant asserts that the disputed domain name is confusingly similar to the Complainant’s trademark because it incorporates the entirety of the Complainant’s DYCOM trademark.
The Complainant contends that the Respondent has no rights of legitimate interests in respect of the disputed domain name because it does not advertise or offer any goods or services of the Respondent and the Respondent is not using the disputed domain name in connection with a legitimate commercial use. The Complainant notes that the disputed domain name and associated email addresses are being used by the Respondent to fraudulently represent itself as the Complainant and employees of the Complainant to confuse third parties in order to solicit and place fraudulent product orders.
The Complainant further contends that the disputed domain name was registered and is being used in bad faith because it was registered primarily for the purposes of impersonating the Complainant and take advantage of the Complainant’s reputation to mislead third parties to believe that communications from email addresses associated with the Complainant were sent by the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(i) the 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 domain name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules, “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
A. Identical or Confusingly Similar
In this case, the disputed domain name incorporates the Complainant’s DYCOM trademark in its entirety with the addition of the two extra letters “in”. As noted in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “[w]here the relevant trademark is recognizable within the disputed domain name, the addition of other terms …would not prevent a finding of confusing similarity”. Furthermore, as noted in WIPO Overview 3.0, section 1.9, “a domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element”. In this case, the addition of the “in” in the disputed domain name is a variation of typosquatting by the addition of two letters to the trademark. Furthermore, the addition of the applicable Top-Level Domain is viewed as a standard registration requirement and, as such, is disregarded under the first element confusing similarity test. WIPO Overview 3.0, section 1.11. Therefore, the disputed domain name is confusingly similar to the Complainant’s DYCOM trademark.
The Panel finds the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interest
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the domain name, 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 Domain Name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the domain name, 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 domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Because a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1. The Complainant in this proceeding has demonstrated trademark rights and a lack of permission to use the Complainant’s mark in the disputed domain name. The Complainant contends that none of the circumstances under paragraph 4(c) of the Policy would apply in this case. The Respondent has not advanced rights or legitimate interests to rebut the Complainant’s prima facie case, and none are evident from the record or the use of the disputed domain name. To the contrary, according to the unrebutted allegations of the Complainant (supported by evidence) the Respondent has used the disputed domain name to fraudulently represent itself as the Complainant; this unequivocally shows lack of rights or legitimate interests on the Respondent’s part.
The Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
In this case, the Complainant has submitted compelling evidence that the disputed domain name was registered and is being used in bad faith. The disputed domain name was registered by the Respondent many years after the Complainant’s DYCOM mark was registered and used in the United States. As noted in WIPO Overview 3.0, section 1.9, panels will normally find that employing typosquatting as found here, signals an intention on the part of the Respondent (typically corroborated by infringing website content) to confuse users seeking or expecting the Complainant. The typosquatting found here is an apparent attempt to trade off of the Complainant’s domain name, <dyconind.com> by deleting the last letter “d”. Panels have consistently found that the mere registration of a domain name comprising a typo to target a known trademark can itself create a presumption of bad faith. See WIPO Overview 3.0, section 3.1.4.
Additionally, the Complainant has established that the Respondent registered and was using, at the time of the Complaint, the disputed domain name to engage in an illegal scheme to attempt to defraud unsuspecting individuals. Because the Respondent’s use of the disputed domain name to impersonate the Complainant was in furtherance of an illegal scheme, it illustrates that the Respondent knew of the Complainant at the time of registration and had a bad faith intent to use the disputed domain name for purposes of placing fraudulent orders. As noted in WIPO Overview 3.0, section 3.4, use of a domain name to send deceptive emails, such as is the case here, constitutes bad faith.
Moreover, as noted in WIPO Overview 3.0, section 2.13.1, because use of a domain name for per se illegitimate activity can never confer rights or legitimate interests on a respondent, such behavior is manifestly considered evidence of bad faith.
Therefore, the Panel finds that the disputed domain name was registered and is being used in bad faith and the Complainant has satisfied the requirements 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 <dycomin.com> be transferred to the Complainant.
Nels T. Lippert
Date: December 20, 2020