WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dewberry Engineers Inc. v. WhoisGuard Protected, WhoisGuard Inc / Lindy James, Dreamline
Case No. D2020-2754
1. The Parties
Complainant is Dewberry Engineers Inc., United States of America, represented by McCandlish Lillard, P.C., United States of America.
Respondent is WhoisGuard Protected, WhoisGuard Inc, Panama / Lindy James, Dreamline, United States of America.
2. The Domain Name and Registrar
The disputed domain name <dewberry.company> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 20, 2020. On October 21, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 21, 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 Complainant on October 26, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on October 27, 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 Respondent of the Complaint, and the proceedings commenced on October 29, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 18, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 30, 2020.
The Center appointed Phillip V. Marano as the sole panelist in this matter on December 8, 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
Complainant is a nationwide firm of planning, design, and construction professionals, with over fifty different office locations in the United States. Complainant owns valid and subsisting registrations for the DEWBERRY trademark in the United States, with the earliest priority dating back to February 5, 2003.
Respondent registered the disputed domain name on September 30, 2020. At the time of this Complaint, the disputed domain name does not resolve to any active website content.
5. Parties’ Contentions
Complainant asserts ownership of the DEWBERRY trademark and has adduced evidence of trademark registrations in the United States; (United States Trademark Registration No. 2991043 with registration date September 6, 2005 among others) with earliest priority dating back to February 5, 2003. The disputed domain name is confusingly similar to Complainant’s DEWBERRY trademark, according to Complainant, because a Google search of the disputed domain name returns results for Complainant, and disregarding the “.company” generic Top-Level Domain (“gTLD”), the disputed domain name is identical to the DEWBERRY trademark and it incorporates the DEWBERRY trademark entirely.
Complainant further asserts that Respondent lacks any rights or legitimate interests in the disputed domain name based on: the lack of any evidence that Respondent is known by the term “dewberry”; Respondent’s lack of any registered trademark or service mark; and the lack of any demonstrable preparations by Respondent to use the disputed domain name.
Complainant argues that Respondent has registered and used the disputed domain name in bad faith for numerous reasons, including: the identity between the disputed domain name and Complainant’s DEWBERRY trademark; the lack of any use of the disputed domain name by Respondent since it was registered on September 30, 2020; the general belief that the disputed domain name was registered for the creation of deceptive email addresses and impersonating Complainant’s personnel.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
To succeed in its Complaint, Complainant must establish in accordance with paragraph 4(a) of the Policy:
(i) The disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(ii) The disputed domain name has been registered and is being used in bad faith.
Although Respondent did not reply to Complainant’s contentions, the burden remains with Complainant to establish by a balance of probabilities (also states as a preponderance of the evidence), all three elements of paragraph 4(a) of the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.3 (“A respondent’s default would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true. UDRP panels have been prepared to draw certain inferences in light of the particular facts and circumstances of the case, e.g. where a particular conclusion is prima facie obvious, where an explanation by the respondent is called for but is not forthcoming, or where no other plausible conclusion is apparent.”); The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064 (“The Respondent’s default does not automatically result in a decision in favor of the complainant. The Complainant must still prove each of the three elements required by Policy paragraph 4(a)”).
A. Identical or Confusingly Similar
Ownership of a nationally or regionally registered trademark serves as prima facie evidence that Complainant has trademark rights for the purposes of standing to file this Complaint. WIPO Overview 3.0, section 1.2.1. Complainant submitted evidence that the DEWBERRY trademark has been registered in the United States (with priority dating back to February 5, 2003, more than seventeen years before the disputed domain name was registered by Respondent). Thus, the Panel finds that Complainant’s rights in the DEWBERRY trademark have been established pursuant to the first element of the Policy.
The remaining question under the first element of the Policy is whether the disputed domain name is identical or confusingly similar to Complainant’s DEWBERRY trademark. In this case, the disputed domain name is confusingly similar to Complainant’s DEWBERRY trademark because, disregarding the “.company” gTLD, the trademark is contained in its entirety within the disputed domain name. WIPO Overview 3.0, section 1.7. (“This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name … [I]n cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar...”). gTLDs, such as “.company” in the disputed domain name, are generally viewed as a standard registration requirement and are disregarded under the first element. WIPO Overview 3.0, section 1.11.
In view of Complainant’s United States registration of the DEWBERRY trademark, and Respondent’s incorporation of that identical trademark in its entirety in the disputed domain name, the Panel concludes that Complainant has established the first element of the Policy.
B. Rights or Legitimate Interests
Complainant must make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name, shifting the burden of production on this element to Respondent to come forward with evidence demonstrating such rights or legitimate interests. Where, as in this Complaint, Respondent fails to come forward with any relevant evidence, Complainant is deemed to have satisfied the second element of the Policy. WIPO Overview, section 2.1. To that end, it is evident that Respondent, identified by registration data for the disputed domain name as “Lindy James, Dreamline”, is not commonly known by the disputed domain name or Complainant’s DEWBERRY trademark and has not made any demonstrable preparations towards any legitimate use of the disputed domain name.
In view of the absence of any evidence supporting any rights or legitimate interests in the disputed domain name, and Respondent’s passive holding of the disputed domain name, the Panel concludes that Complainant has established the second element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy proscribes the following non-exhaustive circumstances as evidence of bad faith registration and use of the disputed domain name:
(i) Circumstances indicating that Respondent has registered or Respondent has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to Complainant who is the owner of the trademark to a competitor of that Complainant, for valuable consideration in excess of Respondent’s documented out of pocket costs directly related to the disputed domain name; or
(ii) Respondent has registered the disputed domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
Passively holding a domain name cannot prevent a finding of bad faith. WIPO Overview, section 3.3. This includes domain names such as the disputed domain name that may have never resolved to any website content. Where a domain name is being passively held, as alleged in this case, bad faith registration and use exists based upon: (i) the degree of distinctiveness or reputation of the complainant’s mark; (ii) the failure of the respondent to submit any response or offer any credible evidence of rights or legitimate interests; (iii) the respondent’s concealing its identity or use of false contact details; and (iv) the implausibility of any good faith use which the domain name may be put. See Id. See also Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (“A remedy can be obtained under the Policy only if those circumstances show that the Respondent’s passive holding amounts to acting in bad faith.”)
To date, Respondent has passively held the disputed domain name for a period of approximately three months from September 30, 2020 to the present date. During that time, the disputed domain name has not resolved to any operational website. Such a limited period of passive holding, without any further evidence of bad faith registration and use, may be insufficient to constitute evidence of bad faith. In this regard, Complainant points out the identity between the disputed domain name and the DEWBERRY trademark, and the “high likelihood of confusion if [a website] were activated” by Respondent—in other words, the implausibility of any good faith use by Respondent. Complainant also suspects “the only conclusion is that the disputed domain name was registered for one or more improper purposes, such as enabling creation of deceptive email addresses and impersonating Complainant’s personnel…” In this respect, the Panel observes from the case file that email delivery failed for the Notification of Complainant and Commencement of Administrative Proceeding with a “Recipient Not Found” notice for the primary email point of contact provided to the Registrar by Respondent. Prior UDRP panel determinations have held that the use of false registration data in connection with a disputed domain name supports a finding of bad faith registration and use. See e.g., Action Instruments, Inc. v. Technology Associates, WIPO Case No. D2003-0024. (Providing false contact information violates paragraph 2 of the Policy, which requires a registrant to represent that the statements it “made in [its] Registration Agreement are complete and accurate”. Maintaining that false contact information in the WhoIs records, (“which can easily be updated at any time) after registration constitutes bad faith use of the domain name because it prevents a putative complainant from identifying the registrant and investigating the legitimacy of the registration.”); Royal Bank of Scotland Group v. Stealth Commerce, WIPO Case No. D2002-0155; Home Director, Inc. v. HomeDirector, WIPO Case No. D2000-0111. It is therefore little surprise that the Respondent has defaulted in this case and has not submitted a Response to explain its registration of the disputed domain name.
Furthermore, the MX records associated with the disputed domain name are openly available for view by the public and by the Panel.1 The Panel considers configuration of an email server on the disputed domain name as additional evidence corroborating Complainant’s assertions. More specifically, the disputed domain name contains in its entirety Complainant’s DEWBERRY trademark, and the record is devoid of any evidence to suggest that Respondent has any legitimate interest in sending emails from the disputed domain name. Respondent’s proactive configuration of an email server supports Complainant’s assertion that the disputed domain name creates a risk that Respondent would be engaged in a phishing scheme by using an email address impliedly associated with Complainant. Prior UDRP panel determinations have recognized the same risk, and considered it as additional evidence of bad faith. See e.g., Accor SA v. Domain Admin, C/O ID#10760, Privacy Protection Service INC d/b/a PrivacyProtect.org / Yogesh Bhardwaj, WIPO Case No. D2017-1225; Carrefour S.A. v. WhoisGuard, Inc / Gaudet Jose, WIPO Case No. DCO2018-0041 (“The Panel concurs with the Complainant that the connection of the disputed domain name with an email server configuration enhances a likelihood of confusion and presents a risk that the Respondent is engaged in a phishing scheme.”)
The Panel moreover notes that the use of the “.company” gTLD in connection with a second level domain name identical to the Complainant’s distinctive mark creates an inference that the Respondent knowingly targeted the Complainant which raises a question calling for an answer by the Respondent. That no such reply has been forthcoming in this case is telling as to the Respondent’s bad faith.
In the absence of any evidence or arguments from Respondent, and in view of Respondent’s passive holding of the disputed domain name, Respondent’s use of a false email address, the implausibility of any good faith uses of the disputed domain name, and Complainant’s argument concerning bad faith use of associated email servers to perpetrate fraud or phish for sensitive customer data, Panel concludes that Complainant has established the third element 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, <dewberry.company> be transferred to Complainant.
Phillip V. Marano
Date: December 28, 2020
1 A panel may undertake limited factual research into matters of public record where it considers such information useful to assessing the case merits and researching a decision. This includes visiting the website linked to the disputed domain name in order to obtain more information about the respondent or its use of the domain name, consulting historical resources like the Internet Archive, perform an email server lookup, reviewing dictionaries, encyclopedias, or accessing trademark registration or other governmental databases. WIPO Overview 3.0, Section 4.8.