WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Syncsort Incorporated v. Bruce Petersen, Syncsort

Case No. D2020-3100

1. The Parties

Complainant is Syncsort Incorporated, United States of America (“United States” or “U.S.”), represented by Cooley LLP, United States.

Respondent is Bruce Petersen, Syncsort, U.S.

2. The Domain Name and Registrar

The disputed domain name <syncsorrt.com> (“Domain Name”) is registered with 1 &1 IONOS SE (“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (“Center”) on November 18, 2020. On November 19, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 20, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on November 20, 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 November 23, 2020.

The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (“Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on December 4, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 24, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 28, 2020.

The Center appointed Christopher S. Gibson as the sole panelist in this matter on January 6, 2021. 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

In 1971, Whitlow Computer Systems developed SYNCSORT software, a mainframe sorting solution. In 1981, the company formally changed its name to Syncsort Incorporated. Since its founding, Complainant has continuously offered its SYNCSORT software goods and services and has grown to be a global leader in big data, used by leading enterprises in over 100 countries around the world to optimize traditional data systems and integrate mission-critical data from these systems to next-generation analytic platforms. Complainant has offices throughout the world, including in the United States and United Kingdom.

Complainant has used the SYNCSORT mark as its trade name from 1981 through 2020 and has used SYNCSORT as a trademark since November 23, 1971. Complainant is the owner of trademark registrations throughout the world for its SYNCSORT mark, including two U.S. trademark registrations for SYNCSORT (Reg. Nos. 1157917 and 5419067, registered on June 23, 1981, and March 6, 2018), a U.S. registration for VISUAL SYNCSORT (Reg. No. 2427390, registered on February 6, 2001), and a European Union (“EU”) trademark registration for SYNCSORT (Reg. No. 009071416, registered on November 2, 2010).

Complainant’s domain name is <syncsort.com>, registered on January 20, 1994, and Complainant has continuously hosted its website at this domain name since that date.

On May 14, 2020, Complainant launched a new brand, PRECISELY. Complainant continues to offer SYNCSORT branded goods and services and use the SYNCSORT name in connection with its PRECISELY brand.

The Domain Name was registered on December 9, 2019.

5. Parties’ Contentions

A. Complainant

(i) Identical or Confusingly Similar

Complainant states that SYNCSORT is a coined term with no meaning except as a brand name. The name SYNCSORT functions only to identify Complainant’s company and its software goods and services. Complainant asserts that the Domain Name is confusingly similar because it incorporates Complainant’s registered SYNCSORT mark in full and only adds an additional letter “r”. Complainant asserts that such purposeful misspelling of SYNCSORT constitutes typosquatting. Complainant further contends that previous UDRP panels have held that a domain name that is identical to another's mark but for a minor misspelling creates virtually identical and/or confusingly similar marks satisfying the requirement of paragraph 4(a)(i) of the Policy.

Complainant’s states that its SYNCSORT mark is not descriptive, and exists only as a trademark and service mark for Complainant’s business. Complainant states the variation found in the Domain Name, <syncsorrt.com>, is confusingly similar, meeting the requirements of paragraph 4(a)(i) of the Policy.

(ii) Rights or Legitimate Interests

Complainant states it has not authorized or licensed Respondent to use any of its trademarks in any way and Respondent is not affiliated with or related to Complainant in any way. According to Complainant, the unlicensed, unauthorized use of the Domain Name incorporating Complainant’s trademark is strong evidence that Respondent has no rights or legitimate interest in the Domain Name.

Complainant submits that Respondent registered the Domain Name on December 9, 2019, long after Complainant had established rights in the SYNCSORT mark. After Respondent registered the Domain Name, Respondent sent an email impersonating Complainant’s accounts receivable department and sent its own bank details in order to fraudulently obtain payment. Complainant claims the Domain Name was registered for the express purpose of trying to trick recipients into believing its communications originated from Complainant.

Complainant states that Respondent has attempted to pass itself off as Complainant in order to perpetuate fraud, namely, to obtain a payment. Thus, this is not a bona fide offering of goods or services under Policy, paragraph 4(c)(i) or a legitimate noncommercial or fair use under Policy paragraph 4(c)(iii). Based on the foregoing, Complainant contends that Respondent lacks any right or legitimate interest in the Domain Name.

(iii) Registered and Used in Bad Faith

Complainant contends that Respondent registered and is using the Domain Name in bad faith. Complainant has provided evidence to show that Respondent registered the Domain Name in furtherance of a phishing scam and in order to impersonate Complainant’s accounts receivable department and perpetuate a fraud. Complainant states that UDRP panels have categorically held that the use of a domain name for illegal activity, including phishing scams and impersonating/passing off, can never confer rights or legitimate interests in a respondent.

Complainant submits that Respondent has registered and used the Domain Name for purposes of impersonating Complainant and perpetuating fraud. Such impersonation clearly constitutes bad faith under the Policy. Complainant also adds that past UDRP panels have also found that typosquatting itself may constitute bad faith. Based on both the typosquatting and Respondent’s use of the Domain Name, Complainant claims there is no question that the Domain Name was registered and is being used in bad faith.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

In order to succeed on its Complaint, Complainant must demonstrate that the three elements set forth in paragraph 4(a) of the Policy have been satisfied. These elements are that:

(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) Respondent has no rights to or legitimate interests in respect of the Domain Name; and

(iii) Respondent has registered and is using the Domain Name in bad faith.

A. Identical or Confusingly Similar

The Panel finds that Complainant has established rights in its SYNCSORT and VISUAL SYNCSORT trademarks, based on its trademark registrations and use of the mark in the United States and elsewhere.

Further, the Panel determines that the Domain Name is confusingly similar to the SYNCSORT mark, as the Domain Name incorporates the mark in its entirety, while merely adding additional letter “r”, which does not create a separate word but merely produces a misspelling of Complainant’s SYNCSORT mark. See Ross-Simons, Inc. v. Domain.Contact, WIPO Case No. D2003-0994 (“Ten of the disputed domain names are either slight misspellings of the Complainant's mark, in some cases combined with a misplacement of a hyphen. In addition, those domain names are all phonetically similar to the Complainant's mark, and are visually similar. These similarities strongly support a finding that these ten domain names are confusingly similar to the Complainant's mark. It is also relevant that the Complainant's service mark is not descriptive. It is a mark which is distinctive because of its association with the Complainant's business. Slight variations on such a mark will, by nature, be more likely to be confused with the distinctive mark of the Complainant.”)

Accordingly, the Panel finds that that the Domain Name is confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Regarding the second element of the Policy, the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), 3.0, section 2.1, states that “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”.

Here, the Panel determines that Complainant has made out a prima facie case, while Respondent has failed to reply to Complainant’s contentions. The Panel finds that Complainant has not authorized Respondent to use its SYNCSORT or VISUAL SYNCSORT marks; that Respondent is not commonly known by the Domain Name – instead, it appears that Respondent’s individual name, address, phone number and email address do not correspond to Complainant or its mark, and the reference to “syncsort” in Respondent’s listed name (after the name “Bruce Peterson”) is without authorization, as this individual is not associated with Complainant; that Respondent has not used the Domain Name for a legitimate noncommercial or fair use, nor used it in connection with a bona fide offering of goods or services – instead, the Domain Name has been used in emails used to impersonate Complainant in an apparent phishing scheme to perpetrate fraud. Respondent’s use of the Domain Name in this manner does not give rise to any right or legitimate interest in it. See, e.g., Drexel Univ. v. David Brouda, WIPO Case No. D2001-0067 (“[R]ights or legitimate interests cannot be created where the [Respondent] . . . would not choose such a name unless he was seeking to create an impression of association with the Complainant.”).

Accordingly, the Panel finds that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in respect of the Domain Name, which has not been rebutted by Respondent. The Panel therefore finds that Complainant has established the second element of the Policy in accordance with paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

The third element of paragraph 4(a) of the Policy requires that Complainant demonstrate that Respondent registered and is using the Domain Names in bad faith. WIPO Overview 3.0, section 3.1, states that “bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark”.

Here, the Panel determines that the Domain Name was registered and is being used in bad faith. Based on the evidence, there is little doubt that Respondent was aware of Complainant and its SYNCSORT marks, and intentionally targeted those marks, when registering the Domain Name. The Panel observes that Respondent registered the Domain Name, which incorporates Complainant’s distinctive SYNCSORT trademark in its entirety, while adding the extra letter “r” to create a misspelling of that mark. Given the longstanding use of the SYNCSORT trademark and the fact that the Domain Name is so obviously connected with Complainant’s mark, the Panel considers that the only logical conclusion is that Respondent targeted Complainant and its SYNCSORT marks when registering the Domain Name. See Novartis AG v. Ancient Holdings, LLC, Wendy Webbe, WIPO Case No. D2014-1084.

This point is further confirmed by Respondent’s use of the Domain Name in connection with emails impersonating Complainant sent in an effort to perpetrate fraud through a phishing scheme seeking bank details from third parties. An email received from an email account with the Domain Name included in its address is likely to mislead users into believing that the email address is associated with Complainant. In these circumstances, it is clear that the Domain Name has been registered in bad faith and for the purpose of intentionally attempting to mislead in order to commit fraud. Respondent is acting in bad faith by purposefully creating a likelihood of confusion with Complainant and its SYNCSORT trademarks to support this scheme. See GOLDEN GOOSE S.P.A. v. WhoisGuard Protected / Wei Zhang, WIPO Case No. D2018-2442 (“The evidence contained in this docket also proves that the Respondent has impersonated the Complainant. Impersonation constitutes bad faith use under the Policy.”)

In conclusion, in this case, where Respondent failed to submit a reply to Complainant’s contentions, the Panel determines that, for all of the above reasons, the Domain Name was registered and is being used in bad faith. Accordingly, Complainant has satisfied the third element of the Policy.

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 Domain Name, <syncsorrt.com>, be transferred to Complainant.

Christopher S. Gibson
Sole Panelist
Date: January 21, 2021