WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Werfenlife S.A. v. Sean Hamilton

Case No. D2020-3257

1. The Parties

The Complainant is Werfenlife S.A., Spain, represented by Curell Suñol S.L.P., Spain.

The Respondent is Sean Hamilton, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <weřfen.com> (<xn--wefen-jcb.com>) is registered with Gandi SAS (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 3, 2020. On December 3, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 4, 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 December 16, 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 December 18, 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 December 29, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 18, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 28, 2021.

The Center appointed Andrea Mondini as the sole panelist in this matter on February 8, 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

Complainant is a company that provides in vitro diagnostic (IVD) solutions for hospitals and clinical laboratories.

Complainant owns, inter alia, the European Union trademark registration No. 013415286 WERFEN (figurative), filed on October 30, 2014, and granted on March 24, 2015, for a variety of goods and services in Classes 5, 9, 10, and 35.

Complainant’s subsidiary Werfen Life Group SAU also holds and uses the domain name <werfen.com>, registered on November 23, 1998.

The disputed domain name was registered on October 28, 2020, and does not resolve to an active website.

5. Parties’ Contentions

A. Complainant

Complainant contends as follows:

The disputed domain name is confusingly similar to the WERFEN trademark in which Complainant has rights, because the only difference is the addition of the diacritic “ř” (as used in Czech) above the letter “r”. These who characters are difficult to distinguish with the naked eye, and this difference is thus not sufficient to avoid confusing similarity.

Respondent has no rights or legitimate interests in respect of the disputed domain name. There is no business or legal relationship between Complainant and Respondent. Respondent has not been authorized by Complainant to use this trademark.

The disputed domain name was registered and is being used in bad faith because Complainant learnt through his clients that the disputed domain name has been used to impersonate its company and one of its employees of its accounting department to send phishing e-mails to suppliers and clients purporting that the Complainant had changed its bank account and requesting payments to a “new” bank account.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, in order to succeed, a complainant must establish each of the following elements:

(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the complainant has rights;

(ii) The respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) The disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel is satisfied that Complainant owns a trademark registration for its WERFEN trademark.

The Panel notes that the disputed domain name incorporates in its entirety the WERFEN trademark, to which the diacritic “ř” was added above the letter “r”. Such substitution of similar-appearing characters does not prevent a finding of confusing similarity under Policy, paragraph 4(a)(i). See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8.

For these reasons, the Panel concludes that the disputed domain name is confusingly similar to Complainant’s mark WERFEN.

B. Rights or Legitimate Interests

Complainant states it has no relationship of any kind with Respondent and has not authorized Respondent to use the trademark WERFEN.

Complainant has shown that the disputed domain name “weřfen.com” has been used to impersonate its company, its subsidiary Werfen España S.A.U. and one of its employees from its accounting department to send phishing emails to suppliers and clients to claim payments to its subsidiary Werfen España S.A.U. purporting that Complainant’s subsidiary Werfen España S.A.U. has changed its bank account and to request the payments be made to the “new” bank account.

The use of a domain name for illegal activity such as phishing, can never confer rights or legitimate interests on a respondent (see Section 2.13.1 of WIPO Overview 3.0).

In the view of the Panel, Complainant has thus succeeded in raising a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. For its part, Respondent failed to provide any explanations as to any rights or legitimate interests. Therefore, the Panel finds that Respondent does not have any rights or legitimate interests in the disputed domain name.

The second element of paragraph 4(a) of the Policy has been met.

C. Registered and Used in Bad Faith

As discussed in the Section B above, the disputed domain name was used to impersonate the Complainant’s company, its subsidiary and one of its employees to send phishing emails to suppliers and clients to claim fraudulent payments. In other words, the disputed domain name has been registered and used as part of an email phishing scam. Such behavior manifestly constitutes evidence of bad faith (Section 3.1.4, paragraph 3, of WIPO Overview 3.0).

The Panel thus finds that the disputed domain name was registered and is being used in bad faith.

The third element of paragraph 4(a) of the Policy has been met.

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 disputed domain name <weřfen.com> (<xn--wefen-jcb.com>), be transferred to the Complainant.

Andrea Mondini
Sole Panelist
Date: February 26, 2021