WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

A-dec, Inc. v. walton sales

Case No. D2020-3533

1. The Parties

The Complainant is A-dec, Inc., United States of America (“United States”), represented by Schwabe, Williamson & Wyatt, United States.

The Respondent is walton sales, United States.

2. The Domain Name and Registrar

The disputed domain name <a-dec.org> (the “Disputed Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 28, 2020. On December 29, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 30, 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 January 4, 2021, 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 January 11, 2021.

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 January 12, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 1, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 4, 2021.

The Center appointed Lynda M. Braun as the sole panelist in this matter on February 9, 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

Operating since at least as early as 1965, the Complainant is a manufacturer and vendor of dental operatory equipment and related products, and the brand has become a respected name in the dental equipment industry. Over the years, the Complainant has experienced success associated with its use of its trademarks on the products it manufactures and sells, and this success has resulted in the Complainant achieving consumer and industry recognition — domestically and internationally — for its branded products.

The Complainant hosts an official company website at “www.a-dec.com”, where customers can locate information about the Complainant’s products. The website includes the prominent display of the Complainant’s trademark, as referenced below.

The Complainant owns dozens of trademarks in the United States and other jurisdictions worldwide. In particular, the Complainant owns the following trademarks through the United States Patent and Trademark Office (“USPTO”), including, but not limited to:

- A DEC & Design, United States Trademark Registration No. 1,003,425, registered on January 28, 1975, with its first use in commerce in 1965, in international class 10;
- A-DEC, United States Trademark Registration No. 3,014,621, registered on November 15, 2005, with its first use in commerce in 1982, in international classes 1, 10 and 20; and
- A-DEC INSPIRE, United States Trademark Registration No. 5,041,585, registered on September 13, 2016, with its first use in commerce in 2016, in international class 20.

The aforementioned trademarks are hereinafter collectively referred to as the “A-DEC Mark”.

The Disputed Domain Name was registered on November 10, 2020. At first, the Disputed Domain Name resolved to a page stating that it could not locate the IP address and that the domain name did not exist. As of the writing of this decision, the Disputed Domain Name resolves to an inactive website.

The Respondent used the Disputed Domain Name to perpetuate a phishing scheme in which the Respondent configured the Disputed Domain Name for email functions and used the email address “[...]@a-doc.org” to impersonate the Complainant and send fraudulent emails purportedly from the Complainant to one of its customers. The purpose of the emails was to mislead the Complainant’s customer into sending payments that were owed to the Complainant to the Respondent. In the email, the Respondent requested that the customer cancel current payments to the Complainant and initiate new payments to a fraudulent bank account that the Respondent had opened in Poland. The Respondent fraudulently informed the customer that such action was necessary due to certain company accounting updates and a hold that was placed on the existing bank account. The email included an attachment with wire transfer instructions and fraudulent bank account information, which account name included the A-DEC Mark. After emailing with the Respondent for several days, the customer became suspicious and forwarded the email thread to the Complainant, after which the Complainant reported the phishing attempt to the web hosting provider. After confirming the fraudulent activity, the web hosting provider suspended the Disputed Domain Name.

5. Parties’ Contentions

A. Complainant

The following are the Complainant’s contentions:

- the Disputed Domain Name is confusingly similar to the Complainant’s A-DEC Mark;

- the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

- the Disputed Domain Name was registered and is being used in bad faith.

The Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy.

B. Respondent

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

6. Discussion and Findings

In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)(i-iii)):

(i) the Disputed 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 Disputed Domain Name; and

(iii) the Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark. The Panel concludes that the Disputed Domain Name is confusingly similar to the A-DEC Mark as set forth below.

It is uncontroverted that the Complainant has established rights in the A-DEC Mark based on its many years of use as well as its registered trademarks for the A-DEC Mark in the United States and other jurisdictions worldwide. The general rule is that “registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive”. CWI, Inc. v. Domain Administrator c/o Dynadot, WIPO Case No. D2015-1734. The Respondent has not rebutted this presumption, and therefore the Panel finds that the Complainant has enforceable rights in the A-DEC Mark.

The Disputed Domain Name consists of the A-DEC Mark in its entirety followed by the generic Top-Level Domain (“gTLD”) “.org”. When a domain name incorporates the entirety of a trademark, the domain name will generally be considered confusingly similar to that mark for purposes of UDRP standing. See the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. Further, the addition of a gTLD such as “.org” in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182 and WIPO Overview 3.0, section 1.11.

Accordingly, the Panel finds that the first element of paragraph 4(a) of the Policy has been met by the Complainant.

B. Rights or Legitimate Interests

Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name at issue. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1. In this case, the Panel finds that the Complainant has made out a prima facie case. In particular, the Respondent has not submitted any arguments or evidence to rebut the Complainant’s prima facie case and there is no evidence in the record that the Respondent is in any way associated with the Complainant.

Moreover, the Complainant has not authorized, licensed or otherwise permitted the Respondent to use it’s A-DEC Mark. Finally, the name of the Respondent has no apparent connection to the Disputed Domain Name that would suggest that it is related to a trademark or trade name in which the Respondent has rights.

Furthermore, the Respondent is using the Disputed Domain Name solely for the purpose of perpetrating a fraudulent phishing scheme on an unwitting customer of the Complainant. “Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent.” WIPO Overview 3.0 , section 2.13.1 . Given the phishing scheme the Respondent operated by reconfiguring the Disputed Domain Name to impersonate the Complainant’s email address, the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name, but rather is using the Disputed Domain Name for commercial gain with the intent to mislead by defrauding the Complainant’s customer.

Accordingly, the Panel finds that the second element of paragraph 4(a) of the Policy has been met by the Complainant.

C. Registered and Used in Bad Faith

The Panel finds that based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith pursuant to paragraph 4(b) of the Policy.

First, the Disputed Domain Name was registered decades after the Complainant first began using its A-DEC Mark and used the mark as part of an email phishing scheme to mislead and defraud one of the Complainant’s customers. Therefore, the Panel finds it likely that the Respondent had the Complainant’s A-DEC Mark in mind when registering the Disputed Domain Name.

Second, the Respondent used the Disputed Domain Name to impersonate the Complainant and perpetrate a phishing scheme directed at one of the Complainant’s customers, a strong indication of bad faith. The Respondent’s phishing scheme to send fraudulent emails to one of the Complainant’s customers, requesting that payments owed should be wired to a fraudulent bank account in Poland created by the Respondent, evidences a clear intent to disrupt the Complainant’s business, deceive individuals, and trade off the Complainant’s goodwill by creating an unauthorized association between the Respondent and the Complainant’s A-DEC Mark. See Banco Bradesco S.A. v. Fernando Camacho Bohm, WIPO Case No. D2010-1552. Such conduct is emblematic of the Respondent’s bad faith registration and use of the Disputed Domain Name. See Petróleo Brasileiro S.A. - Petrobras v. AK Bright, WIPO Case No. D2013-2063 (considering the reputation of the complainant and the emails sent by the respondent using the complainant’s trademark, the respondent is held to have registered and used the domain name in bad faith). Further, previous UDRP panels have found that email-based phishing schemes that use a complainant’s trademark in the domain name are evidence of bad faith. See WIPO Overview 3.0, section 3.4 (“Panels have held that the use of a domain name for purposes other than to host a website may constitute bad faith. Such purposes include sending email, phishing, identity theft, or malware distribution. […] Many such cases involve the respondent’s use of the domain name to send deceptive emails, e.g., to obtain sensitive or confidential personal information from prospective job applicants, or to solicit payment of fraudulent invoices by the complainant’s actual or prospective customers.”).

Finally, the registration of a domain name that reproduces a trademark in its entirety (being identical or confusingly similar to such trademark) by an individual or entity that has no relationship to that mark, without any reasonable explanation on the motives for the registration, may be sufficient in certain circumstances to infer an opportunistic bad faith. See Ebay Inc. v. Wangming, WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163. Based on the circumstances here, the Respondent registered and is using the Disputed Domain Name in bad faith to target the Complainant’s A-DEC Mark.

Accordingly, the Panel finds that the third element of paragraph 4(a) of the Policy has been met by the Complainant.

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 <a-dec.org> be transferred to the Complainant.

Lynda M. Braun
Sole Panelist
Date: February 18, 2021