WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Open Society Institute v. workingmakaylawoodson91 Lawoodson
Case No. D2021-0547
1. The Parties
The Complainant is Open Society Institute, United States of America (“United States”), represented by Morrison & Foerster, LLP, United States.
The Respondent is workingmakaylawoodson91 Lawoodson, Cameroon.
2. The Domain Name and Registrar
The disputed domain name <opensocietiesfoundations.com> is registered with Hosting Concepts B.V. d/b/a Openprovider (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 22, 2021. On February 23, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 24, 2021, 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 February 24, 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 March 1, 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 March 3, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 23, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 24, 2021.
The Center appointed Gareth Dickson as the sole panelist in this matter on April 1, 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
The Complainant is a philanthropic organization based in New York, United States. It funds a range of programs around the world and is the owner of a number of trade mark registrations for OPEN SOCIETY and related marks, including United States trade mark registration number 4248358 for OPEN SOCIEY FOUNDATIONS, registered on November 27, 2012 (the “Mark”).
The Complainant also operates a website at the address “www.opensocietyfoundations.org”.
The disputed domain name was registered on January 12, 2021. The Complainant claims that it has been used to direct Internet users to a virtually identical reproduction of the Complainant’s website. The Complainant has provided evidence that the disputed domain name was used to send emails purporting to come from the Complainant, which seek substantial sums of money from the recipient and use the Complainant’s name and logo within the body of the email.
5. Parties’ Contentions
The Complainant submits that it has rights in the Mark by virtue of its ownership of the Mark. It contends that the disputed domain name is confusingly similar to the Mark since it is merely a pluralization of one part of it (that is, it is “open societies foundations” instead of OPEN SOCIETY FOUNDATIONS), under the generic Top-Level Domain (“gTLD”) “.com”.
The Complainant confirms that the disputed domain name was registered by the Respondent without its permission and that the Respondent is not a licensee of the Complainant. It submits that there is no evidence to suggest that the Respondent: has been commonly known by the disputed domain name; is making, or intends to make, a legitimate noncommercial or fair use of it; or has made use of it in connection with a bona fide offering of goods or services. In fact, the Complainant alleges that the Respondent has been using the disputed domain name to further a fraud, by imitating the Complainant and trying to persuade recipients of emails in which the Respondent impersonates the Complainant to send Bitcoin payments to the Respondent.
The Complainant states that it was able to secure a suspension of the Respondent’s website by showing the hosting provider evidence of the Respondent’s activities.
The Complainant submits that the Respondent had prior knowledge of the Complainant and the Mark when it registered the disputed domain name. The Mark, according to the Complainant, is well-known and the disputed domain name is a close misspelling of it, with no apparent legitimate explanation for that similarity. The Respondent’s own use of the disputed domain name (and of the Complainant’s logo) to impersonate the Complainant for its own commercial gain, in combination with the Respondent’s use of a fictional postal address, further confirm that the Respondent planned to use the disputed domain name for illegitimate activities from the very beginning and that, accordingly, it registered the disputed domain name and is using it in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant bears the burden of proving that:
(a) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(b) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(c) the disputed domain name has been registered and is being used in bad faith.
These criteria are cumulative. The failure of the Complainant to prove any one of these elements means the Complaint must be denied.
A. Identical or Confusingly Similar
The Panel accepts that the Complainant is the owner of, and therefore has rights in, the Mark.
Section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”) provides that: “[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 to that mark for purposes of UDRP standing”.
Section 1.8 of the WIPO Overview 3.0 provides that: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”.
The Panel therefore finds that the disputed domain name is confusingly similar to the Mark, since the Mark is recognisable within the disputed domain name and the disputed domain name merely pluralizes a portion of it. (Arguably this may amount to typo-squatting, but the distinction here is of no importance since in both instances the disputed domain name would be confusingly similar to the Mark.) The addition of the gTLD “.com” in the disputed domain name does not prevent a finding of confusing similarity.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights.
B. Rights or Legitimate Interests
Although a complainant is required to demonstrate that a respondent has no rights or legitimate interests in respect of the domain name, as explained in section 2.1 of the WIPO Overview 3.0, the consensus view of previous UDRP panels is that where a complainant establishes 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.
In the current proceeding, the Complainant has established its prima facie case. The Complainant states that it has not given the Respondent permission to use the Mark, in a domain name or otherwise, and submits that the Respondent has not been commonly known by the disputed domain name.
There is no evidence that the Respondent has acquired any rights to use the Mark, is commonly known by the Mark, has chosen to use the Mark in the disputed domain name in any descriptive manner or is making any use of the disputed domain name that would establish rights or legitimate interests as a result of a non-commercial or fair use of it.
Furthermore, the use of the disputed domain name to send emails seeking the fraudulent appropriation of funds cannot constitute a bona fide sale of goods or services or a legitimate non-commercial or fair use within the meaning of the Policy. Section 2.13.1 of the WIPO Overview 3.0 states that: “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”. Such consideration applies here.
By not participating in these proceedings, the Respondent has failed to refute the Complainant’s prima facie case that it has met its burden under the second UDRP element.
As clearly stated in section 2.1 of the WIPO Overview 3.0, “a panel’s assessment will normally be made on the basis of the evidence presented in the complaint and any filed response. The panel may draw inferences from the absence of a response as it considers appropriate, but will weigh all available evidence irrespective of whether a response is filed”.
Having reviewed and weighed the available evidence, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
The Panel notes that the disputed domain name was registered many years after the Mark was registered and accepts that the disputed domain name was chosen by reference to the Mark, with the intention of impersonating the Complainant for the Respondent’s illegitimate commercial gain.
The Panel therefore finds that the Respondent’s registration of the disputed domain name was in bad faith.
The disputed domain name is also being used in bad faith.
Section 3.1.4 of the WIPO Overview 3.0 states: “[…] given that the use of a domain name for per se illegitimate activity such as the sale of counterfeit goods or phishing can never confer rights or legitimate interests on a respondent, such behavior is manifestly considered evidence of bad faith”.
The Panel notes that the Complainant has provided evidence of emails where the Respondent has used the disputed domain name to impersonate the Complainant online and as a means of communication aimed at deceiving recipients into sending the Respondent substantial sums of money, which is the epitome of a bad faith use of a domain name. Furthermore, the Respondent has submitted false contact details and has not participated in these proceedings. In these circumstances there is no conceivable use of the disputed domain name by the Respondent that would not be illegitimate and therefore there is no basis for the Panel to conclude that the Respondent’s use of the disputed domain name is justified.
Therefore, and on the basis of the information available to it, the Panel must, and does, find that the Respondent’s use of the disputed domain name to send emails intended to deceive the recipients of such emails as to their origin, for fraudulent commercial gain, is without justification. Consideration of these and other factors militates in favour of a finding of bad faith.
The Panel finds that the Respondent has registered and is using the disputed domain name in bad faith.
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 <opensocietiesfoundations.com> be transferred to the Complainant.
Date: April 15, 2021