WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Lutosa v. Name Redacted
Case No. D2021-0809
1. The Parties
The Complainant is Lutosa, Belgium, represented by Plasseraud IP, France.
The Respondent is Name Redacted1 .
2. The Domain Names and Registrar
The disputed domain name <lutaso.com> 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 March 18, 2021. On March 18, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 19, 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 March 23, 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 25, 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 29, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 18, 2021. On March 31, 2021, an individual acting on behalf of a company (with a similar name to the one of the registrant) sent an email communication to the Center informing that they have received the Written Notice, but that they do not know about the disputed domain name, and asking for a copy of the Complaint. The Center informed the mentioned entity of the Complaint on April 1, 2021. A further communication claiming identity theft in the form of an “Amicus Curiae” was filed with the Center on April 16, 2021.
The Center appointed Marilena Comanescu as the sole panelist in this matter on April 28, 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, Lutosa, is a Belgium company active in the field of potato processing and manufactures a wide range of frozen French fries and specialities made from potatoes. The Complainant’s activity started in 1935 as a family operated business, in 1978 the Lutosa company was incorporated, and since 2013 it belongs to the McCain Foods international group.
Currently, the Complainant is present in 136 countries on the five continents, has more than 1,200 employees, generates a turnover of EUR 304 billion and runs the world’s biggest potato processing plant.
The Complainant holds worldwide trademark registrations for LUTOSA, such as the European Union Trademark registration number 9006611 for the mark LUTOSA (word), filed on April 6, 2010 and registered on September 28, 2010, covering goods in Nice classes 29, 30 and 31.
The Complainant holds domain names including the mark LUTOSA, such as <lutosa.com> registered in August 1999.
The disputed domain name <lutaso.com> was registered on January 28, 2021.
The Respondent is an entity whose identity was initially protected by a privacy shield. An entity with a similar name to the underlying registrant after the reception of the Written Notice, and the Complaint, sent a timely communication in the form of an “Amicus Curiae Letter”.
From the day of its registration, the disputed domain name was used in connection with a “phishing scheme” namely for sending emails, impersonating an employee of the Complainant, in order to try to conduct a customer of the Complainant to wire an amount of money to an account which was misleadingly presented as the new bank account of the Complainant.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar to its well-known and highly distinctive LUTOSA trademark, the Respondent has no rights or legitimate interests in the disputed domain name, and the Respondent registered and is using the disputed domain name in bad faith. The Complainant requests the transfer of the disputed domain name to it.
In its amended Complaint, the Complainant acknowledges that the Respondent may have missappropriate the identity of the Name Redacted company and that the Respondent is usurping the identity of this company, particulary due to the field of activity where the Name Redacted activates. A search conducted in relation to the the contact email address of the underlyign Respondent listed in the WhoIs suggests that it is used by a Nigerian entity, unrelated to the Name Redacted company and its emails addresses.
An entity with similar name as the named underlying Respondent submitted a timely response which states, although there are some company name and address similarities with the underlying respondent revealed by the Registrar, it cannot be formally considered a respondent in this procedure due to the lack of proper designation and particularly because it has never registered the disputed domain name, it has no connection with the disputed domain name or email contact address listed in the WhoIs and there is an obvious case of identity theft.
In the communication (sent in form of an “Amicus Curiae Letter”), there is an express consent regarding the remedy sought by the Complainant, which is to transfer the disputed domain name from the Respondent to the Complainant.
Further, this entity requests the Center not to publish its name (and the similar company name used in the WhoIs to register the disputed domain name).
6. Discussion and Findings
In cases where the respondent has given its consent on the record to the transfer remedy sought by the complainant, many panels will order the request remedy solely on the basis of such consent. See section 4.10 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
In the present case, due to the fact that between the WhoIs listed registrant and the entity who submitted the Amicus Curiae Letter there is a slight difference of names and the later claims identity theft, this Panel finds appropriate to proceed to a substantive decision on the merits.
Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the following circumstances are met:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Panel will further analyze the potential concurrence of the above circumstances.
A. Preliminary Procedural Issue. Respondent and Redaction of Respondent’s Identity
As noted above, the Name Redacted company (with a minor variation of the name) has been confirmed by the Registrar as the listed registrant of record for the disputed domain name.
Name Redacted claims in its Amicus Curiae Letter that it cannot be formally considered the respondent in this proceeding, for the reasons detailed in section 5.B above. However, it further states that “the substance of the opinion is intended to have the meaning of a response”.
The Complainant also comments in its Amended Complaint that the Respondent is very likely usurping the identity of Name Redacted.
The Panel will refer to the entity with a similar name to the registrant’s name as Name Redacted, and to the individual or entity which registered (and used) the disputed domain name as the Respondent.
The Panel is satisfied that the Center, by sending communications to the registrant revealed by the Registrar to its listed WhoIs postal address, email addresses and to another postal address indicated in the Complaint, based on the Complainant’s own searches, has exercised extreme care and discharged its responsibility under paragraph 2 of the Rules to employ all reasonably available means to serve actual notice of the Complaint upon the Respondent.
Further, Name Redacted contended that it has been the victim of identity theft and requested the Center not to publish its name in the corresponding decision to be made available on the Internet.
This gives rise to the question whether there should be a redaction from the decision to protect the privacy of Name Redacted, as requested.
Under paragraph 4(j) of the Policy the Panel has the power to determine to redact portions of its decision in exceptional circumstances. The practical result of the exercise of this power is that the provider, in this case the Center, will not publish on the Internet the full decision, but will redact the portion determined by the Panel to be redacted.
The evidence has made it clear in the opinion of this Panel that a fraud was perpetrated, and that Name Redacted is one of the victims of identity theft. Thus, although the disputed domain name holder is the proper Respondent in this proceeding, the real name and contact details of the person who wrongly effected the registration of the disputed domain name is unknown. It is also clear that this is the reason why Name Redacted very properly has consented to the transfer of the disputed domain name to the Complainant.
This Panel has formed the view that it may be unfair to Name Redacted to continue to have its name associated with the proceeding, especially where the impression may be given to Internet users that Name Redacted has some responsibility for some of the events, whereas in fact Name Redacted does not, being an innocent party.
The Panel has therefore decided that in all the circumstances this is an exceptional case and that it is appropriate to redact the registrant’s name and information from the Panel’s decision.
See also Accenture Global Services Limited v. Domains by Proxy, LLC / Name Redacted, WIPO Case No. D2013-2099; Banco Bradesco S.A. v. FAST-12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788.
B. Identical or Confusingly Similar
The Panel finds that the Complainant holds rights in the LUTOSA trademark.
The disputed domain name <lutaso.com> incorporates the trademark LUTOSA in its entirety with a misspelling consisting in the reversal of the letters “o” and “a”. However, a domain name which consists of a common, obvious or intentional mispelling of the trademark does not prevent a finding of confusing similarity for purposes of the first element of the Policy. See section 1.9 of the WIPO Overview 3.0.
It is well established in decisions under the UDRP that the generic Top-Level Domain (“gTLD”) (e.g.,”.com”, “.site”, “.info”, “.shop”) is typically disregarded for the purposes of consideration of confusing similarity between a trademark and a domain name. See section 1.11 of the WIPO Overview 3.0.
Given the above, the Panel finds that the disputed domain name is confusingly similar to the trademark LUTOSA, pursuant to the Policy, paragraph 4(a)(i).
C. Rights or Legitimate Interests
The Complainant asserts that the Respondent does not hold any trademark rights, license, or authorization whatsoever to use the mark LUTOSA, that the Respondent is not commonly known by the disputed domain name and that the Respondent has not used the disputed domain name in connection with a legitimate noncommercial or fair use or a bona fide offering of goods or services.
Under the Policy, “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”. See section 2.1 of the WIPO Overview 3.0.
The disputed domain name has been used to fraudulently impersonate the Complainant in order to try to unduly obtain a wire transfer from one of its customers. In this regard, panels have categorically held that the use of a domain name for illegal activity (such as swindle, fraud, identity theft, phishing and impersonation) can never confer rights or legitimate interests in a respondent. See section 2.13 of the WIPO Overview 3.0.
For these reasons, the Panel finds that the second element of the Policy is established, and the Respondent has no rights or legitimate interests in respect of the disputed domain name, pursuant to the Policy, paragraph 4(a)(ii).
D. Registered and Used in Bad Faith
The Complainant has held registered trademark rights in LUTOSA since at least 2007 and it uses the corresponding name for fourty years.
The disputed domain name was created in 2021 and incorporates the Complainant’s distinctive mark with a common mispelling, the reversal of two letters, in a clear example of typosquatting.
Furthermore, as shown above, in the day of the registration of the disputed domain name, the Respondent engaged in impersonation of the Complainant, and attempted a fraud against the Complainant and one of its customers.
Such conduct leads to infer that the Respondent had previous knowledge of the Complainant, its staff and customers, and that at the time of registereing the disputed domain name, it targeted the Complainant.
Panels additionally view the provision of false contact information (or an additional privacy or proxy service) underlying a privacy or proxy service as an indication of bad faith. See section 3.6 of the WIPO Overview 3.0.
Previous UDRP panels have found that the mere registration of a domain name that is identical or confusingly similar to a third party’s well-known trademark can, by itself, constitute a presumption of bad faith for the purpose of Policy. See section 3.1.4 of the WIPO Overview 3.0.
For all the above reasons, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith, pursuant to the Policy, paragraph 4(a)(iii).
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 <lutaso.com> be transferred to the Complainant.
For purposes of properly executing this order, the Panel also directs the Registrar’s attention to Annex 1 hereto that identifies the entity listed as registrant of the disputed domain name in the formal record of registration, and orders that the disputed domain name, <lutaso.com>, be transferred from that entity to the Complainant.
The Panel directs the Center that Annex 1 shall not be published along with this Decision.
Date: May 11, 2021
1 See comments under section 6.A below