WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Western Digital Technologies, Inc. v. Sumit Pandey

Case No. D2021-1216

1. The Parties

The Complainant is Western Digital Technologies, Inc., United States of America (“United States”), represented by Ploum, Netherlands.

The Respondent is Sumit Pandey, India.

2. The Domain Names and Registrar

The disputed domain names <wd-my-passport.com>, <wdmypassport.co>, and <support-wdc.com> are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 20, 2021. On April 20, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 21, 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 May 3, 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 May 4, 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 May 5, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 25, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 26, 2021.

The Center appointed Assen Alexiev as the sole panelist in this matter on June 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

The Complainant Western Digital Technologies is an affiliate of Western Digital Corporation, Inc. (“Western Digital”), which was founded in 1970 under the name General Digital, and its name is often abbreviated to “WD” or “WDC”. Western Digital manufactures and sells hard disk drives and data storage solution products. In 2020, it employed almost 64,000 employees and had a revenue of more than 16.5 billion US Dollars. In 2021, Western Digital was named one of the world’s most ethical companies by Ethisphere for the third time in a row. Western Digital markets a variety of products under the brands Western Digital, WD, SanDisk and G-Technology. One of Western Digital’s products is the portable storage hard disk drive traded under the brand My Passport.

The Complainant is the owner of the following trademark registrations for the sign “WD” (the “WD trademark”):

− the United States trademark WD with registration No. 3062297, registered on February 28, 2006 for goods in International Class 9;
− the European Union trademark WD with registration No. 004183356, registered on January 5, 2006 for goods in International Class 9; and
− the Indian trademark WD with registration No. 1349235, registered on April 6, 2005 for goods in International Class 9.

The Complainant is the owner of the following trademark registrations for the sign “MY PASSPORT” (the “MY PASSPORT trademark”):

− the International trademark MY PASSPORT with registration No. 964755, registered on May 28, 2008 for goods in International Class 9;
− the United States trademark MY PASSPORT with registration No. 3793628, registered on May 25, 2010 for goods in International Class 9;
− the European Union trademark MY PASSPORT with registration No. 006962484, registered on March 12, 2009 for goods in International Class 9; and
− Indian trademark MY PASSPORT with registration No. 1695178, registered on June 4, 2008 for goods in International Class 9.

The Complainant is also the owner of the domain names <westerndigital.com> and <wdc.com>

The disputed domain names were registered on November 24, 2016. At the time of filing of the Complaint, the disputed domain names <wd-my-passport.com> and <wdmypassport.co> resolved to websites that offered technical services for products of the Complainant’s group, and the disputed domain name <support-wdc.com> resolved to a parking page of the Registrar.

5. Parties’ Contentions

A. Complainant

The Complainant states that it became aware of the disputed domain names and the websites connected to them after several customers of the Complainant complained about fraudulent activities being conducted via the websites connected to the disputed domain names, i.e., attempts to charge customers money to provide technical support services. The Complainant then found that the Respondent had also been the respondent in Seagate Technology LLC v. Domains By Proxy, LLC / Sumit Pandey, WIPO Case No. D2020-2208.

The Complainant states that the disputed domain names are confusingly similar to the WD and MY PASSPORT trademarks. The disputed domain names <wd-my-passport.com> and <wdmypassport.co> consist entirely of the WD and MY PASSPORT trademarks. The disputed domain name <support-wdc.com> consists of the WD trademark with the addition of the descriptive term “support” and the letter “c” which stands for “corporation”, Western Digital Corporation being often referred to as “WDC”. The Complainant notes that this combination of elements enhances the confusion because Western Digital provides support for its products via its official website, so there is the risk that an average Internet user may believe that there is a connection between the disputed domain name <support-wdc.com> and the Complainant and its services, and that such confusion has already taken place.

According to the Complainant, the Respondent has no rights or legitimate interests in respect of the disputed domain names, because the Respondent is not commonly known by the disputed domain names and has acquired no trademark rights in them. The Complainant points out that the Respondent has not used the disputed domain names in connection with a bona fide offering of goods or services. The disputed domain names <wd-my-passport.com> and <wdmypassport.co> resolve to websites that purport to offer “support services”, but do not meet the requirements as laid down in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. The Complainant maintains that these two disputed domain names suggest an affiliation with the Complainant and its WD and MY PASSPORT trademarks, and the Respondent does not actually provide the services offered on the associated websites, but carries out fraudulent activities. The Complainant adds that the Respondent has also not accurately disclosed its relationship with the Complainant, as the websites associated to these two disputed domain names, including through the purported disclaimer included on them, create the impression that the Respondent is affiliated to the Complainant and has been authorized to use the WD and MY PASSPORT trademarks. The Complainant further notes that the website connected to the disputed domain name <support-wdc.com> is a landing page of the Registrar and does not indicate that the Respondent has any rights or legitimate interests in this disputed domain name.

The Complainant contends that the disputed domain names were registered and are being used in bad faith. According to it, the Respondent was aware of the Complainant and of its well-known and highly distinctive WD and MY PASSPORT trademarks and the goodwill associated with them, when it registered the disputed domain names, which are confusingly similar to these. Given the great similarities between the Complainant’s trademarks and the disputed domain names, there is a great risk that the disputed domain names may be used for fraudulent activities by the Respondent. The Complainant points out that such activities have already taken place as the Respondent has misled customers that it is an official Western Digital entity and provides assistance services, and has then charged money for services that Western Digital provides free of charge via its own websites. There is also a risk that the Respondent will use the disputed domain names for phishing purposes, as it has already activated email addresses associated with the disputed domain names.

According to the Complainant, by registering the disputed domain names, the Respondent has attempted to intentionally disrupt the business of the Complainant, and has engaged in a pattern of conduct of preventing the Complainant from reflecting its WD and MY PASSPORT trademarks in domain names. In a previous domain name dispute (Seagate Technology LLC v. Domains By Proxy, LLC / Sumit Pandey WIPO Case No. D2020-2208), the Respondent was found to have registered another domain name in bad faith with the intention to impersonate the respective complainant. Through a reverse WhoIs search, the Complainant also ascertained that the Respondent has registered many other domain names that incorporate well-known trademarks of third parties combined with descriptive terms such as “set up”, “help”, “how to”, etc.

B. Respondent

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

6. Discussion and Findings

Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain names:

(i) the disputed domain names are 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 respect of the disputed domain names; and

(iii) the disputed domain names were registered and are being used in bad faith.

In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with the Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.

By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name […]”

The Respondent has however not submitted a Response and has thus not disputed the Complainant’s statements and evidence in this proceeding.

A. Identical or Confusingly Similar

The Complainant has provided evidence and has thus established its rights in the WD and MY PASSPORT trademarks.

The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the Top-Level Domain (“TLD”) of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). See section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Panel sees no reason not to follow the same approach here, so it will disregard the “.co” and “.com” TLDs of the disputed domain names.

As discussed in sections 1.7 and 1.8 of the WIPO Overview 3.0, the threshold test for confusing similarity involves a reasoned but relatively straightforward comparison between the textual components of the complainant’s trademark and the disputed domain name to assess whether the trademark is recognizable within the disputed domain name. Where the relevant trademark is recognizable within the disputed domain name, the addition of other descriptive terms would not prevent a finding of confusing similarity under the first element.

The relevant sections of the disputed domain names <wd-my-passport.com> and <wdmypassport.co> incorporate the WD and MY PASSPORT trademarks in their entirety without the addition of other elements apart from two hyphens between the word elements of the first of these disputed domain names. This satisfies the Panel that these two disputed domain names are confusingly similar to the WD and MY PASSPORT trademarks in which the Complainant has rights.

The disputed domain name <support-wdc.com> incorporates the WD trademark in combination with two non-distinctive elements – the word “support” and the letter “c”, whose combination with the WD trademark reproduces the abbreviation of the name of Western Digital Corporation to which the Complainant is affiliated. The WD trademark remains easily recognizable in this disputed domain name. In view of the above, the Panel finds that the disputed domain name <support-wdc.com> is confusingly similar to the WD trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, 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 Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain names, stating that is not commonly known by them and has acquired no trademark rights in them, and has not used the disputed domain names in connection with a bona fide offering of goods or services. The Complainant explains that the Respondent has misled customers that it is an official Western Digital entity by having attempted to offer “support services” to confused customers of the Complainant against payment, while the Complainant provides such services for free. The Complainant has thus established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names.

The Respondent has not submitted a Response and has not disputed the Complainant’s arguments and evidence or explained why it should be regarded as having rights or legitimate interests in the disputed domain names.

As discussed in section 2.8 of the WIPO Overview 3.0, Panels have recognized that resellers, distributors, or service providers using a domain name containing the complainant’s trademark to undertake sales or repairs related to the complainant’s goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name. Outlined in the “Oki Data test”, the following cumulative requirements will be applied in the specific conditions of a UDRP case:

(i) the respondent must actually be offering the goods or services at issue;
(ii) the respondent must use the site to sell only the trademarked goods or services;
(iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and
(iv) the respondent must not try to “corner the market” in domain names that reflect the trademark.

The evidence in the case file shows that two of the disputed domain names resolve to websites that offer technical support to customers of Western Digital products.

The website at the disputed domain name <wd-my-passport.com> contains the following statement :“Western Digital is an independent technical service provider for several brands of gadgets, and not, in any way, associated with the Manufacturer of devices mentioned on the site. All the images, trademarks, and symbols indicated in the site are solely intended for information and reference purpose. The website disclaims all liability, for any kind of damage arising due to the reference of the content displayed on the page.”

The website at the disputed domain name <wdmypassport.co> states: “— About Us — We provide our customers with all the important and essential information about Western Digital (WD) hard drives on this website. You can find setup and installation help for all your WD drives. We have also listed the unique features of all the WD external and internal hard drives on this site.” The same website includes the following notice: “DISCLAIMER Western Digital is an independent technical service provider for several brands of gadgets, and not, in any way, associated with the manufacturer of devices mentioned on the site.” It also includes the following copyright notice: “Copyright © 2021 - 2022 wdmypassport.co | All rights are reserved.”

The above statements of the websites at these two disputed domain names do not disclose the lack of relationship between the Parties, and they use the name “Western Digital” to refer both to the provider of the services offered on the websites and to the manufacturer of the goods for which these services are offered. The statements thus intentionally create the wrong impression that the technical services offered on these websites are provided by the Complainant or an entity affiliated to it, and not by an unrelated entity that has not been authorized by the Complainant to use its WD and MY PASSPORT trademarks. This leads the Panel to the conclusion that the conduct of the Respondent in respect of these two disputed domain names does not meet the requirements of the Oki Data test and the operation of the associated websites does not represent a bona fide offering of goods and services and does not give rise to a legitimate interest of the Respondent in these two disputed domain names.

The disputed domain name <support-wdc.com> is associated to a parking webpage of the Registrar and does not show the carrying out of any activity that may be regarded as a bona fide offering of goods or services. This disputed domain name was registered on the same date as the other two disputed domain names, and in the absence of any evidence to the contrary, the Panel accepts as more likely than not that its registration was made with an intention for use in the same way as the other two disputed domain names, which supports the prima facie case made by the Complainant.

On the basis of the above, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain names.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

The disputed domain names are confusingly similar to the popular WD and MY PASSPORT trademarks and were registered on the same date. The Respondent does not deny that two of them resolve to websites that offer technical services in relation to products manufactured by the Complainant’s group.

These websites feature the WD and MY PASSPORT trademarks and do not disclose the lack of relationship between the Parties and the lack of authorization by the Complainant of the services offered on the websites, but identify the provider of the offered services by the name Western Digital, thus impersonating the Complainant. As submitted by the Complainant and not denied by the Respondent, the latter has attempted to receive payments from users of the Complainant’s products for services that are offered for free by the Complainant’s group.

As discussed in the section on rights and legitimate interests above, the disputed domain name <support-wdc.com> is not actively used. However, it was registered on the same date as the other two disputed domain names and its composition creates the impression that it also refers to services related to the Complainant’s products, and in the absence of any evidence to the contrary, the Panel accepts as more likely than not that its registration was made with an intention to be used in the same way as the other two disputed domain names. This conclusion is also supported by the fact that the Respondent has also been found to have acted in a similar fashion in respect of a yet another domain name in the proceeding in Seagate Technology LLC v. Domains By Proxy, LLC / Sumit Pandey, WIPO Case No. D2020-2208. It should also be noted, as discussed in section 3.3 of the WIPO Overview 3.0, that from the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. Factors that have been considered relevant in applying the passive holding doctrine include the degree of distinctiveness or reputation of the complainant’s mark, and the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, and these two factors are present in this case.

Taking the above into account, the Panel is satisfied that the Respondent was aware of the Complainant’s WD and MY PASSPORT trademarks and of their goodwill when it registered the disputed domain names, and that the Respondent has registered and used the disputed domain names targeting the same trademarks in an attempt to impersonate the Complainant for commercial gain by misleading third parties that they are dealing with the Complainant.

Therefore, the Panel finds that the disputed domain names have been registered and used in bad faith.

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 names <support-wdc.com>, <wdmypassport.co>, and <wd-my-passport.com> be transferred to the Complainant.

Assen Alexiev
Sole Panelist
Date: June 24, 2021