WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bombardier Inc. v. Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf / davison paul
Case No. D2021-1316
1. The Parties
The Complainant is Bombardier Inc., Canada, represented by Lynde & Associes, France.
The Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland / davison paul, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <rall-bombardier.com> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 28, 2021. On April 29, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 29, 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 April 30, 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 April 30, 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 6, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 26, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 27, 2021.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on June 15, 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 major Canadian engineering and manufacturing company that has over the years produced, among other things, snow transport vehicles, medium-sized aircraft including business jets and amphibious aircraft, and aircraft engines. More recently the Complainant has designed and manufactured high speed trains and sophisticated multi-voltage and multi-fuel locomotives able to cope with the different national standards and energy sources experienced across Europe and Scandinavia. The Complainant is prominent in the United States, where it has supplied the Amtrak high speed trains and numerous commuter train, light rail and rapid transit systems, and also train control systems.
The Complainant holds trademarks registered in Australia, Canada, France, Germany, Iceland, Japan, Mexico, Singapore, Switzerland, the European Union, and the United States, of which the following are representative:
- BOMBARDIER, Icelandic trademark, registered October 3, 2003, registration number 718/2003, in class 12;
- BOMBARDIER, Canadian trademark, registered December 29, 1972, registration number TMA187538, in class 12;
- BOMBARDIER, United States trademark, registered May 1, 2012, registration number 4133505, in classes 9, 12, and 37;
- BOMBARDIER, European Union trademark, registered December 16, 2005, registration number 002980084, in classes 4, 7, 9, 12, 25, 37, and 42.
The Complainant also owns the domain names <bombardier.in>, <bombardier-transportation.cz>, <transportbombardier.com>, <transportationbombardier.com>, <iflybombardier.com>, <bombardiertransportation.com>, <bombardiertransport.com>, <bombardier-ret.com>, <bombardierjets.com>, <bombardierinc.com>, <bombardierexperience.com>, <bombardier.ca>, <bombardier.at>, and <bombardier.com>. Most of these domain names resolve to the Complainant’s websites “www.bombardier.com/fr” and “www.rail.bombardier.com/en.html”.
No background information of significance is known about the Respondent except for the contact details provided in order to register the disputed domain name on March 25, 2021. The disputed domain name, which is held through a privacy service, does not resolve to any website but has been used as the basis of an email address that the Complainant alleges has been used to impersonate the Complainant fraudulently.
5. Parties’ Contentions
The Complainant sttes anad submits documentation to the effect that it has rights in the trademarks listed in section 4 above. The Complainant says its trademark is reproduced in its entirety in the disputed domain name which is therefore confusingly similar, and that the additional term “rall” is insubstantial in the consideration of confusing similarity.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not been permitted in any way to use the Complainant’s trademark and is not commonly known by the disputed domain name. The Respondent’s use of the disputed domain name is not legitimate because it has been used to impersonate the Complainant and one of its employees (a particular “Buyer”) by name.
The Complainant further contends that the disputed domain name was registered and is being used in bad faith. A detailed chronology has been provided by the Complainant, which may be summarised as follows.
In March 2021, one of the Complainant’s suppliers (the “Supplier”) was about to make a payment to the Complainant. The Buyer had been communicating with a contact at the Supplier, discussing the payment. On March 23, 2021, the Supplier wrote to the Buyer, saying the payment would be made “this week”. The Complainant says the Respondent appears to have gained access to these prior emails.
The disputed domain name was registered by the Respondent on March 25, 2021, and on that date the Supplier received an email apparently from the Buyer but in fact from an email address based on the disputed domain name (a “fake email”), stating that an attached bank certificate provided the details of the account to which payments to the Complainant should be made.
On a number of dates thereafter, several more fake emails were received by the Supplier urging payment, until April 14, 2021, when payment was made in accordance with instructions in the fake emails.
The Complainant says it has investigated the address provided by the Respondent for the purpose of registration of the disputed domain name. The Complainant says this address appears to be false for reasons including a discrepancy between the registrant’s stated name and name appearing in their email address, an inconsistent postcode, inability to trace the registrant’s name to the stated address, and that the stated telephone number belongs to someone else.
The Complainant further contends that the Respondent is the registrant of at least 100 domain names.
The Complainant has cited previous decisions under the Policy that it considers should support its case.
The Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable dispute resolution provider, in compliance with the Rules, that:
“(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith”.
The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
A. Identical or Confusingly Similar
The Panel is satisfied by the evidence produced that the Complainant is the holder of the registered trademark BOMBARDIER.
The disputed domain name is <rall-bombardier.com>, which prominently displays the Complainant’s registered trademark. On an objective comparison, for the purposes of paragraph 4(a)(i) of the Policy the disputed domain name is found to be confusingly similar to the Complainant’s trademark and neither the additional sequence of letters “rall” nor the generic Top-Level Domain (“gTLD”) “.com” is found to detract from the confusing similarity. The Panel finds for the Complainant under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has certified that the Respondent has not been granted permission to use the Complainant’s trademark in any way. The Complainant has stated a prima facie case to the effect that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides for the Respondent to contest the Complainant’s prima facie case under paragraph 4(a)(ii) of the Policy and to establish rights or legitimate interests in a disputed domain name by demonstrating, without limitation:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Respondent has not responded and has not asserted any rights or legitimate interests in the disputed domain name with reference to paragraphs 4(c)(i), (ii) or (iii) of the Policy or otherwise. The Complainant has, however, produced evidence, further discussed below in the matter of bad faith, that the disputed domain name has been used as the basis of an email address that has had the effect of impersonating the Complainant, which cannot be regarded as a bona fide or fair or legitimate noncommercial use, and there is no evidence the Respondent has been commonly known by the disputed domain name or similar.
The Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name and finds for the Complainant under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant is required to prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances, without limitation, 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 web site or other on-line 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 on-line location for which the disputed domain name has been used is an email address. It does not resolve to a website.
The Complainant has produced in evidence a sequence of emails received by the Supplier, having been sent from the email address of the disputed domain name (i.e., the fake emails). These are partially redacted as the Complainant has requested that certain matters be kept confidential. The email address from which the fake emails was sent was “[person@] rall-bombardier.com”, which may be compared with the Complainant’s authentic email address “[person@] rail.bombardier.com”, the difference being that the authentic element “rail.” has been changed to “rall-” in the fake email address. It may reasonably have been anticipated by the perpetrator that a busy company official might not notice the difference between the fake and authentic email addresses.
The sequence of emails produced in evidence reveals that genuine emails flowed between the Buyer and the Supplier until and including March 23, 2021, when the Supplier wrote to say payment would be made “this week”.
On March 25, 2021, being significantly the date of registration of the disputed domain name, the Supplier received the first fake email, purporting to be from the Buyer. The email attached what was stated to be a bank certificate providing the details of the account, in the name of Bombardier Transportation GmbH, into which the Supplier was required to make the upcoming payment. This account did not belong to the Complainant. Also attached was a letter on the letterhead of Bombardier Transportation GmbH, bearing what the Complainant states is the forged signature of the Buyer, confirming the change of bank account.
Further fake emails were received by the Supplier on March 26, 29, and 31, 2021, and April 1, 2, 6, 8, 12, and 14, 2021, chasing payment. To enhance the deceptive appearance of the fake emails, most were shown as apparently copied to five named individuals within the Complainant organisation, as had the previous authentic emails from the Complainant, except that the email addresses of all the copied-in recipients were altered to the corresponding fake email addresses and therefore may have looked superficially correct, but would not have been received by them.
The Supplier was in fact confused as intended by the Respondent because in emails dated March 29, 2021 and April 8, 2021, the Supplier wrote back, evidently thinking the reply was going to the Buyer, among other matters acknowledging the falsely changed new bank account. On April 14, the Supplier again wrote back, to say there was a problem with making payment to the new bank account because the account was in the wrong currency denomination. In response the Respondent provided another bank account and finally the payment was made to that account.
The deception was then discovered and on April 22, 2021, the Supplier sent the file of fake correspondence, as produced in evidence, to the Buyer.
On the totality of the evidence, including for instance the list of five additional Complainant’s email addresses to which correspondences were copied, it may reasonably be concluded that the Respondent had gained unauthorised access to the email system of the Complainant or the Supplier and had interceded at the critical time when a payment was about to be made by the Supplier to the Complainant, by sending fake emails to the Supplier to divert the funds to a spurious account. The Respondent is found therefore to have attracted intentionally an Internet user to his on-line location, i.e., his email address, by actual confusion between the Complainant’s trademark and the source of the email address, for commercial gain, constituting use in bad faith in the terms of paragraph 4(b)(iv) of the Policy, and to have registered the disputed domain name for that bad faith purpose.
On the evidence and on the balance of probabilities the Panel finds the Respondent to have registered and used the disputed domain name in bad faith under paragraph 4(a)(iii) of the Policy.
The evidence produced by the Complainant in respect of the Respondent’s purported name, physical address, postcode and telephone number, leads the Panel to find on the balance of probabilities that in addition to the use of a privacy service, the Respondent has given false underlying contact details. Whilst the use of a privacy service may be entirely legitimate, it fails to be so if the intention appears to be to avoid contact or the service of documents. As reviewed at section 3.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “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.” The Panel in this case finds the bad faith of the Respondent to be compounded by the provision of false contact details behind a privacy service.
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 <rall-bombardier.com> be transferred to the Complainant.
Dr. Clive N.A. Trotman
Date: June 29, 2021