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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Institute of Electrical and Electronics Engineers, Incorporated v. Super Privacy Service LTD c/o Dynadot / Oza Haha

Case No. D2021-1513

1. The Parties

The Complainant is The Institute of Electrical and Electronics Engineers, Incorporated, United States of America (“United States”), represented by Dorsey & Whitney, LLP, United States.

The Respondent is Super Privacy Service LTD c/o Dynadot, United States / Oza Haha, Thailand.

2. The Domain Name and Registrar

The disputed domain name <ieeexplore.info> is registered with Dynadot, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 13, 2021. On May 17, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 18, 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 19, 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 amendment to the Complaint on May 20, 2021.

The Center verified that the Complaint together with the amendment to the 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 21, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 10, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 11, 2021.

The Center appointed Jane Seager as the sole panelist in this matter on June 21, 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 technical professional association for the advancement of technology, with some 400,000 members in over 160 countries. The Complainant is engaged in various sectors, including computer engineering, biomedical technology, telecommunications, electric power, aerospace, consumer electronics, and others.

The Complainant is the owner of a number of trademark registrations, including but not limited to the following:

- United States Trademark Registration No. 1770511, IEEE, registered on May 11, 1993; and

- United States Trademark Registration No. 2595086, IEEE XPLORE, registered on July 16, 2002.

The Complainant also owns the domain name <ieee.org>, which it uses in connection with its official public-facing website. The Complainant also operates a digital library via the subdomain <ieeexplore.ieee.org>.

The disputed domain name was created on April 3, 2021. On or around April 9, 2021, the disputed domain name resolved to a parking page displaying Pay-Per-Click (“PPC”) links to various goods and services, including links making mention of the Complainant. The parking page included a banner stating “BUY THIS DOMAIN”. On or around May 13, 2021, the disputed domain name resolved to a website in Thai, making reference to football results, but otherwise lacking substantive content. At the time of this decision, the website to which the disputed domain name resolves has been updated to include an article about nutrition in English and Thai, which includes a number of links to third-party websites, including websites displaying pornographic content.

5. Parties’ Contentions

A. Complainant

The Complainant asserts rights in the IEEE and IEEE XPLORE trademarks. The Complainant submits that the disputed domain name is confusingly similar to its trademarks.

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant asserts that the Respondent is not affiliated with the Complainant in any way, and has not been authorized to make use of the Complainant’s trademarks. The Complainant submits that the Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services, nor is the Respondent commonly known by the disputed domain name.

The Complainant submits that the disputed domain name was registered and is being used in bad faith. The Complainant submits that the disputed domain name was registered without any bona fide basis in an attempt to capitalize on the goodwill of the Complainant’s trademarks. The Complainant asserts that its trademarks are well known. The Complainant submits that the disputed domain name was registered with the specific intent to cause consumer confusion and to free ride on the goodwill associated with the Complainant’s trademarks.

The Complainant requests transfer of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

In order to prevail, the Complainant must demonstrate, on the balance of probabilities, that it has satisfied the requirements of paragraph 4(a) of the Policy:

(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 was registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has established rights in the IEEE and IEEE XPLORE trademarks, the registration details of which are provided in the factual background section above.

The disputed domain name comprises the Complainant’s IEEE trademark in its entirety as its leading element. The disputed domain name also comprises the Complainant’s IEEE XPLORE trademark, altered only by the omission of a space, a space itself being incapable of representation in a domain name. As such, the Complainant’s trademarks are immediately recognizable in the disputed domain name; see the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.

The Panel finds that the disputed domain name is confusingly similar to the Complainant’s IEEE and IEEE XPLORE trademarks. The Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

As noted above, the disputed domain name previously resolved to a parking page displaying PPC links, and at the time of filing the Complaint, the disputed domain name resolved to a website that purported to provide information about football. At the time of this decision, the disputed domain name displays an article about nutrition that includes links to various third-party websites, including links to websites of a pornographic nature.

In light of the similarity between the disputed domain name and the Complainant’s trademarks, as well as the Complainant’s official domain name <ieee.org>, and its subdomain <ieeexplore.ieee.org>, which the Complainant uses in connection with its online digital library, the Panel finds that Internet users are likely to be confused as to source of the disputed domain name and the website to which it resolves. The Panel finds that the Respondent’s current use of the disputed domain name does not amount to a bona fide offering of goods or services as contemplated by paragraph 4(c)(i) of the Policy. Rather, the possible redirection of Internet users seeking the Complainant’s website to third-party websites of a pornographic nature risks tarnishing the Complainant’s trademark. There is no evidence to suggest that the Respondent is commonly known by the disputed domain name pursuant to paragraph 4(c)(ii) of the Policy. The Panel does not consider the Respondent to be making any legitimate noncommercial or fair use of the disputed domain name within the meaning of paragraph 4(c)(iii) of the Policy. The Respondent has not come forward to produce any evidence of its rights or legitimate interests in the disputed domain name.

The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Complainant’s first use of its IEEE trademark dates back to 1963. Having since amassed some 400,000 members in countries across the world, the Panel finds that the Complainant has acquired substantial reputation in its trademarks. In light of the composition of the disputed domain name, the Panel finds it highly likely that the Respondent knew of the Complainant, and its trademarks, and registered the disputed domain name in order to create a misleading impression of association with the Complainant. The Panel finds that the Respondent’s registration of the disputed domain name behind a privacy service, coupled with the provision of what appear to be false or incomplete underlying registrant details, further evidences the Respondent’s bad faith. The Panel finds that the disputed domain name was registered in bad faith.

As noted above, the disputed domain name has been used to resolve to a parking page displaying PPC links, as well as a website displaying an article on nutrition with links to third-party websites, including websites of a pornographic nature. Noting the similarity between the disputed domain name and the Complainant’s subdomain, <ieeexplore.ieee.org>, the Panel infers that the Respondent has attempted to capture Internet traffic seeking the Complainant. It is likely that the Respondent has benefitted from click-through revenue as a result of its use of the disputed domain name in connection with a parking page displaying PPC links, as well as from the links to third-party websites on the website to which the disputed domain name resolves at the time of this decision. Even if the Respondent does not receive financial benefit from its current use of the disputed domain name, links on the website to which the disputed domain name resolves have the effect of driving Internet users to websites of a pornographic nature, thereby risking tarnishing the Complainant’s trademarks. In light of the above, the Panel finds that the disputed domain name is being used in bad faith.

The Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

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 <ieeexplore.info> be transferred to the Complainant.

Jane Seager
Sole Panelist
Date: July 5, 2021

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