WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Speck Pumpen Verkaufsgesellschaft GmbH v. gjung gong, bowmanconsulting
Case No. D2021-1976
1. The Parties
The Complainant is Speck Pumpen Verkaufsgesellschaft GmbH, Germany, represented by Welzel Brinkop Rechtsanwälte, Germany.
The Respondent is gjung gong, bowmanconsulting, Germany.
2. The Domain Name and Registrar
The disputed domain name <specks-pumps.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 June 23, 2021. On June 23, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 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 June 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 a first amendment to the Complaint on June 29, 2021 and a second amendment to the Complaint on July 2, 2021.
The Center verified that the Complaint together with the amendments 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 July 2, 2021. In accordance with the Rules,
paragraph 5, the due date for Response was July 22, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 23, 2021.
The Center appointed Torsten Bettinger as the sole panelist in this matter on July 29, 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 in this administrative proceeding is Speck Pumpen Verkaufsgesellschaft GmbH, a manufacturer of high-quality pumps and compressors for industrial applications, incorporated under German law.
The Complainant is the owner of the European Union Trade Mark registration No. 000706978 for SPECK PUMPS SPECK (and design). The trademark was registered on February 18, 1999.
The disputed domain name was registered on November 3, 2020. The disputed domain name does not resolve to any active website. However, the Complainant has provided evidence that the disputed domain name has been used in a fraudulent email scheme as described below.
5. Parties’ Contentions
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case.
With regard to the requirement of identity or confusing similarity between the trademark and the disputed domain name pursuant to paragraph 4(a)(i) of the Policy, the Complainant asserts that the formative part of the trademark, “speck pumps”, is identical to the disputed domain name and that the addition of the “s” does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark, as it is either “overlooked” or regarded as indicating the genitive “s” in “Speck’s pumps”.
With regard to the Respondent having no rights or legitimate interests in the disputed domain name, the Complainant submitted that the Respondent’s bad faith use of the disputed domain name strongly indicates that the Respondent lacks rights or a legitimate interest in the disputed domain name.
Finally, with regard to the disputed domain name having been registered and being used in bad faith, the Complainant alleges that the disputed domain name was registered for the purpose of deceiving one of the Complainant’s business partners by impersonating the Complainant and attempting to induce that business partner to make a payment owed to the Complainant to a bank account under the control of the Respondent (or a person associated with the Respondent). The Complainant submitted evidence of its relationship with such business partner and the use of an email address associated with the disputed domain name to impersonate the Complaint and fraudulently induce a payment to an unknown bank account.
The Complainant alleges that the email was not sent out by the Complainant and that the bank account specified in the email is not the Complainant’s bank account.
The Complainant states that its business partner fortunately became suspicious and did not transfer the payment to the account and that neither the Complainant nor its business partner were able to determine how the Respondent obtained access to sensitive business information or the email address of employee of the Complainant’s business partner.
The Complainant further states that the disputed domain name was not used for any purpose other than sending the fraudulent email and that no website was available under the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements that the Complainant must prove by a preponderance of the evidence in order to obtain transfer of the disputed domain name:
(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 has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has demonstrated rights in the SPECK PUMPS SPECK (and design) trademark through its registration in the European Union Intellectual Property Office.
The disputed domain name is confusingly similar to the Complainant’s trademark.
Since visual or graphic elements cannot be represented in domain names, previous UDRP panels have found confusing similarity between a graphic or design mark and a disputed domain name where the domain name incorporates the entirety of the textual elements found in the mark (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7 (“in cases 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”).
This applies in the present case, since “speck pumps”, a dominant feature of the SPECK PUMP SPECK (and design) trademark, is clearly recognizable in the disputed domain name.
Finally, regardless of the merit in the Complainant’s submission that the addition of the “s” (“specks” in the disputed domain name instead of “speck”) is perceived by the public as the genitive of “speck”, the “speck pumps” feature remains sufficiently recognizable in the disputed domain name and therefore the addition of a “s” or hyphen does not prevent a finding of confusing similarity between the disputed domain name and the included mark.
The Panel therefore finds that the Complainant has established that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
Pursuant to Paragraph 4 (c) of the Policy a respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:
“(i) before any notice to you [the Respondent] 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 [the Respondent] (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 [the Respondent] 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 Complainant has asserted and presented evidence that the Respondent sent an email to one of its business partners using an email address connected to the disputed domain name in order to impersonate the Complainant and fraudulently induce that business partner of the Complainant to make a payment of to a bank account that was not an account of the Complainant.
These assertions and evidence are sufficient to establish a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
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 disputed domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.
The Respondent chose not to contest the Complainant’s allegations and has failed to come forward with any evidence to refute the Complainant’s prima facie showing that the Respondent lacks rights or legitimate interests. To the contrary, the record indicates that the disputed domain name has been used only in connection with an email fraud scheme, which is not a bona fide commercial purpose, nor a legitimate noncommercial or fair use.
The Panel therefore concludes that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed domain name as set forth by paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the Respondent has registered the disputed 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 the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the Respondent’s website or location or of a product or service on the Respondent’s website or location.
The Complainant holds a trademark registration for the mark SPECK PUMPS SPECK (and design) in the European Union that predates the registration of the disputed domain name.
The Complainant asserted and provided evidence that the Respondent used the disputed domain name in connection with an email address in order to impersonate the Complainant and fraudulently induce a business partner of the Complainant to make a payment to an account that was not an account of the Complainant. The Respondent has not contested the Complainant’s allegations. The Panel therefore accepts these allegations as undisputed facts and concludes that the Respondent registered the disputed domain name in bad faith.
The Respondent’s use of the disputed domain name as part of an email address to send out a fraudulent email to one of the Complainant’s business partners also falls under the concept of use of a domain name in bad faith pursuant to 4(b) of the Policy.
It has been long established under the UDRP that the concept of use is not confined to the use of a domain name in connection with website content displayed at a disputed domain name. In recent years, with the global rise in cybercrime, domain names have been employed in connection with email fraud schemes. In such a scenario, the domain name holder utilizes an email address connected to the domain name, which has been selected specifically either for its similarity to a known trademark to impersonate the trademark holder whose mark is included in the text of the domain name, for the illicit profit of the domain name holder.
(See, for example, B & H Foto & Electronics Corp. v. Whois Privacy Protection Service, Inc. / Jackie Upton, WIPO Case No. D2010-0841: “It does not appear that the Domain Name has ever been used for an active website. However, beginning the day after the Domain Name was registered, several of the Complainant's vendors and other suppliers of photographic and video equipment received emails from the email domain corresponding to the Domain Name and purporting to order goods on behalf of the Complainant, to be charged to the Complainant’s account. The emails, some of which were furnished with the Complaint, appear to be part of a fraudulent scheme to induce vendors to send goods purchased on credit to an address other than the Complainant’s. Suspicious vendors contacted the Complainant and forwarded samples of the emails for investigation”).
Such use of a domain name, although not one of the non-exhaustive examples of bad faith registration and use of a domain name set out in paragraph 4(b) of the Policy, clearly falls under the concept of use of a domain name in bad faith.
The Panel therefore concludes that the disputed domain name was registered and has been used in bad faith and that the Complainant has also satisfied their burden under paragraph 4(a)(iii) of the Policy.
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 <specks-pumps.com> be transferred to the Complainant.
Date: August 12, 2021