WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Eaton Corporation plc v. Registration Private, Domains By Proxy, LLC / Michael Perry
Case No. D2021-2188
1. The Parties
The Complainant is Eaton Corporation plc, Ireland, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Registration Private, Domains By Proxy, LLC, United States of America (“United States”) / Michael Perry, United States.
2. The Domain Name and Registrar
The disputed domain name <eaton-plc.com> is registered with Wild West Domains, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 8, 2021. On July 8, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 9, 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 July 9, 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 July 9, 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 July 16, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 5, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 12, 2021.
The Center appointed Rodrigo Azevedo as the sole panelist in this matter on August 26, 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 an electrical and industrial power management company.
The Complainant obtained registrations for the trademark EATON in numerous regions of the world, including the United States Trademark Registration Numbers 1192708, 1575551 and 1530766, respectively registered on March 30, 1982, January 20, 1990, and March 21, 1989; the United Kingdom Trade Mark Registration No. UK00000821991, registered on June 19, 1961; the Canada Trademark Registration No. TMA496398, registered on June 18, 1998; and the European Union Trade Mark Registration No. 000153569, registered on November 29, 2000.
The Complainant is also the holder of the domain name <eaton.com>, registered on May 15, 1996.
The disputed domain name <eaton-plc.com> was registered on April 19, 2021.
According to the Complaint, the disputed domain name was used in connection to a fraudulent email scheme, in which the Respondent tried to impersonate the Complainant for financial gain.
The Panel accessed the disputed domain name on September 8, 2021, at which time the disputed domain name did not resolve to any active website.
5. Parties’ Contentions
The Complainant makes the following contentions:
- The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. By virtue of its trademark registrations, the Complainant is the owner of the EATON trademark. It is standard practice when comparing a disputed domain name to a complainant’s trademark, to not take the extension into account. The disputed domain name can be considered as capturing, in its entirety, the Complainant’s EATON trademark and simply adding a hyphen and the generic term “plc” to the end of the trademark. The mere addition of the abbreviation “plc”, which, in the United Kingdom (“UK”) and Ireland, indicates that a company is a public limited company, does not negate the confusing similarity between the disputed domain name and the Complainant’s trademark. It is well established that the addition of generic or descriptive terms is not sufficient to overcome a finding of confusing similarity. The use of such hyphen does not diminish the confusing similarity between the disputed domain name and the Complainant’s trademark and should be disregarded for purposes of making this determination.
- The Respondent has no rights or legitimate interests in respect of the disputed domain name. The granting of registrations by the United States Patent and Trademark Office (USPTO), Canadian Intellectual Property Office (CIPO), United Kingdom Intellectual Property Office (UKIPO) and European Union Intellectual Property Office (EUIPO) to the Complainant for the EATON trademark is prima facie evidence of the validity of the term EATON as a trademark, of the Complainant’s ownership of this trademark, and of the Complainant’s exclusive right to use the EATON trademark in commerce. The Respondent is not sponsored by or affiliated with the Complainant in any way. Furthermore, the Complainant has not licensed, authorized, or permitted the Respondent to use the Complainant’s trademark in any manner, including in domain names. The Respondent is not commonly known by the disputed domain name, which evidences a lack of rights or legitimate interests. The pertinent WhoIs information identifies the Respondent as “Michael Perry”, which does not resemble the disputed domain name in any manner. Thus, where no evidence, including the WhoIs record for the disputed domain name, suggests that the Respondent is commonly known by the disputed domain name, then the Respondent cannot be regarded as having acquired rights to or legitimate interests in the disputed domain name within the meaning of the Policy, paragraph 4(c)(ii). In addition, at the time of filing the Complaint, the Respondent was using a privacy WhoIs service, which past panels have also found to equate to a lack of rights or legitimate interests. At present, the disputed domain name redirects Internet users to a website that resolves to a blank page and lacks content. The Respondent sent emails from the disputed domain name to numerous individuals and entities, fraudulently attempting to create the impression that such emails originated from the Complainant. The Respondent attempted to impersonate the Complainant by signing off its emails as an employee of the Complainant and incorporating the EATON logo in its signature block. Further, the Respondent used an email address associated with the disputed domain name in an effort to fool unsuspecting recipients of its quotation and purchase requests for toner cartridges. It is quite apparent that the Respondent intentionally and fraudulently attempted to pass itself off as the Complainant by using email addresses associated to the disputed domain name to perpetrate fraud for its own financial gain. Such use provides additional evidence of the Respondent’s lack of rights or legitimate interests in the disputed domain name. Furthermore, the Respondent’s fraudulent scheme in this instance appears to be similar, if not identical, to that perpetrated under the domain name <eaton-inc.com>, which at the time of the filing of the Complaint was subject to ongoing UDRP proceedings. See Eaton Corporation plc v. Michael Perry, WIPO Case No. D2021-1141. The Respondent registered the disputed domain name on April 19, 2021, which is significantly after the Complainant’s registration of its EATON trademark with the USPTO, CIPO, UKIPO, and EUIPO, and significantly after the Complainant’s first use in commerce of its trademark in 1923. The disputed domain name’s registration date is also significantly after the Complainant’s registration of its official domain name <eaton.com> on May 15, 1996.
- The disputed domain name was registered and is being used in bad faith. The Complainant and its EATON trademark are known internationally, with trademark registrations across numerous countries. By registering a domain name that contains the Complainant’s EATON trademark in its entirety, with the mere addition of a hyphen and a generic term “plc”, the Respondent has demonstrated a knowledge of and familiarity with the Complainant’s brand and business. Further, by sending fraudulent emails and impersonating the Complainant, it is evident that the Respondent has actual knowledge of the Complainant, its business and its trademark. The trademark EATON is so closely linked and associated with the Complainant that the Respondent’s use of this mark, or any minor variation of it, strongly implies bad faith. Moreover, the Respondent’s registration of the disputed domain name shortly after the Complainant filed a UDRP complaint for the domain name <eaton-inc.com> strongly suggests that the Respondent knew of the Complainant and only registered the disputed domain name so he can continue to perpetrate his fraudulent scheme. The Respondent’s efforts to masquerade as the Complainant in an attempt to purchase supplies and materials from unsuspecting people, only to provide the latter with false payment details, certainly constitute fraud, which must be considered bad faith registration and use of the disputed domain name. The disputed domain name currently resolves to an inactive site. Past UDRP panels have noted that bad faith use does not require a positive act on the part of the Respondent, and passively holding a domain name can constitute a factor in finding bad faith registration and use. The Respondent, at the time of initial filing of the Complaint, had employed a privacy service to hide its identity, which past UDRP panels have held serves as further evidence of bad faith registration and use. Finally, on balance of the facts set forth above, it is more likely than not that the Respondent knew of and targeted the Complainant’s trademark, and the Respondent should be found to have registered and used the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, a complainant shall prove the following three elements:
(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 Panel is satisfied by the evidence included in the Complaint of trademark registrations for EATON obtained by the Complainant as early as in 1961.
The trademark EATON is wholly encompassed within the disputed domain name. The disputed domain name differs from the Complainant’s trademark EATON merely by the addition of a hyphen and of the descriptive term “plc” (an abbreviation commonly used to describe a public limited company), as well as of the generic Top-Level Domain (“gTLD”) “.com”, see sections 1.8 and 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Previous UDRP decisions have found that the mere addition of symbols such as a hyphen or of descriptive terms (such as “plc” in this case) to a trademark in a domain name do not prevent a finding of confusing similarity. This has been held in many UDRP cases (see, e.g., Inter-IKEA Systems B.V. v. Evezon Co. Ltd., WIPO Case No. D2000-0437; The British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050; Volvo Trademark Holding AB v. SC-RAD Inc., WIPO Case No. D2003-0601; Wal-Mart Stores, Inc. v. Lars Stork, WIPO Case No. D2000-0628; America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713; AltaVista Company v. S. M. A., Inc., WIPO Case No. D2000-0927).
It is already well established that the addition of a gTLD such as “.com” is typically irrelevant when determining whether a domain name is confusingly similar to a complainant’s trademark.
As a result, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks, and that the Complainant has satisfied the first element of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides some examples without limitation of how a respondent can demonstrate a right or legitimate interest in a domain name:
(i) before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name; or
(iii) the respondent is 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 at issue.
Based on the Respondent’s default and on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name.
The Panel notes that the present record provides no evidence to demonstrate the Respondent’s intent to use or to make preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Indeed, the Complainant brought evidence that the disputed domain name has been used in connection with a fraudulent scheme, in which email messages impersonating the Complainant were sent to Internet users in order to obtain personal data and undue payments.
The Complainant has not licensed or authorized the usage of its trademarks to the Respondent, and it does not appear from the present record that the Respondent is commonly known by the disputed domain name.
Actually, the Respondent has not indicated any reason to justify why the specific term “eaton-plc” was chosen to compose the disputed domain name.
Consequently, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name, and the Complainant has proven the second element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or 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 documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the 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 its website or location or of a product or service on its website or location.
When the disputed domain name was registered by the Respondent in April 2021, the trademark EATON was already well known and directly connected to the Complainant’s power management solutions.
The disputed domain name encompasses the well-known trademark EATON in its entirety. The addition of the term “-plc” enhances the risk of confusion to Internet users by suggesting it is an official website of the Complainant, Eaton Corporation plc, when it is not.
According to section 3.1.4 of the WIPO Overview 3.0, UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely known trademark by an unaffiliated entity can by itself create a presumption of bad faith.
Therefore, the Panel concludes that it is unlikely that the Respondent was not aware of the Complainant’s trademarks and that the adoption of the disputed domain name was a mere coincidence.
Currently, no active website is linked to the disputed domain name, but this does not prevent the Panel’s finding that the disputed domain name is being used in bad faith.
In the Panel’s view, the following circumstances of this case are enough to characterize bad faith registration and use in the present case:
(a) the Respondent not presently using the disputed domain name;
(b) the Respondent not indicating any intention to use the disputed domain name in a bona fide manner;
(c) the Respondent not providing justifications for the registration of a domain name containing a third-party famous trademark;
(d) the evidence that the disputed domain name has been used in connection with a fraudulent phishing scheme, trying to impersonate the Complainant; and
(e) the lack of any plausible good faith reason for the adoption of the disputed domain name by the Respondent.
Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith, and that the Complainant has also satisfied the third element 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 <eaton-plc.com> be transferred to the Complainant.
Date: September 10, 2021