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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Newell Brands Inc. v. Privacy Service Provided by Withheld for Privacy ehf / Levis White, EngySP

Case No. D2021-2805

1. The Parties

The Complainant is Newell Brands Inc., United States of America (“United States”), represented by Polsinelli PC, United States.

The Respondent is Privacy Service Provided by Withheld for Privacy ehf, Iceland / Levis White, EngySP, Portugal.

2. The Domain Name and Registrar

The disputed domain name <newellc.com> (the “Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 26, 2021. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. Also on the same day, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 31, 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 September 1, 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 September 3, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 23, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 28, 2021.

The Center appointed Jon Lang as the sole panelist in this matter on October 5, 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 corporation organized and existing under the laws of the State of Delaware in the United States of America. It is a leading global consumer goods company with a strong portfolio of well-known brands, including RUBBERMAID, PAPER MATE, SHARPIE, DYMO, EXPO, PARKER, ELMER’S, COLEMAN, MARMOT, OSTER, SUNBEAM, FOODSAVER, and MR. COFFEE to name but a few, and its products are found in more than ninety percent of United States households.

As an extension of its consumer goods portfolio, a variety of products are sold under the NEWELL and NEWELL BRANDS trademarks, including knives, strollers, baby and infant car seats, baby carriers, dry-erase board cleaners, and pacifiers for babies. A variety of consumer goods products have been sold throughout the world under the NEWELL and/or NEWELL BRANDS trademarks for many years, with first use of the NEWELL trademark on goods taking place as early as 1985.

The Complainant has continually used the NEWELL and NEWELL BRANDS trademarks in commerce for many years and owns many live, distinctive, and well-known trademark registrations in Brazil, Germany and the United States including, Brazilian trademark registration No. 822246007 (for NEWELL) with a registration date of January 17, 2006; German trademark registration No. 39515502 (for NEWELL) with a registration date of November 7, 1997; and United States registration No. 6080344 for a stylised version of NEWELL BRANDS with a registration date of June 16, 2020.

The Domain Name was registered on January 12, 2021.

The Complainant maintained and operated a website at “www.newellco.com” which now redirects to its current website at “www.newellbrands.com”. However, it continues to use the domain name <newellco.com> for email purposes and to transact business, including with employees, with external contacts such as suppliers, distributors, partners and affiliates, and with customers.

The Respondent uses the Domain Name to spoof the Complainant’s newellco.com domain name and to engage in phishing in a scheme to defraud. For example, on December 30, 2020, an email from an individual identifying themselves as an employee of the Complainant was sent from an email address associated with the Domain Name to a partner of the Complainant, ostensibly to collect on overdue invoices. The email was not authorized by the Complainant and did not originate from the Complainant’s domain name <newellco.com>. It was sent by the Respondent with the intent to deceive the recipient into believing the email was a legitimate request from the Complainant. When the recipient of the message replied with a stated intent to pay the invoices, the Respondent provided instructions for sending funds by way of SWIFT or wire transfer with details which did not reflect the Complainant’s actual SWIFT or wire transfer account codes. A further attempt was made on January 28, 2021, this email implying that the sender was having technical difficulties with their email address and asking that further correspondence be directed to their supposed personal email address. In later correspondence, the deceived recipient sent more than USD 15,000 to an account they believed was associated with the Complainant.

5. Parties’ Contentions

A. Complainant

The following is a summary of the main assertions of the Complainant.

NEWELL and NEWELL BRANDS branded goods are sold throughout the world and as a result of extensive sales and advertising (and because of the high quality of products) NEWELL and NEWELL BRANDS have become recognized and respected brands, enjoying widespread recognition and generating substantial goodwill and customer recognition for the Complainant.

The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Domain Name is confusingly similar to the Complainant’s distinctive and well-known NEWELL and NEWELL BRANDS trademarks. NEWELL is incorporated into the Domain Name, followed by the letter “c” and generic Top-Level Domain (“gTLD”) “.com” (to form “newellc.com”) in order to impersonate the Complainant’s <newellco.com> domain name. Neither the failure to incorporate a non-distinctive and generic element of a trademark (“brands”) nor the addition of the letter “c”, reduces the confusing similarity between Domain Name and the NEWELL and NEWELL BRANDS trademarks. Indeed, the addition of the letter “c” is designed to impersonate the <newellco.com> domain name.

The Respondent has no rights or legitimate interests in the Domain Name.

The Respondent is not affiliated with the Complainant, or licensed by it.

The Respondent is not using the Domain Name in connection with a bona fide offering of goods or services. The Respondent’s sole interest in the Domain Name is to abuse its similarity with the Complainant’s domain name (<newellco.com>) for the purposes of engaging in a phishing and spoofing scheme. The Respondent registered the Domain Name in order to send fraudulent emails, impersonating the Complainant, to unsuspecting customers and vendors. By registering a domain name confusingly similar to the Complainant’s well-known NEWELL and NEWELL BRANDS trademarks (and <newellco.com> domain name), it is clear that the Respondent acquired the Domain Name for the sole purpose of exploiting the Complainant’s, title, interest and goodwill in the NEWELL and NEWELL BRANDS trademarks through the perpetration of a phishing and spoofing scheme to defraud.

The Domain Name is currently parked with no information. There is no information suggesting that the Respondent uses the Domain Name in connection with a bona fide offering of goods or services.

Given the circumstances, the Respondent cannot claim to be making any legitimate noncommercial or fair use of the Domain Name; the evidence reflects only the Respondent’s intentional male fide use of the Domain Name in an attempt to profit from and exploit the Complainant’s NEWELL and NEWELL BRANDS trademarks.

To the best of the Complainant’s knowledge, the Respondent has never been commonly known by the Domain Name, and the Domain Name is not derived from the Respondent’s name.

The only use the Respondent has for the Domain Name is to continue its fraudulent scheme to masquerade as the Complainant.

It has been previously held by UDRP Panels that a Respondent’s use of a privacy or proxy service which is known to block or intentionally delay disclosure of the identity of the underlying registrant, is an indication of bad faith.

The Domain Name was registered and is being used in bad faith.

The Respondent’s conduct in this case demonstrates bad faith registration and use of the Domain Name. The Respondent’s bad faith is palpable. It is clear from the circumstances that the Respondent was well aware of the Complainant and had the NEWELL and NEWELL BRANDS trademarks (and <newellco.com> domain name) firmly in mind when registering the Domain Name. The Respondent’s sole motivation in registering and using the Domain Name was to capitalize on or otherwise take advantage of the Complainant’s trademark rights in furtherance of a spoofing scheme.

This is an obvious case of typosquatting and spoofing – a trademark has been incorporated into a domain name but with an additional letter in order to create fraudulent emails intended to confuse consumers.

The Complainant believes that the Respondent has an abusive practice of typosquatting and spoofing. The Respondent has registered an additional domain name (<newellc.tk>) which also fully incorporates the Complainant’s well-known and distinctive trademark, further evidencing the Respondent’s efforts to capitalize on and take advantage of the Complainant’s trademark rights. This is further evidence of the Respondent’s bad faith.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy requires a complainant to prove that a respondent has registered a domain name which is: (i) identical or confusingly similar to a trademark or service mark in which a complainant has rights; and (ii) that the respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith. A complainant must prove each of these three elements to succeed.

A. Identical or Confusingly Similar

The Complainant is the owner of the NEWELL and NEWELL BRANDS trademarks and clearly has rights in those marks.

Ignoring the gTLD “.com” (as the Panel may do for comparison purposes), the Domain Name comprises the NEWELL trademark followed by the letter “c”. Accordingly, neither the NEWELL nor NEWELL BRANDS trademarks are identical and thus the issue of confusing similarity must be considered. Application of the confusing similarity test under the UDRP typically involves “a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name” (section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“the WIPO Overview 3.0”)). Section 1.7 of the WIPO Overview 3.0 goes on to provide “[…] in cases where a domain name incorporates the entirety of a trademark, […] the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”.

The NEWELL trademark is incorporated in its entirety within the Domain Name and clearly recognizable. The addition of the letter “c” does not prevent a finding of confusing similarity between the Domain Name and NEWELL trademark. As for the NEWELL BRANDS trademark, the omission of the word “brands” again does not prevent a finding of confusing similarity between the mark and Domain Name in that “newell” is the dominant element of both.

The Panel finds that the Domain Name is confusingly similar to the NEWELL and NEWELL BRANDS trademarks for the purposes of the Policy and thus paragraph 4(a)(i) of the Policy has been established.

B. Rights or Legitimate Interests

By its allegations, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name.

Accordingly, the burden of production shifts to the Respondent to come forward with arguments or evidence demonstrating that it does in fact have such rights or legitimate interests. The Respondent has not done so and accordingly, the Panel is entitled to find, given the prima facie case made out by the Complainant, that the Respondent indeed lacks rights or legitimate interests in the Domain Name. Despite the lack of any answer to the Complainant’s contentions however, the Panel is entitled to consider whether there would be anything inappropriate in such a finding.

A respondent can show it has rights to or legitimate interests in a domain name in various ways even where it is not, as here, licensed by or affiliated with a complainant. For instance, it can show that it has been commonly known by the domain name or that it 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 or service mark at issue. A respondent can also show that it is using a domain name in connection with a bona fide offering of goods or services. Here, however, the Respondent is not known by the Domain Name. Moreover, the Respondent has used the confusingly similar Domain Name to impersonate the Complainant for illegitimate purposes described earlier. Such behaviour cannot amount to a bona fide offering of goods or services, or a legitimate noncommercial or fair use for the purposes of the Policy. Such use by a Respondent could never bestow rights or legitimate interests in a domain name it had registered. Accordingly, the Panel finds that the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

There can be little doubt that the Respondent was aware of the Complainant’s NEWELL and NEWELL BRANDS trademarks at the time of registration of the Domain Name.

Paragraph 4(b) of the Policy provides a number of non-exclusive scenarios which may evidence a respondent’s bad faith. They include, for instance, a respondent registering a domain name in order to prevent an owner of the trademark or service mark to which it is said to be confusingly similar or identical, from reflecting the mark in question in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct. A respondent registering a domain name primarily for the purposes of disrupting the business of a competitor is another scenario, as is a respondent intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website or of products or services on it.

Sometimes, it is not possible for a complainant to demonstrate literal or verbatim application of one of the paragraph 4(b) scenarios. However, given that such scenarios are non-exclusive and simply illustrative, this matters not as long as there is evidence demonstrating that a respondent seeks to take unfair advantage of, or to abuse a complainant’s trademark, such behaviour being broadly understood to constitute bad faith for the purposes of the Policy.

To this end, it has been held by past UDRP panels that where a domain name has been used, or connected with phishing activities, a finding of bad faith will follow (e.g. Confédération Nationale du Crédit Mutuel v. Daniel Delcore, WIPO Case No. DLC2009-0001). Needless to say, use of a confusingly similar domain name in which a Respondent has no rights, in connection with any illegal activity, would also support a finding of bad faith registration and use. In such a clear case as this, there is no need to consider other bases upon which a finding of bad faith could be made, or other supporting factors.

In the circumstances of this case, the Panel finds that, for the purposes of the Policy, there is evidence of registration and use of the Domain Name 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 Domain Name <newellc.com> be transferred to the Complainant.

Jon Lang
Sole Panelist
Date: October 19, 2021

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