WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Dewberry Engineers Inc. v. Privacy service provided by Withheld for Privacy ehf / Webb Crawford

Case No. D2021-2872

1. The Parties

The Complainant is Dewberry Engineers Inc., United States of America (“United States”), represented by McCandlish Lillard, P.C., United States.

The Respondent is Privacy service provided by Withheld for Privacy ehf, Iceland / Webb Crawford, United States.

2. The Domain Name and Registrar

The disputed domain name <dewberrry.org> (the “Disputed 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 31, 2021. On September 1, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On the same day, 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 September 6, 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 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 September 13, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 3, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 5, 2021.

The Center appointed Lynda M. Braun as the sole panelist in this matter on October 11, 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 engineering, architecture, real estate services, and emergency management firm offering a variety of services and has more than fifty locations across the United States.

The Complainant owns the following trademarks in the United States:

DEWBERRY, United States Registration No. 2,991,043, registered on September 6, 2005; and

DEWBERRY and Design, United States Registration No. 2,991,044, registered on September 6, 2005.

The aforementioned marks were registered for a wide variety of services and will hereinafter be referred to as the “DEWBERRY Mark”.

The Complainant is the owner of the domain name <dewberry.com> which resolves to its official website at “www.dewberry.com”.

The Respondent registered the Disputed Domain Name <dewberrry.org> on August 16, 2021. The Disputed Domain Name resolves to an inactive landing page that states: “This site can’t be reached. www.dewberrry.com refused to connect.”

5. Parties’ Contentions

A. Complainant

The following are the Complainant’s contentions:

- the Disputed Domain Name is confusingly similar to the Complainant’s DEWBERRY Mark;

- the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name;

- the Disputed Domain Name was registered and is being used in bad faith; and

- the Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy.

B. Respondent

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

6. Discussion and Findings

In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)):

(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

This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark. The Panel concludes that the Disputed Domain Name is confusingly similar to the DEWBERRY Mark.

It is uncontroverted that the Complainant has established rights in the DEWBERRY Mark based on its continuous use since 2005. The general consensus is that “registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive”. See CWI, Inc. v. Domain Administrator c/o Dynadot, WIPO Case No. D2015-1734. The Respondent has not rebutted this presumption, and therefore the Panel finds that the Complainant has rights in the DEWBERRY Mark.

The Disputed Domain Name consists of the DEWBERRY Mark in its entirety, although misspelled by adding an additional letter “r” to “dewberry”, and then followed by the generic Top-Level Domain (“gTLD”) “.org”. Such a modification to a trademark is commonly referred to as “typosquatting” and seeks to wrongfully take advantage of errors by a user in typing a domain name into a web browser. The misspelling of the Disputed Domain Name does not prevent a finding of confusing similarity to the DEWBERRY Mark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.9 (“A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element”). Other UDRP panels have found that the addition of a consonant such as the additional “r” in the Disputed Domain Name in this proceeding, does not prevent a finding of confusing similarity. See Humana Inc. v. Cayman Trademark Trust, WIPO Case No. D2006-0073 (<humanna.com>); Edmunds.com, Inc. v. Digi Real Estate Foundation, WIPO Case No. D2006-1043 <edmundss.com>).

Finally, the addition of a gTLD such as “.org” in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182 and WIPO Overview 3.0, section 1.11.

Accordingly, the Panel finds that Policy paragraph 4(a)(i) has been established by the Complainant.

B. Rights or Legitimate Interests

Under the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of production of evidence that demonstrates rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1.

There is no evidence in the record suggesting that the Respondent has rights or legitimate interests in the Disputed Domain Name. The Complainant has not authorized, licensed, or otherwise permitted the Respondent to use the Complainant’s DEWBERRY Mark. The Complainant does not have any business relationship with the Respondent, nor is the Respondent making a legitimate noncommercial or fair use of the Disputed Domain Name. Based on the passive use made of the Disputed Domain Name to resolve to a landing page with no content, the Panel finds that the Respondent is not making a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Disputed Domain Name. There is also no evidence that the Respondent is commonly known by the Disputed Domain Name or by any name similar to it, nor any evidence that the Respondent was making demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services. See Policy, paragraph 4 (c).

Accordingly, the Panel finds that Policy paragraph 4(a)(ii) has been established by the Complainant.

C. Registered and Used in Bad Faith

The Panel finds that based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith pursuant to paragraph 4(b) of the Policy.

First, based on the circumstances here, the Panel concludes that the Respondent registered and is using the Disputed Domain Name in bad faith in an attempt to attract Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s DEWBERRY Mark as to the source, sponsorship, affiliation or endorsement of the Disputed Domain Name’s resolving webpage. The Respondent’s registration and use of the Disputed Domain Name indicate that such registration and use has been done for the specific purpose of trading on the name and reputation of the Complainant and its DEWBERRY Mark. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and Madonna.com, WIPO Case No. D2000-0847 (“[t]he only plausible explanation for Respondent’s actions appears to be an intentional effort to trade upon the fame of Complainant’s name and trademark.

Second, the Complainant contends that the Respondent used the Disputed Domain Name to impersonate the Complainant and perpetrate a phishing scheme directed at the Complainant’s unsuspecting customers, a strong indication of bad faith. The Respondent’s phishing scheme to send fraudulent emails to the Complainant’s customers (acting as the Complainant and using its DEWBERRY Mark), requesting that the customers change their banking information so that the Respondent would have access to their funds, evidences a clear intent to disrupt the Complainant’s business, deceive individuals, and trade off the Complainant’s goodwill by creating an unauthorized association between the Respondent and the Complainant’s DEWBERRY Mark. See Banco Bradesco S.A. v. Fernando Camacho Bohm, WIPO Case No. D2010-1552. Such conduct is emblematic of the Respondent’s bad faith registration and use of the Disputed Domain Name. See Petróleo Brasileiro S.A. - Petrobras v. AK Bright, WIPO Case No. D2013-2063 (considering the reputation of the complainant and the emails sent by the respondent using the complainant’s trademark, the respondent is held to have registered and used the domain name in bad faith). Further, previous UDRP panels have found that email-based phishing schemes that use a complainant’s trademark in the domain name are evidence of bad faith. See WIPO Overview 3.0, section 3.4 (“Panels have held that the use of a domain name for purposes other than to host a website may constitute bad faith. Such purposes include sending email, phishing, identity theft, or malware distribution. […] Many such cases involve the respondent’s use of the domain name to send deceptive emails, e.g., to obtain sensitive or confidential personal information from prospective job applicants, or to solicit payment of fraudulent invoices by the complainant’s actual or prospective customers.”).

Third, the Respondent’s registration of the Disputed Domain Name that contains a misspelling of the DEWBERRY Mark in an effort to take advantage of a typographical error is evidence of bad faith registration and use. See Nutricia International BV v. Eric Starling, WIPO Case No. D2015-0773. The Panel concludes that the Respondent knew about the Complainant’s rights in the DEWBERRY Mark when it registered the Disputed Domain Name, since it added the letter “r” to “dewberry” to misdirect users from the Complainant’s website to the Respondent’s webpage by capitalizing on typing mistakes made by users. See ESPN, Inc. v. XC2, WIPO Case No. D2005-0444 (“It is well-settled that the practice of typosquatting, of itself, is evidence of the bad faith registration of a domain name.”).

Finally, the fact that the disputed domain name does not resolve to an active website, does not prevent a finding of bad faith.

Accordingly, the Panel finds that Policy paragraph 4(a)(iii) has been established by the Complainant.

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 <dewberrry.org> be transferred to the Complainant.

Lynda M. Braun
Sole Panelist
Date: October 25, 2021