WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Wärtsilä Technology Oy Ab v. Emmy Boss, Emmmy Star

Case No. D2021-3134

1. The Parties

The Complainant is Wärtsilä Technology Oy Ab, Finland, represented by SafeNames Ltd., United Kingdom.

The Respondent is Emmy Boss, Emmmy Star, Nigeria.

2. The Domain Name and Registrar

The disputed domain name <wartsilq.com> (the “Domain Name”) 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 September 23, 2021. On September 23, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 24, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details, which did not differ from the contact information in the Complaint.

The Center verified that 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 October 7, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 27, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 10, 2021.

The Center appointed Piotr Nowaczyk as the sole panelist in this matter on November 25, 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

Wärtsilä Technology Oy Ab, the Complainant in the present proceedings, is a Finnish corporation operating in the field of smart technologies and complete lifecycle solutions for the marine and energy markets.

The Complainant was established in and has been operating continually since 1834. Currently, the Complainant conducts operations in over 200 locations across more than 80 countries. As of 2019, the Complainant had net sales of EUR 5.2 billion with approximately 19,000 employees.

The Complainant is the owner of numerous WÄRTSILÄ and WARTSILA trademark registrations, including:

- International Trademark Registration WÄRTSILÄ No. 1005789 registered on May 22, 2009;
- European Union Trademark Registration WÄRTSILÄ No. 000838466 registered on February 21, 2000;
- European Union Trademark Registration WARTSILA No. 011765294 registered on September 18, 2013.

The Complainant is also the owner of numerous domain names incorporating its WÄRTSILÄ and WARTSILA marks, including <wartsila.com>.

The Respondent registered the Domain Name on June 1, 2021.

On June 29, 2021, the Complainant’s representatives sent a takedown request to the Registrar alleging that the Respondent had been using the Domain Name to impersonate employees of the Complainant by sending invoice-related spoofed emails to a vendor. The request was successful.

As of the date of this Decision, the Domain Name resolves to an inactive website.

5. Parties’ Contentions

A. Complainant

The Complainant requests that the Domain Name be transferred to the Complainant. According to the Complainant, each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case.

First, the Complainant submits that the Domain Name is confusingly similar to the trademark registrations of the Complainant.

Second, the Complainant argues that the Respondent has neither rights nor legitimate interests in the Domain Name.

Third, the Complainant submits that the Domain Name was registered and is being used in bad faith.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy places a burden on the Complainant to prove the presence of three separate elements, which can be summarized as follows:

(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 the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

The requested remedy may only be granted if the above criteria are met.

At the outset, the Panel notes that the applicable standard of proof in UDRP cases is the “balance of probabilities” or “preponderance of the evidence”. See section 4.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

A. Identical or Confusingly Similar

The first element that the Complainant must establish is that the Domain Name is identical or confusingly similar to the Complainant’s trademark rights.

The Complainant holds several valid WÄRTSILÄ and WARTSILA trademark registrations, which precede the registration of the Domain Name.

The Domain Name contains sufficiently recognizable aspects of the Complainant’s WÄRTSILÄ and WARTSILA marks, which allow to consider the Domain Name confusingly similar to the Complainant’s marks. In fact, the Domain Name incorporates the Complainant’s WARTSILA trademark in its entirety. The alteration of the letter “a” with the letter “q” to the Complainant’s mark does not prevent the confusingly similar character of the Domain Name. As numerous UDRP panels have held, a domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered to be confusingly similar to the relevant mark for purposes of the first element. See WIPO Overview 3.0, section 1.9.

The generic Top Level Domain (“TLD”) “.com” in the Domain Name is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. See WIPO Overview 3.0, section 1.11.1.

Given the above, the Panel finds that the Domain Name is confusingly similar to the Complainant’s trademarks. Thus, the Complainant has proved the requirements under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the Domain Name.

The Respondent may establish a right or legitimate interest in the Domain Name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:

(a) that it has made 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 prior to the dispute; or

(b) that it is commonly known by the domain name, even if it has not acquired any trademark rights; or

(c) 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.

Although given the opportunity, the Respondent has not submitted any evidence indicating that any of the circumstances foreseen in paragraph 4(c) of the Policy are present in this case.

On the contrary, it results from the evidence in the record that there are the Complainant’s WÄRTSILÄ and WARTSILA trademark registrations, which predate the Respondent’s registration of the Domain Name. There is no evidence in the case that the Complainant has licensed or otherwise permitted the Respondent to use the WÄRTSILÄ or WARTSILA trademarks or to register the Domain Name incorporating any of these trademark. There is also no evidence to suggest that the Respondent has been commonly known by the Domain Name.

Moreover, it results from the evidence in the record that the Respondent does not make use of the Domain Name in connection with a bona fide offering of goods or services, as well as it does not make a legitimate, noncommercial or fair use of the Domain Name without intent for commercial gain.

The Panel notes that although the Respondent does not use the Domain Name to host active website, the Respondent has used the Domain Name to facilitate email phishing attacks. Specifically, the Domain Name has been used to send out email communications principally from the email addresses purporting to originate from the Complainant’s employees to request payments from vendors of the Complainant to be made to an unauthorised bank account. Such use of the Domain Name does not confer on the Respondent rights or legitimate interests in the Domain Name.

Given the above, the Respondent has failed to invoke any circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in respect of the Domain Name. Thus, there is no evidence in the case file that refutes the Complainant’s submissions. The Panel concludes that the Complainant has also proved the requirement under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The third requirement the Complainant must prove is that the Domain Name has been registered and is being used in bad faith.

Bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark. See WIPO Overview 3.0, section 3.1.

Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include without limitation:

(i) circumstances indicating the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or

(ii) circumstances indicating that the domain name were registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, provided it is a pattern of such conduct; or

(iii) circumstances indicating that the domain name was registered primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the domain name has intentionally been used in an attempt to attract, for commercial gain, Internet users to a website or other on-line location, by creating a likelihood of confusion with a trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on a website or location.

As indicated above, the Complainant’s rights in the WÄRTSILÄ and WARTSILA trademarks predate the registration of the Domain Name. This Panel finds that the Respondent was or should have been aware of the Complainant’s trademarks at the time of registration of the Domain Name. This finding is supported by the fact that the Respondent has used the Domain Name to host email addresses designed to appear closely similar to the Complainant’s trademarks. Moreover, the use of names of the Complainant’s actual employees and the signature included in the email further confirms the Respondent’s knowledge of the Complainant’s business operations. Also, it has been proven to the Panel’s satisfaction that the Complainant’s WÄRTSILÄ and WARTSILA trademarks are well known and unique to the Complainant. Thus, the Respondent could not likely reasonably ignore the reputation of products and service the trademarks identify.

Furthermore, the Domain Name has been used in bad faith by the Respondent to carry out fraudulent activity and generate commercial gain by misleading customers of the Complainant and redirect payments to an account unrelated to the Complainant. Using the Complainant’s trademark in the Domain Name is undoubtedly aimed at giving credibility to the Respondent’s activity. This further creates an inference that the Respondent registered the Domain Name in bad faith. See also Conféderation Nationale du Crédit Mutuel, Crédit Industriel et Commercial v. Khodor Dimassi, WIPO Case No. D2016-1980.

Finally, the Complainant has submitted evidence demonstrating that the Respondent has a history of registering domain names in order to prevent trademark owners from reflecting their respective trademarks in corresponding domain names.

For the reasons discussed above, the Panel finds that the Complainant has proved the requirements under 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 Domain Name <wartsilq.com> be transferred to the Complainant.

Piotr Nowaczyk
Sole Panelist
Date: December 6, 2021