WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sutherland Products, Inc. v. Ethan W Dilley
Case No. D2021-3479
1. The Parties
The Complainant is Sutherland Products, Inc., United States of America (“United States”), represented by Wyatt Early Harris Wheeler LLP, United States.
The Respondent is Ethan W Dilley, United States.
2. The Domain Name and Registrar
The disputed domain name <charliesoaps.com> is registered with Name.com, Inc. (Name.com LLC) (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 20, 2021. On October 21, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 21, 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 October 22, 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 October 22, 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 October 27, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 16, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 22, 2021.
The Center appointed Kathryn Lee as the sole panelist in this matter on December 2, 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 manufacturer of a line of household and commercial cleaning products sold under the name “Charlie’s Soap”. The Complainant owns the trademark “Charlie’s Soap” registered in the United States in class 3 on August 5, 2008 (Reg. No. 3480303). The Complainant also owns and operates domain names <charliesoap.com> and <charliessoap.com> which were registered on March 4, 1997 and August 4, 2004, respectively.
The Respondent appears to be an individual with an address in the United States.
The disputed domain name was registered on August 10, 2021 and does not resolve to any active website.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar to the “Charlie’s Soap” trademark in which the Complainant has rights.
The Complainant also contends that the Respondent has no rights or legitimate interests in the disputed domain name, and confirms that it has not authorized or licensed rights to the Respondent in any respect.
Finally, the Complainant contends that the disputed domain name was registered and is used in bad faith. The Complainant explains that the Respondent sent an email from the disputed domain name to a customer of the Complainant pretending to be one of the Complainant’s employees, offering allegedly updated bank account information. The Complainant asserts that this is a fraudulent scheme by the Respondent to intercept money owed to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has demonstrated with supporting evidence that it has rights to the trademark “Charlie’s Soap”. As for the disputed domain name, it consists of the terms “charlie” and “soaps”, so the only difference is that the letter “s” from “charlie’s” is moved to “soap”, making the term plural. These are minor differences and the Complainant’s mark is still clearly recognizable within the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7 establishes that a domain name is considered confusingly similar to a trademark where it “incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name”.
For the reasons mentioned above, the Panel finds that the first element has been established.
B. Rights or Legitimate Interests
On the basis of the present record, the Panel finds that the Complainant has made the required allegations to support a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain name. Once such a prima facie case has been established, the burden of production shifts to the Respondent to demonstrate its rights or legitimate interests in the disputed domain name, with the burden of proof always remaining with the Complainant. However, the Respondent in this case has chosen to file no substantive Response to these assertions by the Complainant, and there is no evidence or allegation in the record that would warrant a finding in favor of the Respondent on this point.
Further, the Respondent used the disputed domain name in a phishing scheme, and use of a domain name for illegal activity can never confer rights or legitimate interests on the Respondent. See WIPO Overview 3.0, section 2.13.1.
For the reasons provided above, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and that the second element has been established.
C. Registered and Used in Bad Faith
The Panel finds that there is strong and clear evidence to find bad faith in this case.
The Respondent used the disputed domain name to perpetuate fraud by sending an email from the disputed domain name to a customer of the Complainant, attempting to divert payment owed to the Complainant to the Respondent’s own bank account. The email from the Respondent was disguised as an email from the Complainant’s employee. Using a domain name in a fraudulent activity is manifestly evidence of bad faith registration and use. See WIPO Overview 3.0, section 3.1.4 and section 3.4.
For the reasons given above, the Panel finds that the third element has been established.
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, <charliesoaps.com> be transferred to the Complainant.
Date: December 13, 2021