WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dewberry Engineers Inc. v. loyd alvin
Case No. D2021-3596
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 loyd alvin, United States.
2. The Domain Name and Registrar
The disputed domain name <dewsberry.org> 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 October 28, 2021. On October 29, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 30, 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 November 5, 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 November 7, 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 November 8, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 28, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 30, 2021.
The Center appointed William F. Hamilton as the sole panelist in this matter on December 6, 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 that has more than fifty locations in the United States.
The Complainant is the owner of United States Patent and Trademark Office Registration No. 2,991,043 for the mark DEWBERRY (the “Mark”), registered in September 6, 2005.
Complainant is also the owner of the domain name <dewberry.com>.
The disputed domain name was registered on October 4, 2021. The disputed domain name does not resolve to an active website.
5. Parties’ Contentions
The Complainant asserts the disputed domain name is confusingly similar to the Mark because the disputed domain name is created by inserting the letter “s” between the Mark elements “dew” and “berry.” The Complainant further asserts the Respondent has no legitimate rights or interests in the Mark or the disputed domain name as there is no evidence of any legitimate business activity of the Respondent utilizing the Mark prior to registration and use of the disputed domain name. Further, the Complainant asserts that the Complainant has not authorized the use of the Mark by the Respondent. The Complainant also asserts the disputed domain name was registered and used in bad faith as part of fraudulent scheme to obtain money from Complainant’s customers.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s Mark.
The disputed domain name is composed by placing the letter “s” in the middle of the Complainant’s Mark. A domain name which wholly incorporates a complainant’s mark or prominent and distinctive portions thereof, is sufficient to establish confusingly similarity for the purposes of the Policy irrespective of any added terms. See Nokia Corporation v. Nokiagirls.com a.k.a. IBCC, WIPO Case No. D2000-0102. Accordingly, the presence of the letter “s” placed in the middle in the disputed domain name, which is easy to overlook, does not avoid a finding of confusing similarity. The visual impact of the added the letter “s” in negligible and unlikely to attract notice. See generally WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8 (“where the relevant trademark is recognizable with the disputed domain name, the additions of other terms (whether descriptive, geographic, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”).
The Top-Level Domain (“TLD”) of the disputed domain name, in this case “.org”, may be disregarded for the purposes of assessment under the first element, as the TLD is viewed as a standard registration requirement. See WIPO Overview 3.0, section 1.11.1; see also Monster Energy Company, a Delaware Corporation v. J.H.M. den Ouden, WIPO Case No. D2016-1759; Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd, WIPO Case No. D2006-0762.
The Complainant has met its burden under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has specifically disavowed providing the Respondent with permission to use the disputed domain name or the Mark. There is no evidence that the Respondent has conducted any bona fide business under the disputed domain name or is commonly known by the disputed domain name. The Complainant has established a prima facie case in its favor, which shifts the burden of production on this point to the Respondent. See PepsiCo, Inc v. Amilcar Perez Lista d/b/a Cybersor, WIPO Case No. D2003-0174. The Respondent, however, has failed to come forth with any evidence showing any rights or legitimate interests in the disputed domain name or to contest the Complainant’s allegations that the disputed domain name was utilized in a scheme to defraud Complainant’s customers.
Moreover, the use of the disputed domain name to facilitate a scheme to defraud Complainant’s clients does not establish any rights or legitimate interests of the Respondent.
The Complainant has met its burden under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Under paragraph 4(b) of the Policy, bad faith may be established by any one of the following non-exhaustive scenarios:
(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 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has 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 the respondent’s website or location or of a product or service on the respondent’s website or location.
The Panel finds the disputed domain name was registered and is being used in bad faith.
The disputed domain name incorporates the Mark entirely except for an inconspicuously placed letter “s” between the Mark elements “dew” and “berry” with the obvious intent by the Respondent of suggesting affiliation or sponsorship with the Complainant. It is inconceivable the Respondent was not aware of the Complainant’s business or the Mark when registering the disputed domain name.
Use of a domain name to perpetrate fraud constitutes clear evidence of bad faith. However, the Panel notes that no evidence has been put forward to substantiate the Complainant’s claims that the Respondent used the disputed domain name to facilitate a scheme to fraudulently obtain money from the Complainant’s customers. While the Complainant’s claims, and the silence of the Respondent towards these claims, tends to suggest bad faith, the Panel need not come to a final determination on this matter.
Here, the non-use of the disputed domain name does not prevent a finding of bad faith. See WIPO Overview 3.0, section 3.3. In this regard, the Panel notes the degree of distinctiveness of the Mark, the failure of the Respondent to submit a response or to provide any evidence of actual or contemplated good faith use, and the implausibility of any good faith use to which the domain name may be put.
The Complainant has met its burden under paragraph 4(a)(iii) 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 <dewsberry.org> be transferred to the Complainant.
William F. Hamilton
Date: December 20, 2021