WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Wastequip, LLC v. Withheld for Privacy Purposes, Privacy Service Provided by Withheld for Privacy ehf / charity 222
Case No. D2021-3715
1. The Parties
The Complainant is Wastequip, LLC, United States of America (“United States”), represented by Nelson Mullins Riley & Scarborough, LLP, United States.
The Respondent is Withheld for Privacy Purposes, Privacy Service Provided by Withheld for Privacy ehf, Iceland / charity 222, United States.
2. The Domain Name and Registrar
The disputed domain name <vvastequip.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 November 5, 2021. On November 5, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 9, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name that differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 12, 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 16, 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 22, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 12, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 14, 2021.
The Center appointed A. Justin Ourso III as the sole panelist in this matter on December 29, 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, Wastequip, LLC, is an American manufacturer of waste handling equipment for the North American markets that also supplies repair and other services for the products that it sells. Prior to changing its name, the Complainant obtained its earliest trademark registration, for the Complainant’s WASTEQUIP trademark, in the United States on December 6, 1994, with Registration No. 1866044, used on custom-manufactured waste handling equipment. The Complainant also owns other registrations for this mark in Mexico, the United States, and Canada, which it obtained in 2013 and 2015, for waste handling equipment. The Complainant registered the <wastequip.com> domain name on January 21, 1997, which resolves to a web site that the Complainant operate, where it markets its goods and services.
The Respondent registered the Domain Name, <vvastequip.com>, on September 27, 2021, using a privacy service. Shortly before the Complaint was filed, the Domain Name resolved to a pay-per-click (“PPC”) site. The Complainant has provided documentation showing the Domain Name has been used by the Respondent in order to create an email address “[…]@vvastequip.com” (using the letter “v” twice in place of a “w”) from which the Respondent sends emails purporting to be official emails from the Complainant.
5. Parties’ Contentions
In addition to facts set forth in the Factual Background in Part 4, regarding the element of confusing similarity with a mark in which it has rights, the Complainant contends that has common law and statutory rights in its WASTEQUIP trademark, including its United States registrations, which are incontestable; its trademark and the Domain Name are confusingly similar; and the Domain Name consists of its trademark with the exception of the intentional misspelling of the initial letter, “w,” by replacing it with two letters “v,” i.e., “vv.”
Regarding the element that the Respondent has no rights or legitimate interests in the Domain Name, the Complainant contends that the Respondent is not commonly known by the Domain Name; it has not licensed or otherwise authorized the Respondent to use the Domain Name; the Respondent has not made a bona fide use of the Domain Name; the Respondent used the Domain Name immediately after its registration for an illegal activity, namely, a “business email compromise” attack, attempting to have the Complainant’s customer direct payment of an invoice to the Respondent’s bank account, instead of to the Complainant; the Respondent has used the Domain Name to resolve to a PPC web site, which is a commercial use, but not a bona fide use; and the Domain Name is not a “dictionary” word.
Regarding the element of registration and use of the Domain Name in bad faith, the Complainant contends that, on the same day that the Respondent registered the Domain Name, the Respondent posed as one of the Complainant’s employees and attempted to provide false and fraudulent information about changes to the Complainant’s bank account information for the payment of invoices; the Respondent knew of the Complainant when it registered the Domain Name and intentionally targeted the Complainant with bad faith intent to cause confusion by intentionally misspelling the Complainant’s trademark and impersonating an employee of the Complainant.
The Complainant requested transfer of the Domain Name.
The Respondent did not submit a response to the Complaint.
6. Discussion and Findings
A. The Effect of the Respondent’s Default
The Respondent has not responded to the Complaint. If a respondent does not submit a response, a panel decides the dispute based upon the complaint. Rules, paragraphs 5(f) and 14(a). Panels decide a complaint on the basis of the statements and documents submitted. Rules, paragraph 15(a).
The Respondent’s default, i.e., the Respondent’s failure to submit a response to the Complaint, does not mean that the Complainant necessarily prevails. Because the Complainant has the burden of proof, Policy, paragraph 4(a), notwithstanding the Respondent’s default, the Complainant must prove the elements of a claim to obtain the requested relief. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.3.
In the absence of exceptional circumstances, a respondent’s failure to respond to the Complaint requires that a panel draw the inferences from this failure that it considers proper. Rules, paragraph 14(b). The Panel finds that no exceptional circumstances exist for the failure of the Respondent to submit a response. Accordingly, the Panel infers that the Respondent does not deny the facts alleged and the contentions urged by the Complainant based upon these facts, and will draw all reasonable inferences that are proper from the evidence and the facts found by the Panel. Id.; and Callery, LLC v. Jay Logs, Jaylogss, WIPO Case No. D2019-0693.
Although the Panel may draw negative inferences from the Respondent’s default, the Complainant may not rely on conclusory allegations and must support its allegations with evidence to prove the three elements and prevail. WIPO Overview 3.0, section 4.3; and Callery, LLC v. Jay Logs, Jaylogss, supra.
B. Elements of a Claim
The Complainant must prove the following three elements to obtain the requested relief: (i) the Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in the Domain Name; and (iii) the Respondent registered and is using the Domain Name in bad faith. Policy, paragraph 4(a).
(i) Domain Name Identical or Confusingly Similar to the Complainant’s Trademark
To prove the first element, the Complainant must prove that (1) it has rights in a trademark, and (2) the Domain Name is identical or confusingly similar to this trademark. Policy, paragraph 4(a)(i).
The Panel finds that the Complainant’s trademark registrations in the United States, Mexico, and Canada establish the Complainant’s trademark rights in its WASTEQUIP mark. WIPO Overview 3.0, section 1.2.1.
Panels typically decide identity or confusing similarity with a side-by-side comparison of the domain name and the textual elements in the trademark, including an aural and phonetic comparison. WIPO Overview 3.0, section 1.7. In doing so, unless it contributes to confusing similarity, panels generally disregard the generic Top-Level Domain (“gTLD”) “.com.” WIPO Overview 3.0, section 1.11.
The jurisprudence under the Policy considers a domain name that consists of a common misspelling of a trademark to be confusingly similar to the mark for purposes of the first element. WIPO Overview 3.0, section 1.9; Callery, LLC v. Jay Logs, Jaylogss, supra (addition of a third lower case letter “L” in “CALLERY”); and PVH CORP. v. Super Privacy Service LTD c/o Dynadot, WIPO Case No. D2018-1013 (transposition of two letters, “VANHUESEN” instead of “VANHEUSEN”). Here, the Domain Name is identical to the WASTEQUIP trademark, except that a first letter “v” is followed by a second letter “v,” which two initial letters in the Domain Name replace the initial letter “w” in the trademark (and the Complainant’s domain name), thus the Domain Name <vvastequip.com>, mimicking the Complainant’s domain name <wastequip.com>.
To the casual reader of an email, the Domain Name may appear identical to the trademark. At a minimum, the Panel finds that the Domain Name is confusingly similar to the trademark. Accordingly, the Panel concludes that the Complainant has proven the first element, namely, that the Domain Name is confusingly similar to a trademark in which it has rights.
(ii) Rights or Legitimate Interests in the Domain Name
The Policy provides a non-exclusive list of circumstances that, if a panel finds proved, demonstrates that a respondent has rights to, or legitimate interests in, a domain name for the purposes of paragraph 4(a)(ii) of the Policy: (i) before any notice to the respondent of the dispute, its use of, or demonstrable 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; or (ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or (iii) the respondent 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. Policy, paragraph 4(c).
The Panel finds, on the basis of the Complainant’s trademark registrations and the date of the Domain Name registration, that the Complainant’s trademark rights precede the registration of the Domain Name.
The Complainant has alleged that it has not authorized the Respondent to use its trademark. Because the Respondent has not contested these allegations and the Complainant has certified that the information in the Complaint is complete and accurate, the Panel accepts these allegations as proven for the purposes of the Policy. Rules, paragraph 14(b) and 10(d); WIPO Overview 3.0, section 4.3.
Additionally, the Respondent has not claimed that (1) it is using, or has made any preparations to use, the Domain Name in connection with a bona fide offering of goods or services; or (2) it is commonly known by the Domain Name; or (3) it is making a noncommercial or fair use of the Domain Name. For the reasons set forth in this paragraph and the preceding paragraph, the Panel finds that the Complainant has shown, prima facie, the second element––that the Respondent lacks rights or legitimate interests in the Domain Name.
Where a complainant shows prima facie that a respondent lacks rights or legitimate interests, the burden of production on this second element shifts to the respondent to come forward with relevant evidence proving rights or legitimate interests in the domain name. WIPO Overview 3.0, section 2.1. The Respondent here has not submitted any evidence to rebut the prima facie showing. If a respondent fails to come forward with relevant evidence to rebut the prima facie showing, a complainant is deemed to have proven that the respondent has no rights or legitimate interests in the domain name, satisfying the second element. Id.; and Callery, LLC v. Jay Logs, Jaylogss, supra.
Accordingly, the Panel concludes that the Complainant has proven the second element, namely, that the Respondent lacks rights or legitimate interests in the Domain Name.
The Complainant has also alleged, in support of its contention that the Respondent lacks rights or legitimate interests in the Domain Name, an intentional misspelling of its trademark in the Domain Name and that the Respondent registered and is using the Domain Name to facilitate impersonating its employees in a fraudulent email scheme to mislead its customers to make payments to the Respondent. Because the Panel has already found that the Complainant has proven the second element, the Panel will defer a discussion of this alleged scheme to section 6(B)(iii) below. WIPO Overview 3.0, section 2.15.
(iii) Registered and Used in Bad Faith
The Policy provides that the following circumstance is “evidence of the registration and use of a domain name in bad faith: [...] (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor.” Policy, paragraph 4(b)(iii). Because the scenarios enumerated in paragraph 4(b) of the Policy are without limitation, panels have applied the concept of a “competitor” beyond an ordinary business competitor, to include “a person who acts in opposition to another” for commercial gain. WIPO Overview 3.0, section 3.1.3.
The Complainant’s evidence of the alleged “business email compromise” scheme by the Respondent is its Annex 8, which consists of an email thread beginning on September 27, 2021, continuing through an email sent on October 18, 2021.
Panels have consistently found that clear typosquatting is sufficient to support an inference of bad faith, shifting the burden to the Respondent to offer evidence rebutting the inference. Callery, LLC v. Jay Logs, Jaylogss, supra. Here, we have a Domain Name with a suspicious spelling and an allegation that this spelling is an intentional misspelling of the Complainant’s trademark. The spelling of the Domain Name, therefore, demands an explanation from the Respondent. The Respondent has not explained its highly unusual domain name, which happens to be, visually, virtually identical to the Complainant’s trademark. Panels have found the lack of an explanation coupled with an absence of rights or legitimate interests to be a factor tending to show bad faith. WIPO Overview 3.0, section 3.2.1. Additionally, the implausibility of any good faith use for the Domain Name supports a finding of bad faith registration and use. WIPO Overview 3.0, section 3.3. Because the Respondent has not offered an explanation for the misspelling of the Complainant’s trademark, and the Panel cannot conceive of one, the Panel finds that the misspelling demonstrates that the Respondent (1) was aware of the Complainant’s trademark when it registered the Domain Name; (2) chose the Domain Name deliberately; (3) engaged in bad faith use; and (4) was in bad faith at the time of the registration of the Domain Name. Callery, LLC v. Jay Logs, Jaylogss, supra.
Additionally, although the Complainant’s email evidence may have lacked some particularity and completeness necessary to conclusively prove fraud, it was sufficient to show that the Respondent used the Domain Name to impersonate the Complainant’s employees, particularly because the Respondent used it in emails in conjunction with links to the Complainant’s web site, and not links to the Respondent’s web site. The findings in the preceding paragraph, together with this impersonation, compel the Panel to find that the Respondent (1) intentionally registered the Domain Name in bad faith to impersonate the Complainant’s employees; (2) used it in bad faith to impersonate, taking unfair advantage of the Complainant’s trademark; and (3) attempted to mislead the Complainant’s customers, disrupting its business in violation of the Policy, paragraph 4(b)(iii). WIPO Overview 3.0, sections 2.13.1, 3.1 and 3.4; Callery, LLC v. Jay Logs, Jaylogss, supra.
Moreover, it is common knowledge that owners of web sites customarily use email addresses containing the domain name of a web site in electronic mail communications. The use of a confusingly similar domain name in emails that do not originate with a complainant presents a risk to the reputation of a complainant’s trademark and a complainant. Id. Even if the Complainant had not provided any evidence that the Respondent engaged in this practice, the Respondent has not rebutted that it engages in this practice. Moreover, the risk of other deceptive or abusive emails, whether related to payments or not, is substantial, especially given the finding that the Respondent has already engaged in the deceptive conduct of intentional misspelling and impersonation. Id. Accordingly, the Panel finds that the substantial risk of future deceptive emails associated with the Domain Name is another reasonable basis, in the circumstances of the misspelling and impersonation already found, from which to infer bad faith use and that the Respondent’s bad faith existed at the time of its registration of the Domain Name.
Accordingly, the Panel concludes that the Complainant has proven the third element, namely, that the Respondent registered and has used the Domain Name in bad faith.
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, <vvastequip.com>, be transferred to the Complainant.
A. Justin Ourso III
Date: January 12, 2022