WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Budweg Caliper A/S v. Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf / Name Redacted

Case No. D2021-3873

1. The Parties

Complainant is Budweg Caliper A/S, Denmark, represented by Rightly Law Firm, Denmark.

Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland / Name Redacted.¹

2. The Domain Name and Registrar

The disputed domain name <budwegs.com> 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 19, 2021. On November 19, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 19, 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 Complainant on November 26, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on December 1, 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 Respondent of the Complaint, and the proceedings commenced on December 2, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 22, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 27, 2021.

On December 5, 2021, the Center received a third party communication regarding an apparent identity theft associated with the registration of the disputed domain name.

The Center appointed Stephanie G. Hartung as the sole panelist in this matter on January 11, 2022. 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

Complainant is a company organized under the laws of Denmark that is active in the brake calipers industry, delivering its products to 30 different markets in the European Union.

Complainant has provided evidence that it is the registered owner of numerous trademarks relating to its company name and brand BUDWEG, inter alia, the following:

- Word Mark BUDWEG, European Union Intellectual Property Office (“EUIPO”), registration number: 018081693, registration date: November 13, 2019, status active;

- Word Mark BUDWEG, International Registration (IR) designating and protected in, inter alia, the United Kingdom, registration number: 1518058, registration date: October 28, 2019, status active.

Moreover, Complainant has evidenced to own the domain name <budweg.com>, which resolves to Complainant’s official website at “www.budweg.com”, used to promote Complainant’s products and related services in the brake calipers industry.

Respondent, according to the disclosed WhoIs information for the disputed domain name, registered the disputed domain name on August 27, 2021. By the time of the rendering of this decision, the disputed domain name does not resolve to any active content on the Internet, and according to the case file apparently has never done so in the past either.

As early as October 18, 2021, Respondent sent fraudulent emails under the disputed domain name, thereby impersonating multiple of Complainant’s sellers to Complainant’s own suppliers and directing them to an order email address set up under the disputed domain name; the email signature displays, inter alia, Complainant’s BUDWEG trademark and Complainant’s official website URL “www.budweg.com”.

On December 5, 2021, the Center received an email communication by a third party indicating that they had nothing to do with this case but that apparently someone was using their company name in a slightly different manner, thus committing an identity theft.

Complainant requests that the disputed domain name be transferred to Complainant.

5. Parties’ Contentions

A. Complainant

Complainant contends to have been founded back in 1978 being nowadays one of the leading suppliers of brake calipers in the independent aftermarket with one of the most modern factories in Europe guaranteeing outstanding brake technology and high-end quality products.

Complainant submits that the disputed domain name is confusingly similar to Complainant’s BUDWEG trademark, as it fully incorporates the latter simply adding the common plural signifier “s”, which does not impart any significant difference to the disputed domain name to distinguish it from Complainant’s BUDWEG trademark. Moreover, Complainant asserts that Respondent has no rights or legitimate interests in respect of the disputed domain name since: (1) Complainant has not licensed or otherwise permitted Respondent to use Complainant’s BUDWEG trademark or to apply for any domain name incorporating it; (2) using the disputed domain name for a phishing scheme by sending phishing emails and thus posing as one of Complainant’s own sellers and seeking to buy suppliers’ products in the name of Complainant may not confer rights or legitimate interests. Finally, Complainant argues that Respondent has registered and is using the disputed domain name in bad faith since: (1) by sending emails form the disputed domain name impersonating one of Complainant’s seller’s, thereby using Complainant’s BUDWEG trademark correctly spelled and the URL for Complainant’s own website, it is clear that Respondent intended the disputed domain name to be confused with Complainant’s BUDWEG trademark; and (2) using the disputed domain name only for a phishing email scam constitutes bad faith, even if the disputed domain name is not as well used for an active website.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and

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

Respondent's default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(f) of the Rules provides that if Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute solely based upon the Complaint. Further, according to paragraph 14(b) of the Rules, the Panel may draw such inferences from Respondent's failure to submit a Response as it considers appropriate.

A. Identical or Confusingly Similar

The Panel concludes that the disputed domain name is confusingly similar to the BUDWEG trademark in which Complainant has rights.

The disputed domain name incorporates Complainant’s BUDWEG trademark in its entirety with a simple misspelling caused by adding the letter “s”, which constitutes the common plural signifier. Numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that the disputed domain name is at least confusingly similar to a registered trademark (see e.g., PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS), WIPO Case No. D2003-0696). The fact that the disputed domain name also includes the letter “s”, which leads to a misspelling of Complainant’s BUDWEG trademark, does not prevent a finding of confusing similarity. Misspelled or typosquatted domain names are, on the contrary, intended to be confusing so that Internet users, who unwittingly make common type errors, will enter the typosquatted domain name instead of the correct spelled trademark (see, e.g., National Association of Professional Baseball Leagues, Inc., d/b/a Minor League Baseball v. John Zuccarini, WIPO Case No. D2002-1011).

Therefore, Complainant has established the first element under the Policy as set forth by paragraph 4(a)(i).

B. Rights or Legitimate Interests

The Panel is further convinced on the basis of Complainant’s undisputed contentions that Respondent has not made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, nor can it be found that Respondent has made a legitimate noncommercial or fair use thereof without intent for commercial gain.

Respondent obviously has not been authorized to use Complainant’s BUDWEG trademark, either as a domain name or in any other way. Also, there is no reason to believe that Respondent’s name somehow corresponds with the disputed domain name and Respondent does not appear to have any trademark rights associated with the term “budweg” on its own. On the contrary, Respondent appears to have sent fraudulent emails under the disputed domain name, thereby impersonating multiple of Complainant’s sellers to Complainant’s own suppliers and directing them to an order email address set up under the disputed domain name; the email signature displays, inter alia, Complainant’s BUDWEG trademark and Complainant’s official website URL “www.budweg.com”. Such use of the disputed domain name obviously neither qualifies as bona fide nor as legitimate noncommercial or fair within the meaning of the Policy.

Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in respect of the disputed domain name. Now, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating to the contrary (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1). Given that Respondent has defaulted, it has not met that burden.

Therefore, the Panel finds that Complainant has also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy.

C. Registered and Used in Bad Faith

The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith.

The circumstances to this case leave no doubt that Respondent was fully aware of Complainant’s rights in the BUGWEG trademark when registering the typosquatted disputed domain name and that the latter clearly is directed to such trademark. Moreover, using the disputed domain name for phishing activities by sending fraudulent emails under the disputed domain name, thereby impersonating multiple of Complainant’s sellers to Complainant’s own suppliers and directing them to an order email address set up under the disputed domain name, while the email signature displays, inter alia, Complainant’s BUDWEG trademark and Complainant’s official website URL “www.budweg.com”, is a clear indication that Respondent intentionally attempted to attract, for commercial gain, Internet users to its own email communication by creating a likelihood of confusing with Complainant’s BUDWEG trademark as to the source, sponsorship, affiliation, or endorsement of Respondent’s email. Such circumstances are evidence of registration and use of the disputed domain name in bad faith within the larger meaning of paragraph 4(b)(iv) of the Policy.

In connect with this finding, the Panel has also recognized that Respondent seems to have used the name and contact information of a third party when registering the disputed domain name, thus has committed an identity theft, which at least supports the Panel’s finding of Respondent acting in bad faith.

Therefore, the Panel holds that Complainant has also satisfied the third element under the Policy as set forth by paragraph 4(a)(iii).

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 <budwegs.com> be transferred to Complainant.

Stephanie G. Hartung
Sole Panelist
Date: January 24, 2022

¹ Respondent appears to have used the name of a third party when registering the disputed domain name. In light of the potential identity theft, the Panel has redacted Respondent’s name from this decision. However, the Panel has attached as Annex 1 to this decision an instruction to the Registrar regarding transfer of the disputed domain name, which includes the name of Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this decision shall not be published due to the exceptional circumstances of this case. See Banco Bradesco S.A. v. FAST‑12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788.