WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Infratil Limited v. Domain Administrator, See PrivacyGuardian.Org / Bitrst Limited
Case No. D2021-3973
1. The Parties
Complainant is Infratil Limited, New Zealand, represented by AJ Park Law Limited, New Zealand.
Respondent is Domain Administrator, See PrivacyGuardian.Org, United States of America / Bitrst Limited, Nigeria.
2. The Domain Name and Registrar
The disputed domain name <infratilinvestments.com> (the “disputed domain name”) is registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 29, 2021. On November 29, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 29, 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 30, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on November 30, 2021.
The Center verified that the Complaint, together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on December 8, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 28, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 30, 2021.
The Center appointed Lorelei Ritchie as the sole panelist in this matter on January 18, 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 multinational investment company, based in New Zealand. Since at least 1997, Complainant has provided energy, transport, and other infrastructure services under the mark INFRATIL. Complainant has several registered trademarks for its INFRATIL mark in various jurisdictions. These include, among others, New Zealand Registration No. 269250 (registered May 22, 1997), and Australia Registration No. 740714 (registered August 4, 1997).
Complainant owns the registration for domain names that incorporate its INFRATIL mark. These include <infratil.com> (registered June 24, 1997). Complainant uses the URL associated with this domain name to inform customers about its INFRATIL mark and its various investment and related services.
The disputed domain name appears to have been registered on June 22, 2021. Respondent has no affiliation with Complainant. Respondent has used the URL associated with the disputed domain name to resolve to a webpage that appears to mimic an official website of Complainant, listing contact information identical to that of Complainant, and inviting consumers to provide contact information via links.
5. Parties’ Contentions
Complainant contends that the (i) disputed domain name is identical or confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the disputed domain name; and (iii) Respondent registered and is using the disputed domain name in bad faith.
In particular, Complainant contends that it owns the distinctive and well-known mark, INFRATIL, which has an international reputation, recognized by global media, including Reuters. Complainant contends that Respondent has merely added to Complainant’s INFRATIL mark the dictionary word “investments,” which is likely to confuse prospective online consumers into thinking that the disputed domain name is affiliated with, or endorsed by Complainant.
Complainant further contends that Respondent has used the disputed domain name to set up a webpage with “nefarious content,” meant to lure in customers looking for Complainant, including with the use of false contact information. Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name. Rather, Complainant contends that Respondent has acted in bad faith in setting up a website, when Respondent clearly knew of Complainant’s rights. Accordingly, Complainant requests that the registration for the disputed domain name be cancelled.
Respondent did not file a reply to Complainant’s contentions in this proceeding.
6. Discussion and Findings
A. Identical or Confusingly Similar
This Panel must first determine whether the disputed domain name <infratilinvestments.com> is identical or confusingly similar to a trademark or service mark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. The Panel finds that it is. The disputed domain name directly incorporates Complainant’s registered trademark INFRATIL and merely adds the dictionary word “investments.”
Numerous UDRP panels have agreed that where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not would not prevent a finding of confusing similarity for purposes of satisfying this first prong of paragraph 4(a)(i) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8.
The Panel therefore finds that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Policy provides some guidance to respondents on how to demonstrate rights or legitimate interests in the disputed domain name in a UDRP dispute. For example, paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that Respondent has been “commonly known by the domain name”; or (iii) “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”.
Respondent did not submit a reply to the Complaint, however. Rather, as mentioned in Section 4 of this Panel’s decision, Respondent has used the disputed domain name to divert Internet users to a webpage that appears to mimic Complainant’s website but which is unaffiliated with Complainant or Complainant’s products and services. Accordingly, the Panel finds that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in the disputed domain name, which Respondent has not rebutted.
C. Registered and Used in Bad Faith
There are several ways that a complainant can demonstrate that a domain name was registered and used in bad faith. For example, paragraph 4(b)(iv) of the Policy states that bad faith can be shown where “by using the domain name [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] website or location or of a product or service on [the] web site or location”. As noted in Section 4 of this Panel’s decision, Respondent has set up a URL associated with the disputed domain name to resolve to a website that appears to mimic an official website of Complainant, and which attempts to confuse consumers by displaying Complainant’s mark and by listing contact information identical to that of Complainant. Respondent is thus trading on the goodwill of Complainant’s trademarks to attract Internet users, presumably for Respondent’s own commercial gain.
Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy.
For all 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 <infratilinvestments.com> be cancelled.
Dated: January 28, 2022