WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
SHV Nederland b.v. v. George McGuire
Case No. D2021-4224
1. The Parties
The Complainant is SHV Nederland B.V., Netherlands, represented by NautaDutilh N.V., Netherlands.
The Respondent is George McGuire, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name, <shvholdings.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 December 15, 2021. On December 16, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 16, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 20, 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 December 21, 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 December 22, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 11, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 12, 2022.
The Center appointed Tony Willoughby as the sole panelist in this matter on January 20, 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.
The invitation to the Complainant to file an amended Complaint stemmed from the fact that the Domain Name was registered in the name of a privacy service. In response to the Center’s registrar verification request, the Registrar disclosed the name and address of the entity in whose name the Domain Name is currently registered. The amended Complaint names the apparent underlying registrant as the Respondent.
4. Factual Background
The Complainant is a member company of the Dutch conglomerate group of companies headed by SHV Holdings N.V. and is responsible for inter alia the registration, maintenance and protection of key SHV intellectual property rights held by the group. Among those rights is Benelux Trade Mark Registration No. 27634 for SHV (figurative mark with word elements) registered on July 1, 1972 for a wide variety of goods in classes 1, 2, 3, 4, 6, 11, 16, 19, 20, 21, and 24. This mark comprises the device of a right angle triangle and the letters “shv”. The Complainant is a highly diversified company, with interests in transport, retail, oil, food, and financial services.
The Domain Name was registered on March 1, 2021, and is connected to a website, the home page of which features at top left what appears to be a close copy of the Complainant’s registered trade mark detailed above. The central text reads: “WELCOME TO SHV HOLDINGS GmbH - Top Branded Quality Medical Gloves and Syringes Supplier”. A copyright notice at the foot of the homepage reads: “Copyright © SHV Holdings”.
On April 16, 2021, the Complainant received an email from a Finnish law firm headed “Do you have a daughter-company in Germany?” and reading: “my law firm is doing due diligence on this business which has the same business name as yours – https://shvholdings.com/contact/ - in addition they use an almost identical logo on their website and fully identical logo on their letterhead, with the logo of your company. In addition they claim to have operations in the Netherlands. Is your company somehow connected to them?”
On April 28, 2021, that law firm followed up with a further email reading: “Hello, I am a Finnish attorney who is assisting a Finnish company who has received a sales and purchase agreement that has supposedly been sent by your company. According to the agreement that is signed by “sales manager [name redacted]”, your company is supposed to be selling nitrile examination gloves. Is this information correct? Do you operate within PPE-market? Do you have a Sales manager with that name? If yes, is he authorized to sign contract on behalf of your company? Due to large number of fake sellers and persons trying to misuse identity of real companies within the PPE-market, I would like to speak with your legal department or sales department. Could you ask them to contact me so that we can clarify if the offer that my client has received is real or not. The offer & agreement came from people who claim to operate your daughter company in Germany, as I have explained in my previous email (see below), which I unfortunately never received any answer for.”
On April 21, 2021, the Complainant received an email from a Turkish trading company asking the Complainant to verify its representative in Germany. The Turkish company attached the letter of Authorisation that it had received from the Respondent. This “authorisation” was dated August 14, 2019, and purported to emanate from the Complainant’s headquarters in the Netherlands. It was headed “Notice of Establishment and Commencement of Operation of Sales Subsidiary in Berlin Germany” and featured prominently the Complainant’s above mentioned registered trade mark. It was signed in the name of an individual unknown to the Complainant yet falsely claiming to be the Chief Executive Officer of the Complainant’s parent company.
On June 9, 2021, SHV Holding [sic]of an address in Berlin issued a “Sales and Purchase Contract” to a Japanese company for the supply of 200 million face masks priced at USD 364,000,000. The signature at the foot of the document purported to be the signature of a member of the Supervisory Board of the Complainant’s parent company. The signature was not the signature of the individual in question. The Complainant has reported the identity theft to the police.
On June 15, 2021, SHV Holding issued a Pro Forma Invoice to the same Japanese company for 200 million face masks priced at USD 344,000,000 [sic]. The invoice sought payment in two tranches, one to a bank account in New York, United Sates and the other to a bank account in Florida, United States.
On June 14, 2021, the Complainant received an email from a Dutch commercial investigation company investigating the Respondent in advance of placing a trap order for disposable tuberculin syringes. The company had already received a quote from someone purporting to be the same member of the Supervisory Board of the Complainant’s parent company referred to above.
On June 21, 2021, the Complainant received an email from an Indian company conducting due diligence into the Respondent having received a gloves and mask proposal from the Respondent in the name of the sales manager referred to above in the correspondence with the Finnish law firm.
On July 2, 2021, the Complainant received an email from a German company “active in the fields of the brokerage/sale and purchase of personal protective equipment”. The company sought verification as to the authenticity of documentation issued in the name of the member of the Supervisory Board of the Complainant’s parent company referred to above. On July 4, 2021, the correspondent followed up with a further email stating that he was in possession of a copy of the passport of the Supervisory Board member. A copy of the passport is annexed to the Complaint (Annex 25). The Panel accepts as fact the Complainant’s assertion that the passport is fake and that the picture in the passport is not a picture of the individual concerned. The Complainant has reported the identity theft to the police.
On August 23, 2021, the Complainant received an email from an American company enquiring as to the authenticity of a batch of “Ansell Micro Touch Micro thin Nitrile Gloves” said to have been acquired in a sales agreement with the Respondent. On having been informed by the Complainant that the Complainant has no offices in Germany and had nothing to do with the gloves in question, the enquirer responded: “This is very disappointing indeed! You should contact these people and report them for falsely representing themselves as SHV. They are attempting to create fraud to the value of USD 221,000,000. Whomever they manage to defraud will end up attempting to take legal action against you if they can not find these fraudsters.”
5. Parties’ Contentions
The Complainant contends that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights; that the Respondent has no rights or legitimate interests in respect of the Domain Name; and that the Domain Name has been registered and is being used in bad faith.
The essence of the Complainant’s case is that the Respondent is a fraudster and has set out to commit fraud on the back of the reputation and goodwill associated with the Complainant’s SHV trade mark.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights: and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name: and
(iii) the Domain Name has been registered and is being used in bad faith.
B. Identical or Confusingly Similar
The Domain Name comprises the letters “shv” followed by the word “holdings” and the “.com” generic Top-Level Domain identifier.
Section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) explains the test for identity or confusing similarity under the first element of the Policy and includes the following passage:
“While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.”
The trade mark upon which the Complainant relies is a figurative mark comprising a device of a triangle and the letter “shv”. The letters “shv” are the predominant element of the trade mark. That element is readily recognisable in the Domain Name. The addition of the word “holding” does not prevent a finding of confusing similarity. The Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights.
C. Rights or Legitimate Interests
This, the second element of the Policy (paragraph 4(a)(ii)), essentially calls for a complainant to prove a negative, which is far from easy where the relevant information as to the respondent’s rights or legitimate interests is often primarily within the knowledge of the respondent. The matter is addressed in section 2.1 of WIPO Overview 3.0 as follows:
“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
This is not such a case. The facts as set out in section 4 above leave no room for doubt. The facts speak for themselves:
1. The Respondent adopted the business name, “SHV Holdings GmbH”, to enable him to represent falsely to others that his company was a German subsidiary of the Complainant’s parent company.
2. Searches conducted by the Complainant and others at the German Trade Registry failed to disclose the registration of any such company.
3. The Respondent registered the Domain Name, a name substantially identical to the name of the Complainant’s parent company, in order to facilitate his fraudulent intent, using it to connect to a fraudulent website and for email addresses used in his fraudulent communications.
4. The Respondent created a number of fraudulent documents to support his fraudulent scheme, which involved planned transactions running into hundreds of millions of USD, including a fake passport falsely purporting to be the passport of an innocent member of the Supervisory Board of the Complainant’s parent company, somebody who had no connection with the Respondent’s scheme.
On no basis could such activity give rise to rights or legitimate interests in respect of the Domain Name in the hands of the Respondent.
D. Registered and Used in Bad Faith
By the same reasoning the Panel finds that the Domain Name has been registered and is being used in bad faith within the meaning of 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 Domain Name <shvholdings.com> be transferred to the Complainant.
Date: January 26, 2022