WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Akzo Nobel N.V. v. Privacy Service Provided by Withheld for Privacy ehf / jennifer alonso, jennyart
Case No. D2021-4244
1. The Parties
The Complainant is Akzo Nobel N.V., Netherlands, internally represented.
The Respondent is Privacy Service Provided by Withheld for Privacy ehf, Iceland / jennifer alonso, jennyart, Canada.
2. The Domain Name and Registrar
The disputed domain name <akz0nobel.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 December 16, 2021. On December 16, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 16, 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 December 20, 2022 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 amendment to the Complaint on December 21, 2022.
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 the Respondent of the Complaint, and the proceedings commenced on December 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 12, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 18, 2022. On the same date, the Center received an email communication from the Respondent. The proceeding was suspended on January 31, 2022, and reinstituted on February 22, 2022.
The Center appointed John Swinson as the sole panelist in this matter on February 25, 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
The Complainant is global paints and coatings company headquartered in Amsterdam, Netherlands. The Complainant was incorporated under the name Akzo Nobel N.V in 1911.
The Complainant owns trademark registrations for AKZONOBEL including Benelux trademark registration number 849141 registered in 2008.
The Complainant is also the registered owner of the domain name <akzonobel.com>. A website has been operating at this domain name since September 4, 1995.
The disputed domain name was registered on November 22, 2021.
At the present time, the disputed domain name does not resolve to an active website.
The Respondent did not file a Response, so little is known about the Respondent.
5. Parties’ Contentions
In summary, the Complainant made the following submissions:
The Complainant is a leading global paints and coatings company. Headquartered in Amsterdam, the Netherlands, the Complainant, its affiliates and subsidiaries, have an ever-growing international presence and consumer recognition worldwide.
The Complainant is the registered proprietor of the trademark AKZONOBEL. The goodwill and reputation that the Complainant has built up in its brands internationally is reflected in the depth of its trademark protection for, inter alia, its AKZONOBEL trademarks.
The disputed domain name registered by the Respondent is identical to the Complainant’s registered trademarks, company names and domain name. The Respondent has merely replaced the first “o” letter with a the number “0”. Upon comparing the trademark and the disputed domain name, they look identical given the relevant public would overlook the number “0” as a spelling mistake.
The Complainant is the registered proprietor of the trademark AKZONOBEL, which is highly similar to the disputed domain name. The Complainant has historic and consistent use of AKZONOBEL as if evident by its trademark registrations, active domain name and website and various company names. The Respondent thus has no bona fide reason or evidence in support to the contrary and it must be concluded the Respondent had no fair intention when registering the disputed domain name.
The Complainant was made aware on November 29, 2021 that the Respondent had approached several of the Complainant’s affiliated companies and had sent fraudulent invoices from the email address tied to this domain name falsely claiming to be, or otherwise associated to, the Complainant.
The Respondent is deliberately misleading the Complainant’s affiliates into believing the disputed domain name is somehow the Complainant, or worse that the disputed domain name is the genuine website of the Complainant, by providing an invoice with different payment details for financial gain
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The onus of proving these elements is on the Complainant even though the Respondent failed to submit a Response.
Paragraph 15(a) of the Rules directs the Panel to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.
A. Identical or Confusingly Similar
The first element of the Policy requires the Complainant to prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
As stated above in Section 4, the Complainant owns the registered trademarks for AKZONOBEL.
The disputed domain name is confusingly similar to the Complainant’s AKZONOBEL trademark. The letter “o” in the Complainant’s trademark has been replaced with the number “0”. This is a classic case of typosquatting.
A domain name is typically found to be confusingly similar to the trademark where there is typosquatting. See, for example, Penningtons Manches Cooper LLP v. John Owens, WIPO Case No. D2021-4014.
The Complainant succeeds on the first element of the Policy in relation to the disputed domain name.
B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant.
UDRP panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case.
None of the circumstances listed in paragraph 4(c) apply in the present circumstances.
The Complainant alleges that in view of the fame of the Complainant and the Complainant’s longstanding use of its trademark, the Respondent has no bona fide reason or evidence to support any rights or legitimate interests in the disputed domain name, and it must be concluded the Respondent had no fair intention when registering the disputed domain name.
The Complainant also alleges that the Respondent sent emails from email addresses at the disputed domain name to the Complainant’s affiliated companies, with fraudulent invoices. Such use of the disputed domain name is not bona fide.
Previous UDRP panels have found typosquatting does not constitute a legitimate use of a domain name. Penningtons Manches Cooper LLP v. John Owens, supra.
The Complainant has rights in the AKZONOBEL trademark which precedes the Respondent’s registration of the disputed domain name.
There is no evidence that the Respondent is commonly known by the disputed domain name.
The Complainant has established a prima facie case that the Respondent does not have any rights or legitimate interests in the disputed domain name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the disputed domain name.
The Panel finds that the Respondent has failed to produce any evidence to establish its rights or legitimate interests in the disputed domain name. Accordingly, the Panel finds the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant succeeds on the second element of the Policy in relation to the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the disputed domain name in bad faith.
The Respondent’s conduct demonstrates the Respondent’s knowledge of the Complainant and the Complainant’s trademark. By registering the disputed domain name which is only one character different to the Complainant’s trademark, and then using the disputed domain name to send fraudulent emails to companies in the Complainant’s corporate group, demonstrates that the Respondent specifically knew of and targeted the Complainant. See Fédération Française de Tennis (FFT) v. Daniel Hall, dotCHAT, Inc., WIPO Case No. D2016-1941.
It is well established that typosquatting is evidence of bad faith under the Policy. See ZB, N.A. v. Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2018-1959.
The Respondent has not filed a Response and hence has not availed itself of the opportunity to present any case of good faith that it might have. The Panel infers that none exists. Regal Funds Management Pty Limited v. WhoisGuard Protected, WhoisGuard, Inc. / John Clerk, WIPO Case No. D2020-2773.
The current inactive status of the disputed domain name does not prevent a finding of bad faith, given the Respondent’s failure to participate in this proceeding and the lack of any credible good faith explanation to which the typosquatting disputed domain name could be put. See section 3.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition 3.0.
The Panel finds that the Respondent has both registered and used the disputed domain name in bad faith.
The Complainant succeeds on the third element of the Policy in relation to the disputed domain name.
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 <akz0nobel.com> be transferred to the Complainant.
Date: March 11, 2022