WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Wartsila Technology Oy Ab v. Super Privacy Service LTD c/o Dynadot / Krishto Seal

Case No. D2021-4271

1. The Parties

The Complainant is Wartsila Technology Oy Ab, Finland, represented by SafeNames Ltd., United Kingdom.

The Respondent is Super Privacy Service LTD c/o Dynadot, United States of America / Krishto Seal, Canada.

2. The Domain Name and Registrar

The disputed domain name <wartsilaz.com> is registered with Dynadot, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 17, 2021. On December 17, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 20, 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, 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 20, 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 January 12, 2022. In accordance with the Rules, paragraph 5, the due date for Response was February 1, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 2, 2022.

The Center appointed Frank Schoneveld as the sole panelist in this matter on February 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

The Complainant is the registered holder of inter alia:

- United States of America trademark WÄRTSILÄ No. 2078313 registered on July 15, 1997;
- International trademark WÄRTSILÄ, No. 1005789 registered on May 22, 2009;
- European Union trademark WÄRTSILÄ No. 008304149 registered on November 25, 2009;
- European Union trademark WARTSILA No. 011765294 registered on September 18, 2013.

The Complainant operates a number of domain names including <wartsila.com> registered on January 5, 1996.

The disputed domain name <wartsilaz.com> was registered on October 6, 2021, and resolves to an inactive site.

5. Parties’ Contentions

A. Complainant

The Complainant says that it is a Finnish corporation which operates in the field of smart technologies and complete lifecycle solutions for the marine and energy markets, and as of 2019, the Complainant had net sales of EUR 5.2 billion with approximately 19,000 employees with a strong international presence and operations in over 200 locations across more than 80 countries.

The Complainant submits that its commercial activities are centered around two businesses: “Wärtsilä Marine” and “Wärtsilä Energy”, with the first being the Complainant’s marine business concerned with its marine, oil, and gas industry customers by providing products and solutions that eliminate process inefficiencies, while the second, the Complainant’s energy business, is engaged in providing services and solutions to enhance the business performance of power generation companies.

The Complainant says that it was established in and has been operating continually since 1834, and more recently has expanded into biopower. The Complainant says it has brought this Complaint on the basis of its substantive rights and interests in the WÄRTSILÄ and WARTSILA marks, contending that it has established such rights and interests through exclusive, extensive, and consistent use of the term within a global marketplace. The Complainant says its affiliates, subsidiaries, and associated companies own trademarks for the WÄRTSILÄ and WARTSILA marks across a number of jurisdictions, including international trademark registrations and registrations in the United States of America and in the European Union. The Complainant submits that it has spent a considerable amount of time, money and effort promoting, marketing and using the WÄRTSILÄ and WARTSILA marks to identify and distinguish its services, both in Finland and internationally. The Complainant asserts that, as a result of this, the WÄRTSILÄ and WARTSILA marks have acquired distinctiveness in the market worldwide with customers that rely on the brand’s name and quality.

The Complainant contends that it operates online from its main website, <wartsila.com>, which it uses to advertise its products and services, in addition to promoting its WÄRTSILÄ and WARTSILA mark globally, and holds a portfolio of over 400 active domain name registrations, and that this list includes a number of domain names incorporating the Complainant’s mark with country code Top Level Domain (“ccTLD”) extensions. The Complainant says it has also established a social media presence and uses the WÄRTSILÄ and WARTSILA mark to promote its services under this name, thereby accruing significant goodwill and reputation in the WÄRTSILÄ and WARTSILA marks, which, according to the Complainant, has become an indication of the source of goods and services supplied by the Complainant.

The Complainant contends that, where a complainant holds a registered trademark in any country, this prima facie casesatisfies the threshold of having trademark rights for the purpose of standing to file a UDRP case (citing WIPO Overview 3.0, section 1.2), and the Complainant also highlights the goodwill and recognition that has been attained under the trademark WÄRTSILÄ and WARTSILA which (according to the Complainant) is a distinctive identifier associated with the Complainant’s services. The Complainant contends that previous UDRP panels have recognised the value of the WÄRTSILÄ and WARTSILA trademarks and its association with the Complainant. The Complainant concludes that the Complainant has satisfied the requirement of holding a right in the marks WÄRTSILÄ and WARTSILA.

Pursuant to the Policy, the Complainant submits that it satisfies the identical/confusing similarity requirement of the first element since the only element of the disputed domain name which differs from the Complainant’s trademark is the addition of the letter “z” at the end, which is not sufficient to prevent a finding of confusing similarity under the first element of the Policy. The Complainant contends that this practice is commonly known as typosquatting, as per WIPO Overview 3.0, section 1.9.The Complainant argues that this is applicable in this instance, as the only difference between the disputed domain name and the Complainant’s trademark is the addition of one letter, and the letters ‘a’ and ‘z’ are close to each other on a QWERTY keyboard, making it easier for Internet users to make this typographical error.

The Complainant contends that, in respect of the generic Top-Level Domain (“gTLD”) “.com” featured in the disputed domain name, the Panel should disregard this under the first element as it is a standard registration requirement (citing WIPO Overview 3.0, section 1.11) and arguing that numerous past decisions have applied this principle.

The Complainant argues that the Respondent lacks rights and legitimate interests in the disputed domain name, and that the Complainant’s submissions made in this regard will shift the burden to the Respondent to put forward evidence that they do have rights and legitimate interests in the disputed domain name.

The Complainant contends that, to the best of the Complainant’s knowledge, (a) the Respondent has not registered any trademarks for the term WÄRTSILÄ and WARTSILA; (b) there is no evidence that the Respondent holds any unregistered right to the term WÄRTSILÄ and WARTSILA; (c) the Respondent has not received any license from the Complainant to use a domain name which features the WÄRTSILÄ/WARTSILA trademark; and (d) all active trademarks for the term WÄRTSILÄ and WARTSILA are held by the Complainant.

The Complainant submits that none of the circumstances in paragraph 4(c) of the Policy applies in this case and the Respondent cannot demonstrate any right or legitimate interest in the disputed domain name. The Complainant contends that although the Respondent does not use the disputed domain name to host an active website, the Respondent has used the disputed domain name to facilitate email phishing attacks by using it to send out email communications principally from the email address purporting to originate from one of the Complainant’s account managers, to request payments from vendors of the Complainant to be made to an unauthorised bank account which is not controlled by the Complainant, and in which payments were requested with the creation of fake payment instructions.

The Complainant also says that the Respondent has (i) created other email accounts which are included in the carbon copy (“cc”) of the email chain, in an attempt to impersonate other employees of the Complainant and appear legitimate using the names of real employees of the Complainant; and (ii) used the Complainant’s official website in the signature of the email in an attempt to create a convincing misrepresentation.

The Complainant contends that the Respondent has used the disputed domain name in an attempt to impersonate employees of the Complainant’s business and in order to facilitate spear phishing attacks, as per WIPO Overview 3.0, section 2.13.1,and in doing so the Respondent has tried to impersonate the Complainant and lured people into providing payments to an unknown account. The Complainant argues that it has been accepted in previous UDRP decisions that attempts to pass off as the Complainant in furtherance of a phishing scheme does not confer a right or legitimate interest on the Respondent. The Complainant therefore submits that the Respondent has engaged in illegal activity which is in contravention with the Policy and cannot constitute a bona fide offering of goods and services.

The Complainant submits that the Respondent is not known, nor has it ever been known as WÄRTSILÄ and WARTSILA, and that the WÄRTSILÄ and WARTSILA trademarks are distinctive and not used in commerce other than by the Complainant, so there is no plausible reason for the registration of the disputed domain name other than to take advantage of the goodwill and valuable reputation attached to the WÄRTSILÄ and WARTSILA trademarks. The Complainant contends that the Respondent has no connection or affiliation with the Complainant and has not received any license or consent to use the Complainant’s trademarks in any way, so that no actual or contemplated bona fide or legitimate use of the Disputed Name could be reasonably claimed.

The Complainant contends that the mere ownership of a domain name clearly does not confer rights or legitimate interest on the Respondent and to rely on such a defence the Respondent must show that at the time of registration, the Respondent was commonly known by the disputed domain name, which (according to the Complainant) is not the case here.

The Complainant argues that the evidence elucidated by the Complainant shows that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, and the Respondent has used the disputed domain name with the sole intention of carrying out fraudulent activity and generating commercial gain by misleading customers of the Complainant and redirecting payments to an account unrelated to the Complainant, and the engagement in such illegal activity can never constitute a noncommercial or fair use of the disputed domain name.

The Complainant asserts that it has presented a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy so that the burden of production now shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain name.

The Complainant contends that the Respondent registered, and is using, the disputed domain name in bad faith in accordance with paragraph 4(a)(iii) of the Policy since the Respondent must have been aware of the Complainant and its trademarks incorporated into the disputed domain name. The Complainant asserts that the Complainant’s earliest WÄRTSILÄ and WARTSILA trademark registration predates the creation date of the disputed domain name by at least 20 years, and the Complainant has accrued substantial goodwill and recognition since the Complainant’s establishment in 1834, now operating in over 200 locations across more than 80 countries.

The Complainant further submits that anyone with access to the Internet can find the Complainant’s trademarks on public trademark databases and results on popular search engines for the term WÄRTSILÄ and WARTSILA list the Complainant’s brand and services as the first result. The Complainant submits that the Respondent had actual knowledge of the Complainant’s rights in the WÄRTSILÄ and WARTSILA trademark before registering the disputed domain name as is evident from the fact that the Respondent has used the disputed domain name to host email addresses designed to appear closely similar to the Complainant’s trademark, together with thenames of the Complainant’s actual employees and the signature included in the email further confirms the Respondent’s knowledge of the Complainant’s business operations.

The Complainant further contends that the disputed domain name consists of an intentional misspelling of the Complainant’s trademark, which is indicative of typosquatting, a known practice whereby a domain name registrant deliberately introduces typographical errors or misspellings into a mark, and uses the resulting malformed string in a domain name, hoping that Internet users will either inadvertently type the wrong domain name, and/or be confused by the disputed domain name, as to whether it is associated with the Complainant, and in this case is particularly so, as the only difference between the disputed domain name and the Complainant’s trademark is the addition of the letter “z”. The Complainant contends that the Respondent’s evident knowledge of the Complainant’s marks together with the intentional misspelling of the Complainant’s marks establishes that the disputed domain name was registered in bad faith.

The Complainant contends that the Respondent has also used the disputed domain name in bad faith within the terms of paragraph 4(b) of the Policy. The Complainant submits that the Respondent has used the disputed domain name with the intention to profit off the likelihood that users, on the receiving end of the fraudulent emails, will be confused as to the source, sponsorship or affiliation of the disputed domain name thereby misleading users by using a domain name confusingly similar to the Complainant’s trademark, supports the contention of bad faith registration, as found in similar circumstances in previous UDRP cases.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The UDRP at paragraph 4(a) provides that, in order to have a domain name transferred or cancelled, the Complainant must prove that each of the following three elements are present:

(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 Rules at paragraph 15(a) require that “A Panel shall decide a 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.” In the absence of any rebuttal by the Respondent to the Complainant’s contentions, the Panel proceeds on the basis of the Complaint submitted by the Complainant, as well as in accordance with the Policy, the Rules and any rules and principles of law that are applicable.

A. Identical or Confusingly Similar

The Complainant provides evidence of the registered trademarks WÄRTSILÄ and WARTSILA. Evidence is provided that Complainant’s trademarks have been registered in, inter alia, the United States of America, in the European Union, and as an International trademark, at least since November 2009. The Complainant therefore has had rights in this trademark for more than ten years before the disputed domain name was registered on October 6, 2021.

The difference between the disputed domain name and the Complainant’s trademarks is the addition of the letter “z” at the end. The addition of the letter “z” is an addition that could easily be made by mistake, particularly if using a QWERTY keyboard. As held by prior panels, a domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.9. Similarly, when comparing the Complainant’s WÄRTSILÄ trademark with the disputed domain name, the substitution of the Finnish “ä” for the non-internationalized “a” (without the umlaut) has also been found to be an example of typosquatting, which does not prevent finding similarity. Id. As the Complainant’s registered trademarks are clearly recognizable within the disputed domain name, the use of the English letter “A” replacing almost the same Finnish letter “Ä”, and the addition of the letter “z”, does not prevent a finding of confusing similarity to the Complainant’s trademark.

The Respondent does not challenge the evidence submitted by the Complainant and does not respond to the Complainant’s contentions. In such a case, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

There is no evidence that the Respondent has any rights or legitimate interests in the disputed domain name. It is clear that:

(i) the Respondent is not affiliated or connected with the Complainant in any way;
(ii) the Complainant has not given any license or consent to the Respondent to register or use any domain name incorporating the Complainant’s trademarks, or to use any of them in business;
(iii) registration of the Complainant’s trademark in the United States of America, the European Union, and the International registration, preceded by more than ten years registration of the disputed domain name;
(iv) there is nothing in the evidence before the Panel, including in the WhoIs record for the disputed domain name, that suggests the Respondent might be known by the disputed domain name or any part of it.

Rather than a legitimate use of the disputed domain name, there is evidence that the Respondent is making an illegitimate and fraudulent use of the disputed domain name in an email address that falsely uses the name of an employee of the Complainant. The Complainant has provided copies of emails to a third party requesting payment of invoices to an unauthorized bank account that is not that of the Complainant. These emails come from an email address that falsely uses the name of one of the Complainant’s employees, together with the disputed domain name. This shows that the disputed domain name is being used to deceive the third party into believing that the email payment request comes from a representative of the Complainant’s business, when clearly it does not. Such conduct would amount to fraud.

The evidence provided by the Complainant, particularly the emails showing unauthorized use of the name of one of its employees together with the disputed domain name, strongly indicates that the Respondent lacks any rights or legitimate interests in the disputed domain name. At the same time there is no evidence before the Panel that the Respondent has any rights or legitimate interests in the disputed domain name.

In the absence of any submission from the Respondent, a compelling prima facie case has been established that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has failed to provide any rebuttal of this prima facie case. In those circumstances, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

Given that (a) the disputed domain name includes the Complainant’s trademarks, albeit in an easily overlooked typographical variation, and (b) the trademarks’ registration predate (by more than 10 years) the registration of the disputed domain name, and (c) the Complainant’s use of the trademarks in operations in over 80 countries, it is likely that, at the time of registration of the disputed domain name, the Respondent knew of the Complainant’s long use and ownership of the trademarks. In such circumstances it is likely that at registration, the Respondent chose to incorporate that trademark into the disputed domain name to take advantage of the confusing similarity between the disputed domain name and the trademarks of the Complainant. This finding is reinforced given the impersonating nature of the fraudulent emails for which the disputed domain name was used for, as further discussed below.

It is also clear that the disputed domain name, together with unauthorized use of the name of an employee of the Complainant’s business, is being used to fraudulently attempt to divert payments (payable to the Complainant) to the Respondent or to a third party not entitled to receive those payments. This is compelling evidence of attempting to mislead others into believing the disputed domain name was associated with or related to the Complainant when clearly it is not. In such a case of fraud, there would be illicit commercial gain because the recipients of such emails incorporating the disputed domain name would be misled into believing the disputed domain name is associated with or related to the Complainant and mistakenly divert such payments to a third party thereby giving the third party (and likely also the Respondent), commercial gain from such fraud.

Despite the serious allegations made in the Complaint concerning such attempted fraud, the Respondent has not responded to the allegations of attempted fraud and/or misleading conduct.

In view of the above, the Panel accepts that the unauthorized use of the name of an employee of the Complainant’s business in an email address incorporating the disputed domain name, and the use of such emails to fraudulently attempt to divert monies rightfully payable to the Complainant to an unauthorized bank account, deceives (or at least misleads) the recipients of the emails. Further, the requests to divert payments using email addresses impersonating the Complainant’s employees and incorporating the disputed domain name, is (at least attempted) fraud and if successful, would lead to a serious risk of harm to third parties as well as inflicting serious harm on the reputation and business of the Complainant. Such deception and misleading conduct using the disputed domain name is evidence of bad faith registration and use of the disputed domain name.

All of the above, including the failure of the Respondent to rebut or respond to the Complainant’s contentions of bad faith registration and use of the disputed domain name, leads the Panel to find that the disputed domain name was registered and is being used in bad faith.

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, <wartsilaz.com>, be transferred to the Complainant.

Frank Schoneveld
Sole Panelist
Date: March 4, 2022