WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

TMF Group B.V. v. WhoisGuard Protected, WhoisGuard, Inc. / Peter Smith

Case No. DCC2018-0012

1. The Parties

Complainant is TMF Group B.V. of Amsterdam, Netherlands, represented by Novagraaf Nederland B.V., Netherlands.

Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama City, Panama / Peter Smith of Berkshire, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).

2. The Domain Name and Registrar

The disputed domain name <tmf-group.cc> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 20, 2018. On August 20, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 20, 2018, 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 August 27, 2018 providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on August 27, 2018.

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 August 29, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 18, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 19, 2018.

The Center appointed Andrew Mansfield as the sole panelist in this matter on October 1, 2018. 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 the owner of many national and international trademark registrations and applications dating back to 1995 for TMF / TMF GROUP for inter alia, business, compliance and administrative services in several countries around the world. Complainant provided the Panel with a subset of its trademark registrations in the annexes to its Complaint:

- Benelux trademark registration No. 0585713 TMF word mark, registered on December 12, 2008;

- Benelux trademark registration No. 0953328 TMF GROUP word/device mark, registered on May 27, 2014;

- Benelux registration No. 0776247 TMF GROUP word mark, registered on November 8, 2005;

- European Union registration No. 000376467 TMF word mark, registered on April 7, 1999;

- International trademark registration No. 660790 TMF word mark, registered on August 9, 1996;

- International trademark registration No. 1210464 TMF GROUP word/device mark, registered on March 14, 2014;

- International trademark registration No. 905957 TMF-GROUP word mark, registered on September 26, 2006.

The disputed domain name was registered on April 10, 2018 and does not resolve to an active website.

5. Parties’ Contentions

A. Complainant

Complainant is a multinational company headquartered in Amsterdam investing globally in over 83 jurisdictions. It asserts it has been active under its trade name since 1988. Complainant states that it has become a leading global provider of high-value business, compliance and administrative services. Complainant asserts that its trademarks have been used intensively in commerce and continues to be used globally. Furthermore, Complainant has a substantial presence on the Internet and can be found via various domain names that incorporate the letters “TMF” or the phrase “TMF Group”.

Complainant indicates that it has spent considerable time, effort and money in advertising and promoting its trademarks and the services that are offered under these trademarks. As a result, Complainant argues that the TMF and TMF GROUP trademarks embody substantial goodwill.

Complainant argues that the disputed domain name is identical to its TMF and TMF GROUP trademarks because the disputed domain name incorporates those marks completely. Because of the identity, Complainant indicates that the disputed domain name is confusingly similar to its trademarks.

Complainant further argues that Respondent lacks any rights or legitimate interests to “TMF” or “TMF Group”. To the best of Complainant’s knowledge, Respondent does not own any rights to “TMF” or “TMF Group” and no consent to their use was provided to Respondent by Complainant. The disputed domain name does not resolve to a website, Complainant indicates, and there is no demonstrated preparation for the use of a trademark containing “TMF” or “TMF” Group by Respondent. Complainant also argues that the use of privacy shield registration service is an indication that Respondent lacks rights or legitimate interests.

Finally, Complainant indicates that Respondent registered and is using the disputed domain name in bad faith. Complainant has submitted evidence that Respondent has requested payment from Complainant’s employees in a phishing scheme premised on confusing Complainant’s employees based on the use of the disputed domain name in an email address. In addition, Complainant indicates that its global scale and long use of the trademarks TMF and TMF GROUP are evidence that Respondent was aware of Complainant’s activities and reputation. Complainant concludes that Respondent must have registered the disputed domain name with the Complainant’s trademarks in mind in order to confuse Complainant’s employees and third parties through a phishing email scheme.

For these reasons, Complainant requests that the disputed domain name be transferred to Complainant.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, to succeed in this administrative proceeding Complainant must prove that: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark of Complainant; (ii) Respondent has no rights or legitimate interests in respect to the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. The Panel holds that the applicable standard of proof is one based on the “preponderance of the evidence.”

These elements are discussed in turn below. In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.

In accordance with the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the Panel considers it important for the overall credibility of the UDRP system that parties can reasonably anticipate the result of any potential case. The Panel is committed to striving for consistency with prior decisions while maintaining sufficient flexibility to account for changing practices or new fact patterns that may arise.

A. Identical or Confusingly Similar

The Panel agrees with Complainant that the disputed domain name is confusingly similar to various trademarks associated with Complainant. The disputed domain name entirely incorporates both the marks TMF and TMF GROUP. The country code Top-Level Domain (“ccTLD”) “.cc” should typically be disregarded under the first UDRP element.

A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The disputed domain name <tmf-group.cc> integrates the Complainant’s TMF and TMF GROUP trademarks in their entirety (see Wal-Mart Stores, Inc. v. Kuchora, Kal, WIPO Case No. D2006-0033; Hoffmann-La Roche Inc. v. Andrew Miller, WIPO Case No. D2008-1345).

The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the disputed domain name”. See WIPO Overview 3.0, section 1.7. The Panel concludes under this test the disputed domain name is confusingly similar to Complainant’s trademarks for purposes of the first element of the Policy. The first element of the Policy has been met.

B. Rights or Legitimate Interests

The Panel does not lightly or automatically find that Respondent has no rights or legitimate interests. Even when a respondent fails to participate in a UDRP dispute, the complainant is required to make out at least a prima facie case that Respondent lacks rights or legitimate interests. Once such a prima facie case is made, the burden shifts to the respondent to demonstrate rights or legitimate interests under the Policy. See WIPO Overview 3.0, section 2.1. If the respondent fails to come forward with such relevant evidence, a complainant is deemed to have satisfied the second element of the Policy.

Complainant has made out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain names. Complainant indicates Respondent was not licensed or authorized to use the trademark at issue or any variation thereof. Respondent has not, as far as Complainant can find, been commonly known by a name identical to or similar to the disputed domain names. Respondent has not come forward with any appropriate allegations or evidence in this regard. Based on the evidence presented, the Panel concludes that Respondent lacks rights or legitimate interests in the disputed domain names.

The second element of the Policy has, therefore, been met.

C. Registered and Used in Bad Faith

The Policy provides guidance on activities that might be considered evidence of bad faith registration and use of a domain name. That guidance is found in paragraph 4(b) of the Policy. Circumstances are described in paragraph 4(b) that might lead a panel to conclude that the registration and use of a disputed domain name is in bad faith. The description of the circumstances is addressed to the respondent. They are:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.

Previous panels have found that registration of a disputed domain name obviously or patently connected with a complainant suggests opportunistic bad faith. See Research In Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492. The registration and use of <tmf-group.cc> in this matter makes use of its obvious and patent similarity to domain names used by Complainant. The disputed domain name was registered 23 years after Complainant first used its TMF GROUP mark. Given Complainant’s worldwide reputation and operations, Respondent was or should have been aware of the mark prior to registering the disputed domain name. This conclusion is further supported by the fact that the disputed domain name was incorporated into email intended to be reviewed and relied upon by employees of Complainant. Such a sequence of events cannot be unintentional.

In this matter, the Panel notes that a review of the emails received by Complainant and submitted in the annexes to the Complaint indicate that Respondent attempted obtain funds from Complainant under false pretenses by sending email to certain employees of Complainant. Respondent or an agent for Respondent indicated an escrow transaction was already approved and that funds in Bitcoin needed to be transferred to finalize an approved purchase. An employee of Complainant or one of its subsidiary companies received a forwarded email chain appearing to contain completed escrow instructions. The final email in the chain (the first forwarded to an actual employee of Complainant) asked to finalize an outbound payment. By initiating the email chain with an email from “...@tmf-group.cc”, making use of the disputed domain name, the Panel concludes that Respondent hoped to confuse and mislead one or more employees of Complainant into approving the funds transfer on the false belief the email originated from an authorized person with such authority within Complainant’s business.

The disputed domain name was used to facilitate a sophisticated phishing scheme. The potential success of the phishing scheme was predicated on the possibility that one or more employees of Complainant not recognizing that the disputed domain name was not a domain name owned by Complainant.

The phishing scheme was clearly aimed at obtaining the transfer of funds from Complainant under false pretenses by confusing Complainant’s employees through the use of an email address and a website imitating one of Complainant’s official domain names. Prior UDRP panels have agreed that there is no better evidence of bad faith than a fraudulent phishing scheme set up with the help of a domain name containing the trademark of a company where recipients of email are being misled and deceived into believing they are dealing with an authorized representative of the company to whom the disputed domain is confusingly similar. See OLX, Inc. v. J D Mason Singh, WIPO Case No. D2014-1037; and The Royal Bank of Scotland Group plc v. Secret Registration Customer ID 232883 / Lauren Terrado, WIPO Case No. D2012-2093.

For all the above reasons, the Panel concludes that the disputed domain name was registered and is being used in bad faith. Accordingly, the third condition of paragraph 4(a) of the Policy has been fulfilled

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 <tmf-group.cc> be transferred to Complainant.

Andrew Mansfield
Sole Panelist
Date: October 28, 2018