WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Afton Chemical Corporation v. Carlos Gutierrez, Afton
Case No. DCO2019-0007
1. The Parties
The Complainant is Afton Chemical Corporation of Richmond, Virginia, United States of America (the “United States”), represented by Day Pitney LLP, United States.
The Respondent is Carlos Gutierrez, Afton of Bogota, Colombia.
2. The Domain Name and Registrar
The disputed domain name <aftonchemical.com.co> is registered with Click Panda (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 28, 2019. On March 1, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 15, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 March 25, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 14, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 15, 2019.
The Center appointed Reynaldo Urtiaga Escobar as the sole panelist in this matter on April 25, 2019. 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. Language of the Proceedings
The Complaint was filed in English but the Registrar confirmed that the language of the disputed domain name’s registration agreement is Spanish.
Accordingly, on March 18, 2019, the Center served notice on both parties, in English and Spanish. On the one hand, the Center requested the Complainant to support its request for English to be the language of the proceedings instead of Spanish. On the other, the Center asked the Respondent whether it objected to the Complainant’s proposal for English to be the controlling language of the proceedings, on the understanding that Respondent’s failure to raise said objection by March 23, 2019 could result in the proceedings being conducted in English, unless otherwise determined by the Panel, once appointed.
The Complainant replied that it had already produced evidence that the Respondent is familiar with the English language. Annexes 5 and 6 to the Complaint include emails in English sent by the Respondent offering fake jobs at the Complainant’s headquarters in the United States, and featuring the following English text in the signature blocks “Noris Bellis, Senior Advisor, Afton Chemical, www.aftonchemical.com”. The Complainant further noted that the Respondent used the word “careers” rather than the Spanish word “carreras” in the fraudulent email account […]@aftonchemical.com.co
The Respondent did not reply to the Complainant’s English language proposal by the due date.
Paragraph 11(a) of the Rules reads:
“11. Language of Proceedings
(a) Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
Having regard to the circumstances of the proceeding, as permitted by the paragraph at issue, the Panel finds that:
a) the Respondent has not been prevented from putting forward its defense in Spanish, a language that this panelist fully understands;
b) the emails originating from the disputed domain name, namely the account “[…]@aftonchemical.com.co”, include a reference to the Complainant’s official website “www.aftonchemical.com”, which default language is English, and the term “careers”, which is also in English;
c) the Panel does not believe, in view of the evidence proffered by the Complainant, the circumstances surrounding the registration and use of the disputed domain name, and the Respondent’s default, that the outcome of this decision would be any different if the Complainant was directed to have the Complaint and exhibits translated into Spanish. All these factors weigh in favor of avoiding unnecessary delay in the resolution of the instant dispute.
For these reasons, and pursuant to the authority vested upon it by paragraph 11(a) of the Rules, the Panel accepts the Complaint as filed in English, and determines, on balance, that English shall be the language of the proceedings and the instant decision.
5. Factual Background
The Complainant is a global chemical developer and manufacturer of fuel and lubricant additives with offices in 18 countries across Asia, Europe, the Middle East, North America, and South America.
The Complainant owns several United States trademark registrations for AFTON CHEMICAL, the earliest of which is dated February 14, 2006, No. 3059527, covering goods and services comprised in international classes 1, 4, and 35. Copies of the respective trademark registration certificates were appended to the Complaint.
The disputed domain name was registered by the Respondent on July 19, 2018. The Respondent recorded Afton as the registrant organization of the disputed domain name.
The website associated with the disputed domain name is inactive but the disputed domain name has been used in connection with email accounts offering sham jobs with the Complainant, and fraudulently requesting personal information and payment from job seekers.
6. Parties’ Contentions
In summary, the Complainant contends as follows:
i) The disputed domain name is nearly identical and confusingly similar to the Complainant’s AFTON CHEMICAL mark. The addition of the Top-Level domains (“TLD”) “.com” and “.co” do not serve to differentiate the disputed domain name from the Complainant’s mark;
ii) The Respondent’s registration and use of the disputed domain name to impersonate the Complainant to fraudulently solicit personal information and payment from individuals seeking employment cannot give rise to rights or legitimate interests within the purview of the Policy;
iii) The Respondent does not own any trademark or service mark registrations for AFTON, AFTON CHEMICAL, AFTONCHEMICAL, nor any variations thereof;
iv) The Respondent does not have license, permission, or authorization from the Complainant to use the Complainant’s AFTON CHEMICAL marks;
v) The Respondent is not using the disputed domain name for any purpose other than to facilitate an email-based fraud scheme, as the disputed domain name does not resolve to any website content;
vi) The Respondent is exploiting the Complainant’s marks in furtherance of an illegal phishing scheme, and panels have categorically found that the use of a disputed domain name for phishing can never confer rights or legitimate interests within the meaning of the Policy;
vii) The Respondent has used the disputed domain name to unduly profit from the Complainant’s reputation and goodwill. Panels have consistently found that such use does not constitute a bona fide offering of goods or services, or a legitimate noncommercial fair use of the disputed domain name;
viii) By using the disputed domain name as the origin of phishing emails, the Respondent has intentionally attempted to attract, for commercial gain, personal information and payment from individuals seeking employment with the Complainant, by creating a likelihood of confusion between the Complainant’s marks and the source or affiliation of the fraudulent emails;
ix) The Respondent’s attempted impersonation of the Complainant’s employees in connection with the fraudulent phishing scam originating from the disputed domain name illustrates that the Respondent knew of the Complainant at the time of registration of the disputed domain name;
x) The fraudulent emails sent by the Respondent included a signature block featuring the AFTON CHEMICAL design mark, and the Complainant’s official website, which falsely suggests that those emails originated from the Complainant or an authorized employee;
xi) A previous UDRP panel found the Respondent liable for having registered and used the domain name <timewarner.com.co> to send fraudulent emails in furtherance of a phishing scheme.
The Respondent did not reply to the Complainant’s contentions.
7. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed in this administrative proceeding, the Complainant must prove that:
(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 was registered and is being used in bad faith.
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.
A. Identical or Confusingly Similar
The first element has a low threshold for it merely serves as a standing requirement under the Policy. See section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) (the standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name).
The Complainant holds several United States trademark registrations for AFTON CHEMICAL, including trademark registration No. 3,059,527, granted on February 14, 2006, and covering business management services comprised in international class 35.
The disputed domain name is exclusively formed with the Complainant’s AFTON CHEMICAL mark, which is inherently distinctive, and recognizable at first blush within the disputed domain name.
Under these circumstances, the Panel finds that the disputed domain name is identical to the AFTON CHEMICAL mark relied upon in the Complaint.
The “.com” and “.co” extensions in the disputed domain name are viewed as standard registration suffixes and as such are disregarded under the first element.
For the foregoing reasons, the Panel finds that the disputed domain name is identical to the Complainant’s AFTON CHEMICAL mark on which the Complaint is based.
The Complainant has therefore satisfied its burden of proof for this element of the Policy.
B. Rights or Legitimate Interests
The second element under the Policy is that the Respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii)). Paragraph 4(c) of the Policy provides that “any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [the Respondent’s] rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a 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.”
As noted in section 2.1 of the WIPO Overview 3.0, the onus is on the Complainant to establish the absence of the Respondent’s rights or legitimate interests in the disputed domain name. However, because of the inherent difficulties in proving a negative, the consensus view is that the Complainant need only put forward a prima facie case that the Respondent lacks rights or legitimate interests. The burden of production then shifts to the Respondent to rebut that prima facie case (see also, e.g., World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306).
The Respondent has not been authorized by the Complainant to use the AFTON CHEMICAL marks in connection with the disputed domain name or otherwise. Likewise, there is no evidence in the file to indicate that the Respondent is commonly known by the disputed domain name.
The Complainant has put forward a prima facie case of the Respondent’s lack of rights or legitimate interests in the disputed domain name, while the Respondent did not allege, much less prove, that it has rights or legitimate interests under the Policy.
Furthermore, the Respondent’s use of emails falsely impersonating the Complainant’s employees to solicit personal data and payments from job seekers cannot be characterized as a bona fide use of the disputed domain name. Ultimately, the Respondent’s use of the disputed domain name for fraudulent and phishing purposes negates rights and legitimate interests within the purview of the Policy. See paragraph 2.13 of WIPO Overview 3.0, “Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent.”
In sum, the Panel finds that the Respondent does not possess rights or legitimate interests in the disputed domain name.
The Complainant has satisfied its burden of proof for this element of the Policy.
C. Registered and Used in Bad Faith
Pursuant to Policy, paragraph 4(a)(iii), in order to be granted relief, the Complainant must show that the disputed domain name was registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets forth the following non-exhaustive grounds of bad faith registration and use:
“(i) circumstances indicating that you [the respondent] have registered or 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 [the respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) you [the respondent] 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 [the respondent] have engaged in a pattern of such conduct; or
(iii) you [the respondent] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you [the respondent] have intentionally attempted to attract, for commercial gain, Internet users to your [the respondent’s] 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 [the respondent’s] website or location or of a product or service on your [the respondent’s] website or location.”
The Panel observes that the Complainant acquired registered trademark rights in AFTON CHEMICAL more than 12 years prior to the Respondent’s registration of the disputed domain name.
The Complainant has shown that the Respondent registered and used the disputed domain name for the purpose of offering scam jobs with the Complainant in exchange for money and personal data. In doing so, the Respondent passed off as the Complainant’s recruitment staffers, and illegally requested payments and personal information from job seekers.
At the same time, the Respondent tarnished the Respondent’s brand and reputation by including the AFTON CHEMICAL design mark, and referencing the Complainant’s official website, in the fraudulent emails.
The Panel takes notice of the Respondent’s identical course of fraudulent conduct described in another UDRP case where the panel found that the Respondent had engaged in an email phishing scheme.
Lastly, the Panel notes that the Respondent’s contact information on WhoIs is incomplete for it lacks the street/avenue name and number, which lends support to a finding of bad faith.
In sum, the Panel is persuaded that the disputed domain name was registered and has been used in bad faith under the Policy.
Thereby, the Complainant has discharged its burden in relation to 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 disputed domain name <aftonchemical.com.co> be transferred to the Complainant.
Reynaldo Urtiaga Escobar
Date: May 14, 2019