WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Budage Pty Ltd v. WhoisGuard, Inc / Regina Parrish
Case No. DCO2019-0016
1. The Parties
The Complainant is Budage Pty Ltd, Australia, represented by Clayton Utz Solicitors, Australia.
The Respondent is WhoisGuard, Inc., Panama / Regina Parrish, United States of America.
2. The Domain Name and Registrar
The disputed domain name <claytonutz.co> (‘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 May 1, 2019. On May 1, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 1, 2019, 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 May 2, 2019, 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 May 7, 2019.
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 May 8, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 28, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 29, 2019.
The Center appointed Dawn Osborne as the sole panelist in this matter on June 4, 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. Factual Background
The Complainant is the owner of the distinctive mark CLAYTON UTZ registered in Australia under trade mark number 1348381 for, inter alia, legal services since 2010. It has owned <claytonutz.com> since 1997.
The Domain Name registered in March 2019 has been used for third party commercial links and for email communications purporting falsely to come from an officer of the Clayton Utz law firm, to which the Complainant is the administrative and technical contact for purposes of administration and business development.
5. Parties’ Contentions
The Complainant’s contentions can be summarised as follows:
The Complainant is the owner of the distinctive and well-known mark CLAYTON UTZ registered in Australia for legal services since 2010 and used since 1924. It has owned <claytonutz.com> since 1997. It is a special purpose vehicle set up by the Clayton Uts law firm for administrative and business development purposes.
The Domain Name registered in 2019 is identical to the Complainant’s mark save for the country code Top-Level Domain (“ccTLD”) “.co”, which does not prevent the Domain Name from being considered identical to the Complainant’s mark under the Policy.
The Respondent does not have rights or legitimate interests in the Domain Name, is not commonly known by it, and is not authorised by the Complainant. The Domain Name is being used for commercial pay-per-click links which is not a bona fide offering of goods or services.
The Domain Name has been used to send emails in the name of the Chief Executive Partner of Clayton Utz law firm and shareholder of the Complainant in an attempt to solicit payments or information. This supports a finding that registration and use of the Domain Name has been done in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Domain Name consists of the Complainant’s CLAYTON UTZ mark (registered in Australia since 2010 for, inter alia, legal services) and the ccTLD “.co”. The addition of a ccTLD is not sufficient to prevent a finding that a domain name is identical to a complainant’s mark. Accordingly the Panel agrees that the addition of the ccTLD “.co” to the Complainant’s mark will not prevent the Domain Name from being identical to the Complainant’s trade mark pursuant to the Policy.
Accordingly, the Panel holds that the Domain Name is identical for the purposes of the Policy with a mark in which the Complainant has rights.
As such the Panel holds that paragraph 4(a)(i) of the Policy has been satisfied.
B. Rights or Legitimate Interests
The Complainant has not authorised the use of its distinctive mark. The Respondent has not answered this Complaint and there is no evidence or reason to suggest the Respondent is, in fact, commonly known by the Domain Name.
The Domain Name has been used in a fraudulent email scheme. Further, the Domain Name has also been used for pay-per-click links to sites offering third party commercial goods and services. These uses in relation to a domain name containing a distinctive trade mark, where the goodwill of the mark is being used to mislead, is not a bona fide offering of goods and services or a noncommercial legitimate or fair use.
As such the Panelist finds that the Respondent does not have rights or a legitimate interests in the Domain Name and the Complainant has satisfied the second limb of the Policy.
C. Registered and Used in Bad Faith
The use made of the Domain Name in relation to an email scam is deceptive and fraudulent, especially as the name of one of the real Complainant’s shareholders has been falsely used. Phishing and impersonating a complainant by use of a complainant’s mark in a fraudulent email scam is disruptive to the Complainant’s business and evinces bad faith registration and use pursuant to paragraph 4 (b)(iii) of the Policy.
The use by the Respondent of the name of one of the Complainant’s shareholders shows that the Respondent was aware of the Complainant and its business and rights.
The Domain Name has also been used for pay-per-click links to point to third party commercial web sites that have no connection with the Complainant. Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users by creating a likelihood of confusion with the Complainant’s trade marks as to the source, sponsorship, affiliation or endorsement of a web site or goods and services offered on it under paragraph 4(b)(iv) of the Policy.
Further the registration appears to be a ccTLD-variation of typosquatting designed to divert customers that mistype the Complainant’s domain name by using the wrong TLD. This is indicative of bad faith per se.
As such, the Panelist believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under paragraphs 4(b)(iv) and 4(b)(iii).
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 <claytonutz.co> be transferred to the Complainant.
Date: June 6, 2019