WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Wolf Oil Corporation N.V. v. Peter Hugeman
Case No. D2016-1398
1. The Parties
The Complainant is Wolf Oil Corporation N.V. of Hemiksem, Belgium, represented by Novagraaf Belgium NV/SA, Belgium.
The Respondent is Peter Hugeman of New York, New York, United States of America.
2. The Domain Name and Registrar
The disputed domain name <wolf0il.com> (the "Domain Name") is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 8, 2016. On July 8, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 9, 2016, 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 July 15, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 4, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 5, 2016.
The Center appointed Jane Seager as the sole panelist in this matter on August 22, 2016. 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 a Belgian company that supplies oil products. Its main website is available at "www.wolfoil.com." It registered the corresponding domain name, <wolfoil.com>, in 1998.
The Complainant has supplied evidence that it owns a large number of word and design trademarks in the term WOLF and WOLF OIL CORPORATION (e.g., Benelux trademark registration n° 882587 in the term WOLF, registered on September 10, 2010), many of which significantly pre-date the registration of the Domain Name.
The Domain Name was registered on May 2, 2016. It is currently not being used to point to a website, but it has been used to send fraudulent emails to one of the Complainant's customers attempting to obtain money by deception.
5. Parties' Contentions
The Complainant supplies evidence that it owns numerous trademarks in the terms WOLF and WOLF OIL CORPORATION and specifically draws the Panel's attention to the following:
- Benelux trademark registration n° 882587 in the term WOLF, registered on September 10, 2010; and
- International trademark registration n° 1053199 in the term WOLF, registered on September 13, 2010 and covering a long list of countries including Turkey, where the target of the fraudulent emails is based.
In addition, the Complainant also specifically mentions the following trademarks:
- Benelux trademark registration n° 907418 in the term WOLF OIL CORPORATION (design mark), registered on December 12, 2011; and
- International trademark registration n° 1110435 in the term WOLF OIL CORPORATION (design mark), registered on January 4, 2012 and covering a long list of countries including Turkey, where the target of the fraudulent emails is based.
The Complainant also draws the Panel's attention to the domain name <wolfoil.com>, registered in the name of the Complainant since November 10, 1998. The Complainant asserts that this domain name is clearly confusingly similar to the Domain Name. The Complainant also underlines the fact that Wolf Oil is part of the company and trade name of the Complainant.
The Complainant argues that the Domain Name, in which the number "0" is used instead of a letter (the domain name <wolfoil.com> with the letter "o" is already registered to the Complainant) is confusingly similar to the Complainant's WOLF trademarks because WOLF is the distinctive element in the combination WOLFOIL and OIL describes the Complainant's field of activity. The Complainant also argues that the Domain Name is very similar to its trademarks in the term WOLF OIL CORPORATION as they contain the word combination WOLF OIL.
Furthermore, the Complainant asserts that the Domain Name is confusingly similar to the Complainant's <wolfoil.com> domain name and its company and trade name WOLF OIL CORPORATION.
In the Complainant's opinion, the Respondent has no rights or legitimate interests in the Domain Name because there is no evidence that the Respondent has ever used, or made 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. The Complainant points out that the Respondent is an individual named Peter Hugeman, and to the best of its knowledge he has never been commonly known by the Domain Name. In addition, there is no evidence that the Respondent is 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. The Complainant asserts that it has never authorized the Respondent to use the Domain Name.
In the Complainant's view, the Domain Name was registered and is being used in bad faith because, by using the Domain Name (and in particular an email address based on the Domain Name), the Respondent has intentionally attempted to mislead Internet users, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website and/or email address. The Complainant states that the Respondent created an email address "[…]@wolf0il.com", which is almost identical to the email address of one of its employees, and used it to ask for undue payment from one of the Complainant's Turkish clients. Such payment was not due because the Respondent did not in fact provide any goods or services, but instead tried to obtain payment for goods sold by the Complainant by interfering in the email correspondence between the Complainant and its Turkish client and communicating the Respondent's own bank details. As a result the Complainant asserts that it had to send a warning email to its customers.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that to obtain the transfer of the Domain Name, the Complainant must prove each of the following three elements:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
The standard of proof is on the balance of probabilities (Nintendo of America Inc. v. Fernando Sascha Gutierrez, WIPO Case No. D2009-0434).
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Furthermore, paragraphs 10(b) and 10(d) of the Rules provide that the Panel shall ensure that the parties are treated with equality and shall determine the admissibility, relevance, materiality and weight of the evidence.
In addition, paragraph 14(b) of the Rules further provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, the Rules, the Panel shall draw such inferences therefrom as it considers appropriate.
The Panel notes that the Respondent has failed to respond to the Complaint. The Respondent's failure to respond, however, does not automatically result in a decision in favor of the Complainant, although the Panel is entitled to draw appropriate inferences therefrom, in accordance with paragraph 14(b) of the Rules. See paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
Taking the aforementioned provisions into consideration, the Panel finds as follows:
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Panel to first consider whether the Complainant has established relevant trademark rights. The Complainant has provided evidence of a number of registered trademarks in the term WOLF and WOLF OIL CORPORATION.
As mentioned above, the Panel is also required under paragraph 4(a)(i) of the Policy to examine whether the Domain Name is identical or confusingly similar to the Complainant's trademark. In this regard, the Panel notes that the Domain Name incorporates the Complainant's WOLF trademark in its entirety, together with the addition of the term "oil" (with the letter "o" replaced by the number "0"), which exactly describes the Complainant's activity. The Domain Name also mirrors the Complainant's WOLF OIL CORPORATION trade mark, apart from the substitution of the letter "o" with the number "0" previously mentioned, and the omission of the word "corporation" which simply describes the Complainant's legal entity (and in any case is not the dominant textual component of the two design marks specifically mentioned by the Complainant).
The Panel agrees with the Complainant that these variations are insufficient to avoid a finding of confusing similarity, and notes in particular that the letter "o" and the number "0" are visually almost indistinguishable without detailed scrutiny. In this regard see also Brambles Ltd. v. Feng Zhang, WIPO Case No. D2016-0360 ("The Complainant contends that the domain name in dispute is confusingly similar to the Complainant's mark IFCO in that the Respondent's disputed domain name has replaced the letter "O" in the registered mark IFCO with a "0". It submits that this is a typical case of "typo squatting" and that a number of earlier UDRP panel decisions have found a slight deviation from the registered marks leads to a conclusion that the disputed domain name is confusingly similar to the registered mark. The Panel agrees with this reasoning and finds that the disputed domain name is confusingly similar to the Complainant's mark IFCO.") and Capitol Federal Savings Bank v. Moniker Privacy Services / Charlie Kalopungi, WIPO Case No. D2011-0867 ("The disputed domain name is identical with that mark but for substitution of the numeral zero for the letter "o" in CAPITOL. It is plainly confusingly similar to the Complainant's trademark.").
Furthermore, it is widely accepted that the ".com" generic Top-Level Domain ("gTLD") is generally irrelevant for the purpose of assessing identity or confusing similarity between a trademark and a domain name.
The Panel therefore finds that the Domain Name is confusingly similar to the Complainant's trademark. Accordingly, the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a list of non-exhaustive circumstances that may suggest that a respondent has rights or legitimate interests in a domain name, including:
(i) before any notice to the respondent of the dispute, the respondent's 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) the respondent (as an individual, business, or other organization) has been commonly known by the 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 domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Based on the statements and evidence put forward by the Complainant, the Panel finds that the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in the Domain Name and that, as a result of its default, the Respondent has failed to rebut such a showing.
The Respondent cannot be considered to be making a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy referred to above, given that the Domain Name is currently not being used to point to an active website. Neither can the Respondent be said to be making a legitimate noncommercial or fair use of the Domain Name within the meaning of paragraph 4(c)(iii). Furthermore, the Complainant has stated that it has not authorized the Respondent to make any use of its trademark and it is highly unlikely that the Respondent would be "commonly known" by the Domain Name, as referred to at paragraph 4(c)(ii), given the notoriety surrounding the Complainant's trademark.
The Panel is also of the view that the Respondent's failure to submit a response is, in the circumstances of this case, also evidence of the Respondent's lack of rights or legitimate interests in the Domain Name. See Pomellato S.p.A v. Richard Tonetti, WIPO Case No. D2000-0493 ("non-response is indicative of a lack of interests inconsistent with an attitude of ownership and a belief in the lawfulness of one's own rights").
The Panel therefore finds that the Respondent has no rights or legitimate interests in the Domain Name. As such, the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, including:
(i) circumstances indicating that the respondent has registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the respondent has registered the disputed domain name in order to prevent the complainant from reflecting the complainant's trademark or service mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to 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 the respondent's website or location or of a product or service on the respondent's website or location.
However, such circumstances are clearly non-exhaustive, and other factors not listed above may also indicate registration and use in bad faith. The Panel has reviewed the comprehensive email correspondence supplied by the Complainant evidencing the fraudulent use of the Domain Name and finds that it clearly demonstrates that the Domain Name was both registered and then subsequently used in bad faith, with the sole aim of defrauding the Complainant's customers. Given that the Complainant registered the domain name <wolfoil.com> in 1998 and uses it not only to point to its main website but also for its email addresses in the format "[…]@wolfoil.com", it is clear that using the Domain Name to create an email address or addresses in the format "[…]@wolf0il.com" will cause confusion and deception, especially when the chosen term is identical to the name of an existing employee of the Complainant. Indeed, such actions can only have been undertaken deliberately with a fraudulent aim in mind, as underlined by the actual correspondence whereby the email address created using the Domain Name was used to instruct the Complainant's customer to send money to a different bank account.
In the Panel's opinion, registering a domain name mirroring an existing one, but replacing a character by another, almost identical, character, with the sole intention of deliberately causing confusion (a practice often referred to as "homograph spoofing"), is an activity that illustrates the very essence of bad faith registration and use under the Policy.
The Panel therefore finds that the Domain Name has been registered and is being used in bad faith and that paragraph 4(a)(iii) of the Policy is satisfied.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <wolf0il.com> be transferred to the Complainant.
Date: September 2, 2016