WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
DS Smith Plc v. Richard Orzel, dssmlth
Case No. D2018-0837
1. The Parties
The Complainant is DS Smith Plc of London, United Kingdom of Great Britain and Northern Ireland, represented by SILKA Law AB, Sweden.
The Respondent is Richard Orzel, dssmlth of Richmond, Michigan, United States of America ("US").
2. The Domain Name and Registrar
The disputed domain name <dssmlth.com> is registered with Wild West Domains, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 16, 2018. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 17, 2018, the Registrar transmitted by e-mail 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 April 23, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 13, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 17, 2018.
The Center appointed Fabrizio Bedarida as the sole panelist in this matter on May 24, 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
The Complainant, DS Smith Plc, is a leading provider of corrugated packaging and a specialist in plastic packaging worldwide. The Complainant operates across 37 countries and employs around 27,000 people. In June 2017 the Complainant acquired the US company Interstate Resources, which operates from 24 sites across the US east coast, providing the Complainant with an immediate stepping-stone to the US market.
The Complainant owns various registrations for domain names that include its registered trademarks, including <dssmith.com> (registered on January 14, 2003) and <dssmith.co.uk>, among others.
The Complainant has proven to be the owner of the D S SMITH trademark, which enjoys protection through numerous registrations worldwide.
The Complainant is, inter alia, the owner of:
European Union trademark D S SMITH, number 002327617, registered on December 19, 2002.
The disputed domain name <dssmlth.com> was registered on January 29, 2018, and resolves to a parking page.
The Complainant's trademark registrations predate the registration of the disputed domain name.
5. Parties' Contentions
The Complainant claims that the disputed domain name is confusingly similar to the Complainant's registered trademark; that the Respondent has no rights or legitimate interests whatsoever with respect to the disputed domain name; and that the Respondent registered and is using the disputed domain name in bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
In order for the Complainant to obtain a transfer of the disputed domain name, paragraphs 4(a)(i) – (iii) of the Policy require that the Complainant must demonstrate to the Panel 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 has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has established rights in the D S SMITH trademark.
The disputed domain name reproduces the trademark D S SMITH merely by replacing the letter "i" with the letter "l" (lowercase "L"). The Panel agrees with the Complainant's assertion that the replacement of the letter "i" with the letter "l" does not significantly affect the disputed domain name's appearance, and believes this difference is not sufficient to avoid the confusing similarity between the sign and the disputed domain name.
It has already been held by previous UDRP panels that obvious misspellings of a trademark are insufficient to distinguish a domain name from a complainant's trademark. Indeed, the Complainant's trademark is clearly recognizable in the disputed domain name.
Therefore, the Panel finds the disputed domain name to be confusingly similar to the D S SMITH trademark in which the Complainant has rights.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
This Panel finds that the Complainant has made a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. The Respondent does not appear to be commonly known by the name "d s smith" or by any similar name. The Respondent has no connection or affiliation with the Complainant, and the Complainant has not licensed or otherwise authorized the Respondent to use or register any domain name incorporating the Complainant's trademark. The Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain name, nor any use in connection with a bona fide offering of goods or services. The Respondent is using the disputed domain name to resolve to a parking page. The Respondent has not come forward with any explanation that demonstrates any rights or legitimate interests in the disputed domain name. The Respondent has not formally replied to the Complainant's contentions, claiming any rights or legitimate interests in the disputed domain name.
The Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel, on the basis of the evidence presented, accepts and agrees with the Complainant's contentions that the disputed domain name was registered and has been used in bad faith.
The Complainant has documented that at the time of registration of the disputed domain name, the Respondent was clearly aware of the Complainant and its trademark. Indeed it appears that at least one
email sent by the Respondent was signed in the name of the Complainant's accounts receivable analyst and contained documents with material relating to the Complainant.
Consequently, the Panel finds that the Respondent knew of the Complainant's marks and intentionally intended to create an association with the Complainant and its business at the time of registration of the disputed domain name.
In addition, the subject of this email was "updated banking details" with a PDF attachment. This Panel agrees with the Complainant that this behavior suggests fraudulent intent. Namely, it appears that the Respondent is trying to pass himself off as an employee of the Complainant, presumably in order to provide the Complainant's customers with bank details that differ from those of the Complainant.
The Panel finds that the Respondent's use of the disputed domain name constitutes a disruption of the Complainant's business and qualifies as bad faith registration and use under the Policy. The fact that the disputed domain name does not currently resolve to an active website does not preclude a finding of bad faith.
Accordingly, the Panel finds, on the basis of the evidence presented, that the Respondent registered and is using the disputed domain name in bad faith.
Therefore, the Complainant has satisfied 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 <dssmlth.com> be transferred to the Complainant.
Date: May 31, 2018