WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Enable Midstream Partners, LP v. Name Redacted

Case No. D2019-0452

1. The Parties

The Complainant is Enable Midstream Partners, LP of Oklahoma City, Oklahoma, United States of America (the “United States”), represented by Crowe & Dunlevy, P.C., United States.

The Respondent is Name Redacted ¹.

2. The Domain Names and Registrar

The disputed domain names <enablemid-stream.com> and <enablemldstream.com> (the “Disputed Domain Names”) are 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 February 27, 2019. On February 27, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On February 28, 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 5, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 25, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 26, 2019.

The Center appointed Lynda M. Braun as the sole panelist in this matter on April 1, 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 a publicly traded partnership with operations in a number of locations throughout the United States. The Complainant is engaged in oil and gas midstream operations, including the gathering and transportation of petroleum products by pipeline. The Complainant hosts its official website at “www.enablemidstream.com”.

The Complainant owns several United States trademark registrations, including the following:

- ENABLE MIDSTREAM PARTNERS, United States Registration No. 4,724,391, registered on April 21, 2015;

- ENABLE MIDSTREAM PARTNERS (and Design), United States Registration No. 4,800,230, registered on August 25, 2015; and

- ENABLE, United States Registration No. 4,770,300, registered on July 7, 2015 (collectively, the “ENABLE MIDSTREAM Mark”).

The Respondent registered the Disputed Domain Name <enablemid-stream.com> on February 14, 2018 and the Disputed Domain Name <enablemldstream.com> on February 7, 2018. The Disputed Domain Name <enablemid-stream.com> redirects to the Complainant’s official website. The Disputed Domain Name <enablemldstream.com> resolves to a parking page.

The WhoIs database maintained by the Registrar incorrectly indicates that the registrant for the Disputed Domain Names is one of the Complainant’s former executives. The Complainant has confirmed that the Complainant´s former executive did not register the Disputed Domain Names and he submitted an Affidavit so stating.

The Respondent used the Disputed Domain Names to impersonate the Complainant´s former executive and to attempt to place orders for goods using emails based on the Disputed Domain Names. The impersonated emails were used so that the Complainant’s legitimate suppliers and vendors would fulfill the fabricated purchase orders. In the Respondent’s scheme, the Respondent had the Complainant’s vendors fulfill the orders and ship the products to a receiving facility designated by the Respondent before the vendor discovered that the purchase order was not sent by the Complainant. In an Annex to the Complaint, the Complainant submitted a sampling of communications received by the Complainant involving the Respondent’s impersonated email scheme.

5. Parties’ Contentions

A. Complainant

The following are the Complainant’s contentions:

- The Disputed Domain Names are confusingly similar to the Complainant’s trademark.

- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names.

- The Disputed Domain Names were registered and are being used in bad faith as part of a scheme in which the Respondent impersonated the Complainant’s former executive to place orders and receive goods from the Complainant’s vendors.

- The Complainant seeks the transfer of the Disputed Domain Names from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that the Complainant prove all of the following three elements in order to be successful in these proceedings:

(i) The Disputed Domain Names are 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 Names; and

(iii) The Disputed Domain Names were registered and are being used in bad faith.

A. Identical or Confusingly Similar

This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, are the Disputed Domain Names identical or confusingly similar to that trademark. The Panel concludes that the Disputed Domain Names are confusingly similar to the ENABLE MIDSTREAM Mark.

First, it is uncontroverted that the Complainant has established rights in the ENABLE MIDSTREAM Mark based on its continuous use as well as its multiple trademark registrations for the ENABLE MIDSTREAM Mark in the United States.

The Disputed Domain Name <enablemid-stream.com> consists of the ENABLE MIDSTREAM Mark, separated by a hyphen, and followed by the generic Top-Level Domain (“gTLD”) “.com”. The Disputed Domain Name <enablemldstream.com> consists of the ENABLE MIDSTREAM Mark, misspelled, and followed by the gTLD “.com”.

Although the Disputed Domain Name <enablemid-stream.com> contains a hyphen between the phrases “enablemid” and “stream”, this is irrelevant for purposes of the Policy, because the presence or absence of punctuation marks such as hyphens cannot on their own avoid a finding of confusing similarity. Six Continents Hotels, Inc. v. Helen Slew, WIPO Case No. D2004-0656 (citing Six Continents Hotels, Inc. v. Georgetown, Inc., WIPO Case No. D2003-0214 (hyphens do not “serve to dispel Internet user confusion here”); Fort Knox National Company v. Ekaterina Phillipova, WIPO Case No. D2004-0281 (“[T]his Panel believes that the expression true-pay is similar to the trademark TRUEPAY”).

Further, the word “enablemldstream” is a misspelling of “enablemidstream”, the name of the Complainant’s partnership, with the letter “i” replaced by the letter “l” after the “m”. This is an example of typosquatting in which a domain name includes a misspelled trademark. Here, the replacement of the letter “i” with the letter “l” does not operate to prevent a finding of confusing similarity between the ENABLE MIDSTREAM Mark and the Disputed Domain Name <enablemldstream.com>. This is especially true in the present case where the letters “i” and “l” are very close to each other visually and they are very close to each other on a typical “qwerty” keyboard, meaning that if one were to use the fourth finger of one’s right hand instead of one’s third finger, this could result in an Internet user who intended to visit the Complainant’s website at “www.enablemidstream.com” visiting “www.enablemldstream.com”. See Amegy Bank National Association v. Contact Privacy Inc. Customer 0136596179 / Banks Joseph, WIPO Case No. D2014-0983.

Finally, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well established that such element may be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182.

Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant.

B. Rights or Legitimate Interests

Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name at issue. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.

In this case, the Panel finds that the Complainant has made out a prima facie case. In particular, the Respondent has not submitted any arguments or evidence to rebut the Complainant’s prima facie case and there is no evidence in the record that the Respondent is in any way associated with the Complainant. Furthermore, the Complainant has not authorized, licensed or otherwise permitted the Respondent to use its trademark. Finally, the name of the Respondent has no apparent connection to the Disputed Domain Names that would suggest that they are related to a trademark or trade name in which the Respondent has rights. The Respondent is using the Disputed Domain Names solely for the purpose of perpetrating a fraud on unwitting vendors to the oil and gas industry. “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.” WIPO Overview 3.0, section 2.13.1.

Thus, the Panel finds that the Respondent does not have rights or legitimate interests in respect of the Disputed Domain Names.

Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant.

C. Registered and Used in Bad Faith

This Panel finds that, based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith pursuant to paragraph 4(b) of the Policy.

First, as demonstrated above, the Respondent is using the Disputed Domain Names <enablemid-stream.com> and <enablemldstream.com> to perpetrate an impersonation scheme aimed at defrauding unwitting third parties with falsely created purchase orders. “As noted in section 2.13.1 [of WIPO Overview 3.0], given that the use of a domain name for per se illegitimate activity such as the sale of counterfeit goods or phishing can never confer rights or legitimate interests on a respondent, such behavior is manifestly considered evidence of bad faith.” WIPO Overview 3.0, section 3.1.4.

“Panels have held that the use of a domain name for purposes other than to host a website may constitute bad faith. Such purposes include sending email, phishing, identity theft, or malware distribution …. Many such cases involve the respondent’s use of the domain name to send deceptive emails, e.g., to obtain sensitive or confidential personal information from prospective job applicants, or to solicit payment of fraudulent invoices by the complainant’s actual or prospective customers.” WIPO Overview 3.0, section 3.4.

In this case, the Panel concludes that the Respondent is using the Disputed Domain Names for an illegitimate purpose that demonstrates knowledge of the Complainant’s trademark rights and a bad faith intent to register and use the Disputed Domain Names. The falsified WhoIs information for both Disputed Domain Names further supports a finding that the Respondent registered the Disputed Domain Names in bad faith.

Finally, the Respondent’s registration of the Disputed Domain Names that are confusingly similar to the ENABLE MIDSTREAM Mark only including a “-” and replacing an “i” for an “l” is further evidence of bad faith. See Ebay Inc. v. Wangming, WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (use of a name connected with such a well-known service and product by someone with no connection to the service and product suggests opportunistic bad faith).

Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant.

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 Names, <enablemid-stream.com> and <enablemldstream.com>, be transferred to the Complainant.

Lynda M. Braun
Sole Panelist
Date: April 2, 2019

¹ The Panel decided to redact the name of the named Respondent, adopting the criterion of the panel in Banco Bradesco S.A. v. FAST-12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788 (“The Panel has decided that no purpose is to be served by including the named Respondent in this decision, and has therefore redacted its name from the caption and body of this decision. The Panel has, however, attached as Annex 1 to this Decision an instruction to the Registrars regarding transfer of the disputed domain names that includes the named Respondent, and has authorized the Center to transmit Annex 1 to the Registrars as part of the order in this proceeding. However, the Panel has further directed the Center, pursuant to paragraph 4(j) of the Policy and paragraph 16(b) of the Rules, that Annex 1 to this Decision shall not be published except under exceptional circumstances”).