WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Asendia Management v. Privacy Protect, LLC (PrivacyProtect.org) / underground world, HUSH

Case No. D2020-1544

1. The Parties

Complainant is Asendia Management, France, represented by Selarl Marchais & Associés, France.

Respondent is Privacy Protect, LLC (PrivacyProtect.org), United States of America (“United States” or “USA”) / underground world, HUSH, United States.

2. The Domain Name and Registrar

The disputed domain name <asnedia.com> 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 June 12, 2020. On June 12, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 13, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on June 17, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on June 22, 2020.

The Center verified that the Complaint together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on June 23, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 13, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 14, 2020.

The Center appointed Gabriel F. Leonardos as the sole panelist in this matter on July 27, 2020. 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

Complainant originated from a joint venture between the companies La Poste and Swiss Post. Nowadays, it is one of the world’s biggest players in the field of international mail, shipping and distribution organizations, delivering packages, parcels and documents to more than 200 destinations across the globe.

Complainant operates in the sectors of e-commerce, business mail, direct mail, press & publishing and others, employing over 1,000 people in 15 country offices in Europe, Asia and the USA.

Aiming to protect its trademark rights, Complainant owns trademark registrations in different countries, as below:

- French trademark registration ASENDIA No. 3828137 filed and registered on May 3, 2011 in classes 9; 16; 20; 35; 36; 38; 39; 40; 41; 42 and 45;

- International trademark registration ASENDIA No. 1111830 filed and registered on October 27, 2011 in classes 9; 16; 20; 35; 36; 38; 39; 40; 41; 42 and 45 under priority of French trademark registration ASENDIA No. 3828137 filed and registered on May 3, 2011 and covering amongst other jurisdictions, the European Union and the USA;

- Hong Kong, China trademark registration ASENDIA No. 302599426 filed and registered on May 7, 2013 in classes 9; 16; 20; 35; 36; 38; 39; 40; 41; 42 and 45.

Complainant also owns many domain names that incorporate its ASENDIA trademark, such as <asendia.com>, registered on February 22, 2011.

It is important to note that all mentioned trademark registrations and domain names were registered before the registration of the disputed domain name <asnedia.com>, which was made by Respondent on May 26, 2020. The disputed domain name does not resolve to an active website, but it was used by the Respondent to send fraudulent emails.

5. Parties’ Contentions

A. Complainant

Complainant submits that the disputed domain name is confusingly similar to its registered trademark ASENDIA. This is because the word “asendia” can be written as “asnedia” by only inverting the order of the letters “e” and “n”. This way, Complainant argues that except for the referred letters, the disputed domain name is identical to its trademark ASENDIA and will be read, pronounced and understood as the genuine sign.

In this regard, Complainant notices that the word “asnedia” incorporated by the disputed domain name is an intentional misspelling of its trademark, which constitutes typosquatting, insufficient to materially distinguish a domain name from another’s trademark and avoid consumer confusion, fulfilling the requirements of paragraph 4(a)(i) of the Policy and paragraphs 3(b)(viii) and 3(b)(ix)(1) of the Rules.

Furthermore, Complainant affirms that Respondent does not have any rights or legitimate interests in respect of the trademark ASENDIA, nor any permission to register the trademark as a domain name.

Complainant alleges that the webpage displayed through the disputed domain name is a “not found” page, meaning that there is no evidence of legitimate use of the disputed domain name for any activity or business, so Respondent would be a mere passive holder.

Complainant refers to Telstra Corporative Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, in which the panel found that in order to establish that the registrant was using a domain name in bad faith it was not necessary to find that respondent had undertaken any positive action in relation to the domain name and that, in circumstances of inaction (“passive holding”), this behavior falls within the concept of the domain name “being used in bad faith”.

In addition, Complainant alleges that the trademark ASENDIA is not a generic or descriptive term in which Respondent might have an interest. On the contrary, ASENDIA has no particular meaning and is therefore highly distinctive. The facts described hereto would indicate that Respondent cannot claim any trademark rights over the sign ASENDIA, also fulfilling paragraph 4(a)(ii) of the Policy and paragraph 3(b)(ix)(2) of the Rules.

Moreover, Complainant submits that Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services, nor to make a legitimate noncommercial or fair use of the disputed domain name. Indeed, it has come to Complainant’s attention that the disputed domain name has been used by Respondent to create “@asnedia.com” email addresses as an attempt to pass itself off as Complainant’s employees to extort clients with false invoices, which implies an intent to use the disputed domain name for purposes of phishing or other fraudulent financial gain. Complainant has even filed an action via “Phishing Take Down” as soon as it was aware of the existence of the disputed domain name.

Thus, Complainant sustains that paragraphs 4(a)(iii) and 4(b) of the Policy and paragraph 3(b)(ix)(3) of the Rules would have been fulfilled.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

To succeed, in a UDRP complaint, complainant must demonstrate that all the elements listed in paragraph 4(a) of the Policy have been satisfied, as following:

(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.

The burden of proving these elements is upon Complainant.

Respondent had 20 days to submit a response in accordance with paragraph 5(a) of the Rules and failed to do so. Paragraph 5(f) of the Rules establishes that if a respondent does not respond to the complaint, the panel’s decision shall be based upon the complaint.

A. Identical or Confusingly Similar

Complainant has duly proven the first element under paragraph 4(a) of the Policy by showing evidence that it is the owner of several trademark registrations for ASENDIA in jurisdictions throughout the world and that such trademark is contained in its entirety in the disputed domain name, with the sole difference that the position of letters “e” and “n” are inverted. Moreover, the first visual and sonorous impression caused by the disputed domain name is the same of Complainant’s official domain name <asendia.com>.

The Panel finds this to be a clear case of typosquatting, wherein Respondent has purposefully misspelled the trademark ASENDIA. As decided in previous UDRP decisions, the practice of typosquatting creates domain names that are confusingly similar to a relevant trademark by, for example, removing or inverting letters, as has occurred in this case.

In this sense, the Panel refers to the decision of the case ESPN, Inc. v. XC2, WIPO Case No. D2005-0444, where the panel affirms that: “The Respondent’s domain name is virtually identical to Complainant’s famous ESPNEWS trademark – differing only in the addition of a second letter ‘N’. Because Respondent’s registration of the disputed domain name constitutes typosquatting, the domain at issue is, by definition, confusingly similar to Complainant’s trademarks.”

Therefore, the Panel considers the requirements of the first element of paragraph 4(a) of the Policy to be satisfied.

B. Rights or Legitimate Interests

The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) as follows: “[w]hile the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”

In this case, noting the facts and contentions listed above, the Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests, so the burden of production shifts to Respondent. As Respondent has not replied to Complainant’s contentions, that burden has not been discharged, and the Panel has considered Complainant’s prima facie case to be sufficient to demonstrate that Respondent has no rights or legitimate interests in the disputed domain name.

Thus, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii)).

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists several circumstances that, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances include: “(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 website or location or of a product or service on your website or location.”

The Panel finds it highly unlikely that Respondent had no knowledge of Complainant’s rights to the trademark ASENDIA at the time of registration of the disputed domain name, taking into consideration that (i) Respondent used the disputed domain name to create “@asnedia.com” email addresses and tried to pass itself off as Complainant’s employees in various emails sent to Complainant’s clients with false invoices. Thus, it is clear that Respondent’s intent was to use the disputed domain name for purposes of phishing or other fraudulent financial gain; (ii) the trademark ASENDIA has no dictionary meaning (the term is solely a distinctive trademark created and owned by Complainant) and; (iii) Complainant’s trademark ASENDIA and its main domain name <asendia.com> were first registered in 2011, while the disputed domain name <asnedia.com> was registered on May 26, 2020.

Furthermore, Respondent has engaged in typosquatting when registering the disputed domain name, a practice by which “a registrant deliberately introduces slight deviations into famous marks” for commercial gain. As already established, Respondent’s disputed domain name is confusingly similar to Complainant’s trademark ASENDIA, differing only by the order of the letters “e” and “n”.

In this regard, the Panel refers to other UDRP decisions on the subject, as quoted below:

Longs Drug Stores Cal., Inc. v. Shep Dog, WIPO Case No. D2004-1069: “Finding typosquatting to be evidence of bad faith domain name registration”; Lexar Media, Inc. v. Huang, WIPO Case No. D2004-1039: “Typosquatting has been held under the Policy to be evidence of bad faith registration of a domain name”; Wal-Mart Stores, Inc. v. Longo, WIPO Case No. D2004-0816: “[typosquatting] is presumptive of registration in bad faith.”

Given all the abovementioned, the evidence shows that Respondent was likely deliberately trying to create confusion and mislead Complainant’s costumers for commercial gain in an unlawful way. As previously mentioned, it is clear that Respondent’s intent was to use the disputed domain name for purposes of phishing or other fraudulent financial gain. The fact that Respondent did not present any response to the Complaint reinforces the conclusion that Respondent acted in bad faith.

Accordingly, the Panel concludes that the disputed domain name was registered and is being used in bad faith under paragraph 4(b)(iv) of the Policy. As such, the Panel finds that Complainant has satisfied paragraph 4(a)(iii) of the Policy.

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 name <asnedia.com> be transferred to Complainant.

Gabriel F. Leonardos
Sole Panelist
Date: August 10, 2020