WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Centrale der Werkgevers aan de Haven van Antwerpen (CEPA) CVBA v. Contact Privacy Inc. / Nikos Arkadis

Case No. D2016-2069

1. The Parties

The Complainant is Centrale der Werkgevers aan de Haven van Antwerpen (CEPA) CVBA of Antwerp, Belgium, represented by Bart Lieben, Belgium.

The Respondent is Contact Privacy Inc. op Toronto, Ontario, Canada / Nikos Arkadis of Fresno, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <cepabe.com> is registered with Google Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 11, 2016. On October 11, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 13, 2016, 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 the Complainant on October 14, 2016 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 October 21, 2016.

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 October 24, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 13, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 14, 2016.

The Center appointed Miguel B. O’Farrell as the sole panelist in this matter on November 21, 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, Centrale der Werkgevers aan de Haven van Antwerpen (CEPA) CVBA, a Belgian partnership limited by shares claims to be the employer of most of the dockworkers and stevedores in the harbor of Antwerp, Belgium.

The Complainant owns Benelux trademark registration No. 094616, dated November 11, 2013 for the figurative trademark clearly depicting the abbreviation “CEPA”; and Benelux trademark registration No. 0942617, dated November 11, 2013, figurative trademark clearly depicting the abbreviation “CEPA” with the baseline “Alles geven voor de haven”.

The Complainant operates its main website at the domain name <cepa.be>.

The disputed domain name <cepabe.com> was registered on June 1, 2016. On the same date, the Complainant’s chief accountant received a request to process an international payment from an email address created at the disputed domain name, purportedly sent by the Complainant’s chief executive.

5. Parties’ Contentions

A. Complainant

The Complainant contends the following:

That as the employer of most of the dockworkers and stevedores in the harbor of Antwerp, Belgium, it employs close to 10,000 people and that it is most commonly known under its acronym “CEPA”.

That it owns the figurative trademark registrations clearly depicting the abbreviation “CEPA”, details of which are mentioned in Section 4 above. That when comparing the trademarks of the Complainant and the disputed domain name it is clear that there is a likelihood of confusion between the two.

The disputed domain name <cepabe.com> is intended to mimic the domain name <cepa.be> under which the Complainant operates its main website.

The Respondent has used the disputed domain name to pretend that it is the Complainant and in particular to create false emails pretending that they are genuine emails coming from the Complainant and its CEO.

On June 1, 2016 the date on which the disputed domain name was registered, the chief accountant of CEPA received a request from an individual using the email address “[email protected]” to “process an international payment”, “awaiting payment instructions”. The Complainant claims that the name “Paul Falconers” is confusingly similar to the name of the CEO of CEPA, being “Paul Valkeniers”. In this connection, it points out that the English word “falconer” means “a person who keeps, trains, or hunts with falcons, hawks, or other birds of prey”, which has the same meaning as “valkenier” in Dutch.

It is therefore clear that the Respondent is knowingly and willingly trying to commit so-called “CEO Fraud”.

Notwithstanding that the Complainant has reached out to the sender of the email, the registrant and the Registrar in order to obtain further clarifications, no response has been received from any of the addressees and this notwithstanding the fact that the behavior of the user of the email address is considered a criminal offence in many countries.

The fraudulent communications were conducted on the Internet, showing that by using the disputed domain name as origin of the emails, the Respondent intentionally attempted to create a likelihood of confusion between the Complainant’s trademark and the source of affiliation of the fraudulent emails.

Clearly, the Respondent has no rights or legitimate interests in respect of the disputed domain name, which has been registered primarily for the purpose of disrupting the business of a competitor, namely the Complainant. In other words, the disputed domain name has been undisputedly registered and is being used in bad faith.

Consequently, the Complainant requests the Panel to order that the disputed domain name be transferred to the Complainant.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy directs that a complainant must prove each of the following three elements to obtain an order for the disputed domain name to be transferred:

(i) the disputed domain name registered by the respondent is identical or confusingly similar to a trade mark or service mark in which the complainant has rights;

(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.

On the basis of the evidence introduced by the Complainant, the Panel concludes as follows:

A. Identical or Confusingly Similar

The Panel considers that under the Policy the disputed domain name <cepabe.com> is confusingly similar to the figurative trademark clearly depicting the dominant textual component “CEPA” in which the Complainant has rights.

The word “cepa” is totally included in the disputed domain name with the common abbreviation “be” corresponding to Belgium and the generic suffix “.com”. Clearly the abbreviation “be” is insufficient to avoid confusion between the disputed domain name and the trademarks depicting the acronym “CEPA” in which the Complainant has rights. Moreover, since the Complainant is a Belgian company which operates its main website with the domain name <cepa.be> the “be” in the disputed domain name contributes to create such confusion rather than to avoid it.

Following what has become the consensus view among UDRP panels (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2) the Panel shall disregard the generic suffix “.com” under the confusing similarity test.

Therefore, the Complainant has succeeded on this first element of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

The second element that the Complainant must prove pursuant to paragraph 4(a)(ii) of the Policy is that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Policy in paragraph4(c) sets out various ways in which a respondent may demonstrate rights or legitimate interests in a domain name.

Although the Policy states that the complainant must prove each of the elements in paragraph 4(a) of the Policy, it is often observed that it is difficult for a complainant to prove a negative, i.e., that a respondent has no rights or legitimate interests in a domain name. It has therefore become generally accepted under the Policy that, once a complainant has presented a prima facie showing of a respondent’s lack of rights or legitimate interests in a domain name, the burden production shifts to the respondent. The respondent must then come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name in order to refute the prima facie case.

Noting in particular the Complainant’s evidenced submission that the disputed domain name has been used to attempt a fraud on the Complainant, the Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. Therefore, the burden of production has effectively been shifted to the Respondent, who did not reply to the Complainant’s contentions and has not made a showing of a right or legitimate interest in the disputed domain name.

Based on the record, the Panel considers that the Respondent has no rights or legitimate interests in the disputed domain name, and thus the Complainant has made the second prong.

C. Registered and Used in Bad Faith

In accordance with paragraph 4(a)(iii) of the Policy, the third element that a complainant must prove is that the domain name has been registered and is being used in bad faith. The Policy in paragraph 4(b) sets out various non-exhaustive circumstances, which may be treated by the Panel as evidence of the registration and use of a domain name in bad faith.

In particular, paragraph 4(b)(iv) of the Policy holds that if the circumstances indicate that the disputed domain name was registered for the purpose of attempting to attract, for commercial gain, Internet users to the registrars website or other online location, by creating a likelihood of confusion with the complainant´s mark as to source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the web site location, then this is evidence of bad faith registration and use on behalf of the Respondent.

The disputed domain name <cepabe.com> was registered on June 1, 2016, i.e., several years after the Complainant had acquired registered rights in the above-mentioned trademarks depicting the Complainant’s acronym “CEPA”. On the same date, the Respondent, purporting to be the Complainant’s chief executive officer, sent the Complainant’s chief accountant a request to process a payment from an email account created at the disputed domain name in an attempt to defraud the Complainant. The Panel thus finds that the Respondent was aware of the Complainant and the Complainant’s trademark when registering the disputed domain name.

The Panel finds that there is no reason to justify why the Respondent selected the Complainant’s distinctive trademark and acronym “CEPA” for its disputed domain name, other than to attempt a fraud on the Complainant and to disrupt the Complainant’s business.

In view of the foregoing, the Panel finds that the disputed domain name was registered and used in bad faith. Therefore, the Complainant has also made out the third prong.

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 <cepabe.com> be transferred to the Complainant.

Miguel B. O'Farrell
Sole Panelist
Date: December 5, 2016