WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Insearch Ltd v. Donald Goecke

Case No. D2016-2322

1. The Parties

The Complainant is Insearch Ltd of Sydney, New South Wales, Australia, represented by Marque Lawyers, Australia.

The Respondent is Donald Goecke of Rutland, Vermont, United States of America (“USA”).

2. The Domain Name and Registrar

The disputed domain name <insearch-edu.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 November 15, 2016. On November 15, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on November 22, 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 December 1, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 21, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 22, 2016.

The Center appointed Charters Macdonald-Brown as the sole panelist in this matter on January 9, 2017. 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 provider of higher education services in Sydney, Australia, and it trades under the name UTS: INSEARCH. In particular, the Complainant provides pathway courses to prepare students for bachelor degree programs at the University of Technology in Sydney, including English programs and a range of higher education diplomas.

The Complainant operates its business from the domain <insearch.edu.au> (the “Complainant’s Domain”), which it claims to have done for over 20 years. Although the Complainant has not submitted any evidence to this effect, the Internet Archive at “www.archive.org” shows that a website linked with a business trading as “Insearch” and connected to the University of Technology was available as early as December 19, 1996.

The Complainant owns two Australian trade mark registrations for the word mark INSEARCH (the “Trade Mark”), namely:

- Australian trade mark No. 869886, registered from March 20, 2001, for services in Classes 35 (including business research services), 36 (assisting students in relation to financial matters), 41 (including education services, training support services, and education information services), and 42 (including counselling services for students, and technical research); and

- Australian trade mark No. 1369789, registered from July 1, 2010, for goods in Class 16 (including teaching materials for education),

(together, the “Registrations”).

The Complainant claims to have formally registered a number of business names incorporating the Trade Mark (including “UTS: INSEARCH” and “INSEARCH UTS”), (together, the “Business Names”), but no evidence to this effect has been submitted.

The Respondent appears to be an individual named Donald Goecke, resident in Vermont, USA.

The disputed domain name was registered on September 7, 2016. At the time the Complaint was filed, the disputed domain name did not resolve to an active website. The same is true at the time of writing this Decision.

Further, the Complainant states that an email address set up under the disputed domain name was used on September 8, 2016 to contact an employee of the Complainant in order to request authorization for a foreign payment. A print out of the email in question was provided with the Complaint. The sender’s email address was “[A. M.]@insearch-edu.com”. The Complainant states the name of its Managing Director was used in the said email address. Although the Complainant did not submit any evidence in support of this assertion, “[A. M.]” is also identified as the Complainant’s Managing Director on the Complainant’s website. The Complainant states that its Managing Director is not associated with the email address referred to above and that he did not authorise this use of his name.

The Complainant also claims that other of its employees have received further unsolicited emails from accounts associated with the disputed domain name, which also relate to effecting bank transfers, although no examples of any such further correspondence were provided with the Complaint.

5. Parties’ Contentions

A. Complainant

The Complainant contends as follows:

(a) Identical or Confusingly Similar

The disputed domain name is confusingly similar to the Complainant’s Domain and the Business Names because the component “insearch” is identical to that of the Complainant and the component “-edu.com” leads the public to believe that the disputed domain name is a registered educational provider, which it is not.

The Complainant did not expressly state that the disputed domain name is also confusingly similar to the Complainant’s Registrations. However, as the Complainant clearly referred to the Registrations and their effect under Australian law in the section of the Complaint titled “The domain name(s) is(are) identical or confusingly similar to a trademark or service mark in which the Complainant has rights”, it seems obvious to the Panel that the Complainant intended to include the Registrations in this part of its submissions and that the omission was an innocent mistake.

(b) Rights or Legitimate Interests

The Respondent has not used the disputed domain name in connection with a good faith offering of goods and services, as demonstrated by the fact that:

- the disputed domain name does not link to an active website;

- no legitimate business appears to have been undertaken using the disputed domain name; and

- the Respondent has used the disputed domain name to send at least one email impersonating a representative of the Complainant in an attempt to deceive the Complainant’s employees into making a foreign bank transfer without the Complainant’s knowledge and consent.

(c) Registration and Use in Bad Faith

The Respondent has used the disputed domain name to masquerade as the Complainant in order to send emails to the Complainant’s employees and to trick them into effecting unauthorised bank transfers in an attempt to obtain financial gain.

The Respondent’s use of the disputed domain name is disruptive to the business of the Complainant and the Respondent intentionally registered the disputed domain name in an attempt to create a likelihood of confusion.

B. Respondent

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

6. Discussion and Findings

According to paragraph 4(a) of the Policy, for the Complainant to succeed in obtaining the requested order for transfer of the disputed domain name, it must prove each of the following:

(i) that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith by the Respondent.

Paragraph 5(f) of the Rules provides that if the Respondent does not submit a response (as in this case), in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has established, through its ownership of the Registrations, that it has rights in the mark INSEARCH.

The disputed domain name consists of three elements: (1) the Trade Mark; (2) the suffix “-edu”; and (iii) the generic Top-Level Domain (“gTLD”) “.com”.

The UDRP panel in Dr. Ing. H.c.F. Porsche AG v Vasiliy Terkin, WIPO Case No. D2003-0888, noted that “…a domain name that wholly incorporates a Complainant’s registered trade mark may be sufficient to establish confusing similarity for the purposes of the UDRP”.

Further, it is well established that: (i) the presence of the gTLD “.com” may be disregarded when comparing a domain name to a trade mark; and (ii) the addition of merely generic wording to a trade mark in a domain name is normally insufficient in itself to avoid a finding of confusing similarity (see Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110).

Accordingly, the inclusion of the gTLD “.com” and the suffix “-edu” in the disputed domain name is insufficient to distinguish the disputed domain name from the Trade Mark. In fact, the Panel finds that the inclusion of the generic suffix “-edu” is more likely to increase confusion because: (i) it is a standard abbreviation for “education” or “educational” in domain names (e.g., the “.edu” gTLD intended for educational institutions introduced in or around 1985) and it therefore describes the Complainant’s services; and (ii) it mimics the structure of the Complainant’s Domain, i.e. <insearch.edu.au> [emphasis added].

Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Trade Mark, in which the Complainant has rights.

The Complainant also submits that it has registered the Business Names and the Complainant’s Domain (the latter of which it claims to have used for over 20 years).

No evidence has been provided by the Complainant in support of any of these assertions. Whilst it is permissible for the Panel to seek independent verification of facts from third party sources of its own volition (as the Panel has done in this case by reviewing the Complainant’s website to verify the position of “[A. M.]”, for example), it is not for the Panel to gather the Complainant’s evidence for it.

In this case, the Panel would not have found that this ground had been established were it not for the evidence provided of the Complainant’s ownership of the Registrations.

B. Rights or Legitimate Interests

The Complainant contends inter alia that:

(i) the Respondent has not made any use of the disputed domain name in a way that establishes a legitimate interest arising from a good faith offering of goods or services. On the contrary, the Complainant contends that the disputed domain name has been used in relation to fraudulent activities to extract money from the Complainant and has submitted one example of fraudulent correspondence; and

(ii) the Respondent is not commonly known by the disputed domain name nor has it used the disputed domain name to link to an active website.

The Panel finds that the Complainant’s arguments and evidence suffice to make out a prima facie case against the Respondent requiring rebuttal. The Respondent has not responded to the Complaint and therefore the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out a non-exhaustive lists of circumstances which indicate that the Respondent may have registered and used the disputed domain name in bad faith.

The Panel considers that the following circumstances indicate that the Respondent has registered and used the disputed domain name in bad faith:

(i) the Respondent registered the domain name in September 2016, some 20 years after the Complainant states that it first started to use the Trade Mark and operate its website from the Complainant’s Domain. The Panel infers that the Respondent was familiar with the Complainant and the Trade Mark at the time of registration because the disputed domain name incorporates the Trade Mark in its entirety and the email address used by the Respondent for fraudulent purposes to contact the Complainant’s employees contains the name of the Complainant’s Managing Director;

(ii) as stated above, the disputed domain name has been used for fraudulent purposes, i.e. in order to send emails from an email address which is confusingly similar to the Trade Mark and the Complainant’s Domain to the Complainant’s employees to trick them into making bank transfers (Desko GmbH v. Mustafa Mashari, WIPO Case No. D2015-0817);

(iii) the Respondent has taken active steps to conceal its true identity, by using a privacy registration service (in this case, Domains by Proxy, LLC, as shown in the WhoIs report at Annex C of the Complaint). Although the use of a privacy registration service is not in itself an indication of bad faith, the Panel finds that, when coupled with the fraudulent activities described at (i), it is further evidence of bad faith (Villeroy & Boch AG v. Whois Data Shield/Hong Kong Names LLC, WIPO Case No. D2008-1300); and

(iv) the Respondent has failed to respond to the Complaint and to provide any explanation for its conduct, in circumstances where there is no plausible good faith justification for the registration and use made of the disputed domain name (PwC Business Trust v. Mukesh Patel and Comxsys Consulting, Inc, WIPO Case No. D2000-1666).

The fact that the disputed domain name does not resolve to an active website and that there has been no active attempt on the part of the Respondent to sell the disputed domain name to the Complainant does not prevent a finding of bad faith. In fact, considering the circumstances identified at paragraphs C (i) to (iv) above, the Panel finds that the Respondent’s passive holding of the disputed domain name does amount to acting in bad faith (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

The Panel finds that the disputed domain name has been registered and is being used in bad faith.

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, <insearch-edu.com>, be transferred to the Complainant.

Charters Macdonald-Brown
Sole Panelist
Date: January 23, 2017