The Complainant is Yardi Systems, Inc. of Santa Barbara, California, United States of America (hereinafter, “Complainant”), represented internally.
The Respondent is Abm Black of New York, United States of America (hereinafter, “Respondent”).
The disputed domain name <yardil.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 9, 2019. On January 10, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 10, 2019, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on January 18, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 7, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 13, 2019.
The Center appointed M. Scott Donahey as the sole panelist in this matter on February 20, 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.
Complainant has used the YARDI trademark and service mark continuously in the United States since at least as early as 1983 in connection with its property management software and related products and services. Since that time it has expanded the use of its mark to countries around the globe and it owns numerous trademarks in the United States of America including among others, United States of America trademark registrations Nos. 4,420,780, registered on October 22, 2013; 5,066,714, registered on October 25, 2016; and 5,066,713, registered on October 25, 2016 for YARDI used by the Complainant in connection with its services (Complaint, Annex 5) and is the registrant of the trademark and service mark YARDI in countries worldwide. Complaint, Annex 4. In 1996, Complainant registered and has been using continuously in its business the domain name <yardi.com>. Complaint, Annexes 6 and 7.
Respondent registered the disputed domain name <yardil.com> on November 29, 2018. In its registration application, Respondent purported to reside on Yellow Carpet Avenue, in Los Angeles, New York, listing a phone number, which did not have an area code. Complaint, Annex 1.
Respondent has used the disputed domain name for purposes of “spear phishing,” which is the use of email which appears to come from an identifiable and bona fide source and which seeks confidential information or, as in the present case, the payment of money in a bank account which appears to belong to the identifiable and bona fide source of the email. In the present case, Respondent’s spear phishing seeks payment into an account, which appears to belong to Complainant. Complaint, Annex 10.
Complainant contends that the disputed domain name is confusingly similar to its YARDI trademark and service mark. Complainant alleges that Respondent has no rights or legitimate interests in respect of the disputed domain name in that there is no evidence of any preparation to use or use of the disputed domain name in connection with a bona fide offering of goods or services and no website to which the disputed domain name resolves. Complaint, Annex 9. Finally, Complainant asserts that the disputed domain name is being used for spear phishing, in that Respondent is using the disputed domain name in connection with email addresses using the names of Complainant’s employees in the email address and seeking to have the recipient deposit funds into a bank account purportedly belonging to Complainant.
Respondent did not reply to Complainant’s contentions.
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute:
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and,
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and,
(iii) that the domain name has been registered and is being used in bad faith.”
The disputed domain name consists of Complainant’s YARDI registered and long used trademark and service mark with the addition of a final “l.” Accordingly, the Panel finds that the disputed domain name is confusingly similar to Complainant’s YARDI mark.
While the overall burden of proof in UDRP proceedings is on the complainant, UDRP 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. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.
In the present case, Complainant alleges that Respondent has no rights or legitimate interests in respect of the disputed domain name and Respondent has failed to assert any such rights. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Respondent is not using the disputed domain name to resolve to a web site, but rather is using it for spear phishing, employing the disputed domain name in an email address which also incorporates the name(s) of various employees of Complainant and requesting that the recipient pay invoices allegedly due Complainant by wire transfer into a bank account that appears to belong to Complainant, but which is actually maintained by Respondent. This is classic bad faith registration and use. See WIPO Overview 3.0, section.3.4. Accordingly, the Panel finds that Respondent has registered and is using the disputed domain name in bad faith.
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, <yardil.com>, be transferred to Complainant.
M. Scott Donahey
Date: March 6, 2019
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