The Complainant is DeLaval Holding AB, Sweden, represented by Valea AB, Sweden.
The Respondent is CIMPRESS SCHWEIZ GmbH, Switzerland.
The disputed domain name <delavol.com> is registered with Tucows Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 10, 2019. On May 10, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 13, 2019, 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 May 13, 2019 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 May 16, 2019.
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 May 23, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 12, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 21, 2019.
The Center appointed Peter Burgstaller as the sole panelist in this matter on June 21, 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.
The Complainant is a Swedish company which owns trademarks and service marks for example DELAVAL, Reg. No. 2,705,930, USPTO, registered on April 15, 2003. The DELAVAL trademark is registered both as word marks as well as part of device marks throughout the world, with more than 800 registrations.
The “DeLaval Group” of which the Complainant is part is now a member of the “Tetra Laval Group” and a full-service supplier to dairy farmers; it develops, manufactures and markets equipment and complete systems for milk production and animal husbandry worldwide.
The Complainant is also the owner of more than 200 domain name registrations world-wide containing the DELAVAL mark, distributed among generic Top-Level Domains (“gTLDs”) and country code Top-Level Domains (“ccTLDs”).
The disputed domain name <delavol.com> was registered on April 27, 2019 by the Respondent.
The Complainant was founded in 1883 and is a corporation organized and existing under the laws of Sweden. The Complainant is part of the “Tetra Laval Group” which consists of three independent industry groups: Tetra Pak, DeLaval and Sidel Group. The DeLaval Group of which the Complainant is part in particular is a full-service supplier to dairy farmers; it develops, manufactures and markets equipment and complete systems for milk production and animal husbandry worldwide; in this respect the Complainant is world leading.
The DeLaval Group is operative in more than 100 countries and employs more than 4 500 people worldwide.
The Complainant is the owner of several trademarks containing the word DELAVAL throughout the world.
The trademark DELAVAL is well-known worldwide and the reputation of the Complainant’s trademarks is excellent by virtue of the quality of the Complainant’s goods and services.
The Complainant moreover is the owner of more than 200 domain names containing the mark DELAVAL under generic and country code Top Level Domains.
The Complainant’s contentions are that:
a) The disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights;
b) The Respondent has no rights or legitimate interests in the disputed domain name;
c) The Respondent registered and is using the disputed domain name in bad faith.
The Complainant seeks the transfer of the disputed domain name to itself.
The Respondent did not reply to the Complainant’s contentions.
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(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 with respect to the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
A domain name which contains a common or obvious misspelling of a trademark is confusingly similar to such trademark, where the misspelled trademark remains the dominant or principal component of the domain name (see Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775, <wochovia.com> inter alia; Fuji Photo Film USA, Inc. v. LaPorte Holdings, WIPO Case No. D2004-0971, <fuijifilm.com>; Humana Inc. v. Cayman Trademark Trust, WIPO Case No. D2006-0073, <humanna.com>; Edmunds.com, Inc. v. Digi Real Estate Foundation, WIPO Case No. D2006-1043, <edmundss.com>).
In the present case the disputed domain name <delavol.com> simply contains the letter “o” instead of one “a” from the Complainant’s trademark DELAVAL (DELAVOL => DELAVAL); however, it is the Panel’s view that this does not make the disputed domain name distinctive from the Complainant’s trademark.
It has also long been held that suffixes such as a ccTLD or gTLD cannot typically negate confusing similarity where it otherwise exists, as it does in the present case.
The Panel therefore finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
While 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 see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1).
In the present case the Respondent failed to submit a Response. Considering all of the evidence in the Complaint (especially with regard to the Annexes presented by the Complainant) and the Complainant’s contentions that the Respondent has no rights or legitimate interests in the disputed domain name, that the Respondent has no connection or affiliation with the Complainant and the Respondent has not received any license or consent, express or implied, to use the Complainant’s trademarks in a domain name or in any other manner lead the Panel to the conclusion that the Complainant has made out an undisputed prima facie case so that the conditions set out in paragraph 4(a)(ii) of the Policy have been met by the Complainant.
As stated in many decisions rendered under the Policy (see Robert Ellenbogen v. Mike Pearson, WIPO Case No. D2000-0001) both conditions, registered and used in bad faith, need to be established, consequently, the Complainant must show that:
- the disputed domain name was registered by the Respondent in bad faith, and
- the disputed domain name is being used by the Respondent in bad faith.
Prior UDRP panels have ruled that bad faith is established where a complainant's trademark has been shown to be well-known or in wide use at the time of registering the domain name (see, e.g., The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113; Caesar World, Inc. v. Forum LLC, WIPO Case No. D2005-0517; and Pepsico, Inc. v. Domain Admin, WIPO Case No. D2006-0435).
Moreover, it is well-settled case law that the practice of typosquatting may in itself be evidence of a bad faith registration of a domain name (see, e.g., Longs Drug Stores California, Inc. v. Shep Dog, WIPO Case No. D2004-1069; Wal-Mart Stores, Inc. v. Longo, WIPO Case No. D2014-0816; see also WIPO Overview 3.0, paragraph 1.9). The Respondent substituted one "a" from the Complainant’s trademark DELAVAL by the letter "o"; the fame and distinctiveness of the Complainant’s trademark DELAVAL and the misspelling registration of this well-known trademark as domain name by the Respondent shows to this Panel bad faith registration.
In order to meet paragraph 4(a)(iii) of the Policy the Complainant must also prove that the disputed domain name is being used in bad faith.
Given the fame, distinctiveness and reputation of the Complainant’s trademark DELAVAL there is no other conceivable interpretation of the registration and use of the disputed domain name than that of bad faith. The conduct of the Respondent demonstrates awareness of the Complainant’s mark and an intention to somehow benefit from its fame and/or to disrupt the business of the Complainant. By using the name of an employee (CFO) of the Complainant in an email address, the Respondent is using the disputed domain name in fraudulent intent to receive personal and financial information (“Phishing”). Phishing is a form of Internet fraud that aims to steal valuable information such as credit cards, social security numbers, user IDs, passwords, etc. In Pfizer Inc v. Michael Chucks / Whoisguard Protected, Whoisguard Inc,WIPO Case No. D2014-0887, the panel already held that the registration and the use of a domain name in connection with a fraudulent phishing scheme constitutes bad faith under the Policy. Similarly, the panel in CMA CGM v. Diana Smith, WIPO Case No. D2015-1774, stated that the respondent only used the domain name as part of a common phishing scheme in order to fraudulently induce customers to provide information.
Obviously, such phishing methods cannot be considered as a bona fide offering of goods or services nor as a legitimate noncommercial or fair use of the disputed domain name; contrariwise, when using the disputed domain name for phishing reasons, the Respondent creates an apparent likelihood of confusion with the intention to take advantage of the reputation of the famous DELAVAL trademark and to fraudulently send email communication by using an email address containing the Complainant’s employee’s name.
There is no doubt for this Panel that the registration and use of the disputed domain name in connection with what is undoubtedly fraudulent phishing constitutes bad faith.
Thus, the conditions set out in paragraph 4(a)(iii) of the Policy have been met by the Complainant.
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 <delavol.com> be transferred to the Complainant.
Date: July 2, 2019
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