WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

DeLaval Holding AB v. Jeffrey M Kleven

Case No. D2019-1477

1. The Parties

The Complainant is DeLaval Holding AB, Sweden, represented by Valea AB, Sweden.

The Respondent is Jeffrey M Kleven, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <delavalgrp.com> is registered with Domain.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 25, 2019. On June 25, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 25, 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 July 2, 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 July 5, 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 July 8, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 28, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 29, 2019.

The Center appointed Mihaela Maravela as the sole panelist in this matter on August 9, 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.

4. Factual Background

The Complainant was founded in Sweden in 1883 and is a full-service supplier to dairy farmers. The Complainant develops, manufactures and markets equipment and complete systems for milk production and animal husbandry worldwide.

The Complainant is the exclusive owner of the DELAVAL trademark, which is registered both as a word trademark as well as part of device trademarks throughout the world with more than 800 registrations, including the following:

- European Union Trademark for the word DELAVAL with registration number 001785583, registered on October 16, 2002;

- International Trademark for the word DELAVAL, having registration number 748395, registered on July 27, 2000.

The Complainant is the owner of more than 200 domain name registrations throughout the world containing the term “delaval”, for instance, <delaval-us.com>, <delaval.com>, and <delaval.us>.

The disputed domain name was registered on June 18, 2019 and does not resolve to an active website. According to the evidence provided by the Complainant, the disputed domain name has been used as an email address pretending to be the CFO of the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant shows that it is part of the Tetra Laval Group that consists of three independent industry groups: Tetra Pak, DeLaval, and Sidel Group. The Delaval Group is world leading within its field of business and development, employs more than 4,500 people and is operative in more than 100 countries worldwide. Further, the Complainant contends that by virtue of the Complainant’s long use and the renown of the Complainant’s DELAVAL trademark, such trademark is exclusively associated with the Complainant and its licensees. The reputation associated with the Complainant’s trademark is excellent by virtue of the quality of the Complainant’s goods and services and the DELAVAL trademark is undisputedly considered a well-known trademark within its field of business.

The Complainant argues that the disputed domain name is confusingly similar to the Complainant’s trademark and trade name DELAVAL as the disputed domain name incorporates the entirety of the well-known trademark and trade name DELAVAL followed by the misspelled generic word “grp”. The Complainant further argues that due to the famous status of the Complainant’s DELAVAL trademark, this misspelling will invariably result in an association of the disputed domain name with the Complainant’s trademark.

Further, the Complainant argues that the Respondent has no rights or legitimate interests in the disputed domain name since the Complainant has not licensed or otherwise permitted the Respondent to use its trademark. There is no relationship between the Parties that would justify the registration of the disputed domain name and nothing in the record, including the WhoIs information, suggests that the Respondent is commonly known by the disputed domain name. The Complainant further argues that the Respondent is using the disputed domain name for phishing emails for obtaining information and the email address “[…]@delavalgrp.com” has been used to send out fraudulent emails in the name of the CFO of the Complainant. There is currently no active website at the disputed domain name.

In addition, the Complainant argues that the Respondent has intentionally registered and is using the disputed domain name in bad faith. The Complainant contends that the Respondent could not have chosen or subsequently used the disputed domain name for any other reason than to trade-off the goodwill and reputation of Complainant’s trademark or otherwise create a false association, sponsorship or endorsement with or of the Complainant. The Complainant further argues that the Respondent is using the disputed domain name in fraudulent email communications to solicit personal information and creates the impression that the Respondent is associated with the Complainant.

B. Respondent

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

6. Discussion and Findings

Notwithstanding the fact that no Response has been filed, the Panel shall consider the issues present in the case based on the statements and documents submitted by the Complainant.

“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 15(a) of the Rules.

Paragraph 4(a) of the Policy directs that the Complainants must prove each of the following elements:

(i) that the disputed domain name 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 disputed domain name; and

(iii) that the disputed domain name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant must establish that it has a trademark or service mark and that the disputed domain name is identical or confusingly similar to that trademark or service mark for the Complainant to succeed.

Given the evidence put forward by the Complainant, the Panel is satisfied that the Complainant has proved its rights over the DELAVAL trademark.

As regards the question of identity or confusing similarity for the purpose of the Policy, it requires a comparison of the disputed domain name with the trademarks in which the Complainant holds rights. According to section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “this test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name”.

Also, according to section 1.7 of the WIPO Overview 3.0, “in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”.

Here the disputed domain name incorporates in its entirety the Complainant’s DELAVAL trademark. This Panel agrees with prior UDRP decisions recognising that incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark. See, Aldermore Bank Plc v. Hildegard Gruener, WIPO Case No. D2016-1617.

The only element in the disputed domain name that is different from the Complainant’s trademark is the addition of the letters “grp”, that might be an acronym for “group”. According to section 1.8 of the WIPO Overview 3.0, “where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”.

The Panel concludes that the addition of the letters “grp” to the Complainant’s trademark DELAVAL in the disputed domain name is not sufficient to prevent a finding of confusing similarity under the first element of the Policy. For similar findings, see, e.g., Accenture Global Services Limited v. WhoisGuard Protected, WhoisGuard, Inc. / Kelvin Lau, WIPO Case No. D2018-2524; Accenture Global Services Limited v. Gerald Wilson, WIPO Case No. D2018-0935; Olayan Investments Company v. Glenn Johnson, WIPO Case No. D2016-0918.

It is well accepted by UDRP panels that a generic Top-Level Domain (“gTLD”), such as “.com”, is typically ignored when assessing whether a domain name is identical or confusing similar to a trademark.

This Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark and therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate the respondent’s rights or legitimate interests in the disputed domain name:

(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

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 3.0, which states: “[…] 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 the present case the Complainant has established a prima facie case that it holds rights over the trademark DELAVAL and claims that the Respondent has no legitimate reason to acquire the disputed domain name.

There is no evidence that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. There is no evidence indicating that the Respondent is commonly known by the disputed domain name or the name “delaval”. See for a similar finding ALDI GmbH & Co. KG v. zhou xiaolei, WIPO Case No. D2014-0957.

By not replying to the Complainant’s contentions, the Respondent has failed to invoke any circumstances which could demonstrate any rights or legitimate interests in the disputed domain name. See for a similar finding Cash Converters Pty Ltd v. Mirriam Musonda-salati, WIPO Case No. D2014-1839.

Accordingly, the Panel gives prevalence to the Complainant’s affirmation that no license or authorization was ever given for the use of the trademark DELAVAL in the disputed domain name.

In addition, UDRP panels have categorically held that the use of a domain name for illegal activity, such as phishing and impersonation (as in the present case), can never confer rights or legitimate interests on a respondent (see section 2.13 of the WIPO Overview 3.0).

With the evidence on file, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

According to paragraph 4(a)(iii) of the Policy, the Complainant must establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the disputed domain name’s registration and use in bad faith.

According to the unrebutted assertions of the Complainant, its DELAVAL trademark is widely used in commerce well before the registration of the disputed domain name in June 2019. The disputed domain name incorporates the Complainant’s trademark with the addition of the letters “grp”, which can stand for “group”. The email sent from the disputed domain name uses the name of the CFO of the Complainant. Under these circumstances, it is most likely that the Respondent was aware of the Complainant’s trademark at the time of registration of the disputed domain name and sought to take advantage of the reputation of the DELAVAL trademark.

Furthermore, according to the evidence submitted by the Complainant, the Respondent used the disputed domain name shortly after registration to pass itself off as the CFO of the Complainant apparently as part of a phishing scam. Given such evidence, the Panel agrees with previous UDRP decisions that, “the Respondent’s fraudulent use of the disputed domain name, which began almost immediately after its registration, confirms the possibility that the disputed domain name was registered to conduct a “social engineering” attack or other type of scam”. For such reasons, the Panel finds that the Respondent must have been fully aware of the Complainant’s trademarks and activities when it registered the disputed domain name. See, e.g., Virgin Enterprises Limited v. Vincent Battista, WIPO Case No. D2018-1416.

As regards the use of the disputed domain name, given that the Respondent has registered the disputed domain name confusingly similar to the trademark of the Complainant, an intention of the Respondent to attract Internet users and consumers for commercial gain by creating a likelihood of confusion with the Complainant and its business can be inferred. See Virgin Enterprises Limited v. On behalf of virgnimedia.com Owner, c/o whoisproxy.com / Tulip Trading Company, WIPO Case No. D2018-1135.

The Complainant argues that the Respondent is using the disputed domain name for phishing emails for obtaining information, as the email address “[…]@delavalgrp.com” has been used to send out fraudulent emails in the name of the CFO of the Complainant. The evidence put forward by the Complainant in this respect has not been rebutted by the Respondent.

The use of a domain name to send deceptive emails, e.g., to obtain sensitive or confidential personal information from prospective job applicants, or to solicit payment of fraudulent invoices by the Complainant’s actual or prospective customers and employees constitutes bad faith on the side of the Respondent (section 3.4 of the WIPO Overview 3.0).

This Panel agrees with previous findings by UDRP panels that “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” and that “the registration and use of the disputed domain name in connection with what is undoubtedly fraudulent phishing constitutes bad faith”. See DeLaval Holding AB v. CIMPRESS SCHWEIZ GmbH, WIPO Case No. D2019-1086.

In the Panel’s view, these circumstances represent evidence of registration and use in bad faith of the disputed domain name. The Respondent failed to bring evidence as to the contrary. Consequently, the Panel concludes that the condition of paragraph 4(a)(iii) of the Policy is fulfilled.

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 <delavalgrp.com> be transferred to the Complainant.

Mihaela Maravela
Sole Panelist
Date: August 23, 2019