WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Corporation Service Company v. WhoisGuard Protected, WhoisGuard, Inc. / Duc Nguyen, yoloapp

Case No. D2019-2755

1. The Parties

The Complainant is Corporation Service Company, United States of America (“United States”), represented by CSC Digital Brand Services AB, Sweden.

The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Duc Nguyen, yoloapp, Viet Nam.

2. The Domain Name and Registrar

The disputed domain name <cscdigitalbrandusa.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 11, 2019. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 11, 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 November 19, 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 November 20, 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 November 26, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 16, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 17, 2019.

The Center appointed Jacob (Changjie) Chen as the sole panelist in this matter on January 3, 2020. 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, Corporation Service Company (“CSC”), founded in 1899, is a provider of business, legal, financial and digital brand services to companies around the globe. The Complainant has offices throughout the United States, Canada, Europe, and the Asia-Pacific region. The Complainant claims that it has spent a considerable amount of time and money protecting its intellectual property rights.

The Complainant owns numerous registrations of CSC trademark, including No. 2827193 the United States trademark, registered on March 30, 2004; No. 2630508 the United States trademark, registered on October 8, 2002; and No. 015194319 European Union trademark, registered on March 9, 2017.

The Complainant owns domain names incorporating its CSC trademark, including <cscglobal.com>, registered on April 3, 2005 and <cscdigitalbrand.services>, registered on July 9, 2014.

According to the information disclosed by the Registrar, the Respondent is Duc Nguyen, yoloapp, Viet Nam.

The disputed domain name was registered on October 5, 2019 and currently resolves to an inactive website. According to the Complaint, the disputed domain name resolved to a website offering services that were similar to those of the Complainant. The website also displayed the Complainant’s logo and its registered address.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to its CSC trademark. The additional terms “digital”, “brand” and “usa” are insufficient to differentiate the similarity between the disputed domain name and the Complainant’s CSC trademark.

The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Complainant finally contends that the disputed domain name was registered and is being used in bad faith.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant is the owner of numerous registrations of CSC trademark, and the Complainant’s earliest CSC trademark was registered in 2002, far predating the registration date of the disputed domain name (October 5, 2019). The Complainant has successfully established its rights upon the trademark.

It is well established that “.com” as a generic Top-Level Domain (“gTLD”) suffix is disregarded in the assessment of the similarity between the disputed domain name and the Complainant’s trademark.

The disputed domain name <cscdigitalbrandusa.com> incorporates the Complainant’s CSC trademark in its entirety. UDRP jurisprudence has established that incorporation of a complainant’s trademark in its entirety into a domain name is sufficient to establish that the domain name is identical or confusingly similar to the Complainant’s trademark. In the disputed domain name, “csc” is a recognizable part. The addition of the terms “digital”, “brand” and “usa” after the Complainant’s CSC trademark does not prevent a finding of confusing similarity between the Complainant’s CSC trademark and the disputed domain name. See BHP Billiton Innovation Pty Ltd v. Oloyi, WIPO Case No. D2017-0284.

Therefore, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s CSC trademark.

B. Rights or Legitimate Interests

The Panel is satisfied that the Complainant has made out a prima facie case that the Respondent does not have rights or legitimate interests in respect of the disputed domain name. The burden of production is hence shifted to the Respondent to rebut the Complainant’s contentions. In this case, the Respondent’s failure to submit a response to rebut the Complainant’s prima facie case is deemed to have satisfied paragraph 4(a)(ii) of the Policy according to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1. See Construction Skills Certification Scheme Limited v. Mara Figueira, WIPO Case No. D2010-0947. Further, the Panel notes that the nature of the disputed domain name carries a risk of implied affiliation with the Complainant. See WIPO Overview 3.0, section 2.5.1.

Therefore, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

The Panel notes that the disputed domain name was registered on October 5, 2019, almost 17 years later than the registration date of the Complainant’s CSC trademark. According to the Complainant’s evidence, the Panel observes that the disputed domain name resolved to a website displaying the Complainant’s CSC trademark, the Complainant’s address information, and the Complainant’s copyright declaration “© 2019 CSC Digital Brand Services. All Right Reserved.” at the bottom of the webpage. Thus, the Panel finds that the Respondent must have had actual knowledge of the Complainant and its CSC trademark and /or services at the time of registering the disputed domain name.

Furthermore, the dominant part of the disputed domain name is “cscdigitalbrandusa”, incorporating the Complainant’s CSC trademark in its entirety. The additional terms “digital”, “brand” and “usa” closely relate to the Complainant’s business. Moreover, the addition of these terms makes the disputed domain name similar to the name of one of the Complainant’s companies “CSC Digital Brand Services Group AB” and the Complainant’s domain name <cscdigitalbrand.services>. Also, the website at the disputed domain name offered services that were similar to those of the Complainant. Thus, the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of its websites or location or of products and services. See Swarovski Aktiengesellschaft v. WhoisGuard Protected / Peter D. Person, WIPO Case No. D2014-1447.

The Respondent currently passively holds the disputed domain name and resolves it to an inactive website. Considering the reputation of the Complainant and its CSC trademark, and the Respondent’s previous use of the disputed domain name, the Panel views that the Respondent’s passively holding of the disputed domain name constitutes bad faith.

For the reasons above, the Panel concludes that the disputed domain name was 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 <cscdigitalbrandusa.com> be transferred to the Complainant.

Jacob (Changjie) Chen
Sole Panelist
Date: January 19, 2020