WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Colbeck Capital Management, LLC v. Contact Privacy Inc. Customer 1245253802 / Name Redacted

Case No. D2019-2796

1. The Parties

The Complainant is Colbeck Capital Management, LLC, United States of America (“United States”), represented by Akin, Gump, Strauss, Hauer & Feld, United States.

The Respondent is Contact Privacy Inc. Customer 1245253802, Canada / Name Redacted.

2. The Domain Name and Registrar

The disputed domain name <colbeck.net> (the “Disputed Domain Name”) is registered with Google LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 14, 2019. On November 15, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 15, 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 18, 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 amendment to the Complaint on November 18, 2019.

The Center verified that the Complaint, together with the amendment to 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 the Respondent of the Complaint, and the proceedings commenced on November 19, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 9, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 10, 2019.

The Center appointed Lynda M. Braun as the sole panelist in this matter on December 12, 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.

Noting the use of the Disputed Domain Name to impersonate the employees of the Disputed Domain Name, the Panel decides to redact the name of the Registrar-confirmed registrant of the Disputed Domain Name. Attached as Annex 1 to this Decision is an instruction to the Registrar regarding transfer of the Disputed Domain Name that includes the name of the registrant, and the Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding. However, the Panel directs the Center, pursuant to paragraph 4(j) of the Policy and paragraph 16(b) of the Rules, that Annex 1 to this Decision shall not be published based on exceptional circumstances.

4. Factual Background

The Complainant, an investment management company, manages a private equity-style direct lending fund, providing investment and portfolio management services on a global scale. The Complainant’s clients have included institutions, businesses, other investment funds, and high-net-worth individuals.

Since at least as early as 2009, the Complainant has been using, and continues to use, the trademark COLBECK in connection with its investment and management services. Specifically, the Complainant owns the federally registered trademark for COLBECK, United States Registration No. 5,108,054, registered on December 27, 2016, in international classes 35 and 36 (the “COLBECK Mark”).

The Complainant has owned the domain name <colbeck.com> since 2000, which resolves to its official website at “www.colbeck.com”. The Complainant extensively and prominently uses the COLBECK Mark on its website in the dissemination, marketing, and advertising of its products and services.

The Respondent registered the Disputed Domain Name on August 14, 2019. The Disputed Domain Name did not resolve to an active website, nor does it resolve to an active website as of the writing of this Decision. In late September 2019, the Complainant became aware that the Respondent was using the Disputed Domain Name to perpetrate a fraudulent scheme by using the Disputed Domain Name in email addresses. The Respondent engaged in a series of wire transfers to move money without the Complainant’s permission from one of the Complainant’s bank accounts to an account set up by the Respondent. The Respondent accomplished this scheme by impersonating the Complainant’s Chief Operating Officer (“COO”) and Chief Financial Officer (“CFO”) to send fraudulent emails to employees of the Complainant’s bank, directing it to transfer funds to what was actually the Respondent’s account. The Respondent used the Complainant’s COO and CFO’s real names and email signature blocks, which included the Complainant’s actual contact information, to make the fraudulent emails appear authentic.

After learning of the fraudulent scheme, on October 28, 2019, the Complainant sent the Respondent a cease and desist letter and sent the Registrar an abuse notice with a copy of the cease and desist letter sent to the Respondent. The Complainant never received a response.

5. Parties’ Contentions

A. Complainant

The following are the Complainant’s contentions:

- the Disputed Domain Name is confusingly similar to the Complainant’s trademark in which the Complainant has rights;

- the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name;

- the Disputed Domain Name was registered and is being used in bad faith; and

- the Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy.

B. Respondent

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

6. Discussion and Findings

In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)(i-iii)):

(i) the Disputed Domain Name is 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 in respect of the Disputed Domain Name; and

(iii) the Disputed Domain Name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark. The Panel concludes that the Disputed Domain Name is confusingly similar to the COLBECK Mark.

The Complainant has established rights in the COLBECK Mark based on its years of use as well as its United States federal trademark for the COLBECK Mark. The general rule is that “registration of a mark is primafacie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive”. See CWI, Inc. v. Domain Administrator c/o Dynadot, WIPO Case No. D2015-1734. The Respondent has not rebutted this presumption, and therefore the Panel finds that the Complainant has enforceable rights in the COLBECK Mark.

The Disputed Domain Name <colbeck.net> consists of the COLBECK Mark in its entirety, followed by the generic Top-Level Domain (“gTLD”) “.net”. Prior UDRP panels have held that “when a domain name wholly incorporates a complainant’s registered mark, that is sufficient to establish identity or confusing similarity for the purposes of the Policy”. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.

Finally, the addition of a gTLD such as “.net” in a domain name may be technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182.

Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant.

B. Rights or Legitimate Interests

Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such a prima facie case is made, 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 Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name.

In this case, the Panel finds that the Complainant has made out a prima facie case. In particular, the Respondent has not submitted any arguments or evidence to rebut the Complainant’s prima facie case and there is no evidence in the record that the Respondent is in any way associated with the Complainant. Furthermore, the Complainant has not authorized, licensed or otherwise permitted the Respondent to use its trademark. Finally, the name of the Respondent has no apparent connection to the Disputed Domain Name that would suggest that the Respondent is related to a trademark or trade name in which the Respondent has rights. The Respondent is using the Disputed Domain Name solely for the purpose of perpetrating a financial fraud directed at the Complainant. “Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent.” WIPO Overview 3.0, section 2.13.1.

Thus, the Panel finds that the Respondent does not have rights or legitimate interests in respect of the Disputed Domain Name.

Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant.

C. Registered and Used in Bad Faith

This Panel finds that, based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith pursuant to paragraph 4(b) of the Policy.

First, as demonstrated above, the Respondent is using the Disputed Domain Name to perpetrate an impersonation scheme aimed at defrauding the Complainant by moving money from its bank account to an account belonging to the Respondent. “As noted in section 2.13.1 [of WIPO Overview 3.0], given that the use of a domain name for [per se] illegitimate activity such as the sale of counterfeit goods or phishing can never confer rights or legitimate interests on a respondent, such behavior is manifestly considered evidence of bad faith.” WIPO Overview 3.0, section 3.1.4.

“Panels have held that the use of a domain name for purposes other than to host a website may constitute bad faith. Such purposes include sending email, phishing, identity theft, or malware distribution….Many such cases involve the respondent’s use of the 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.” WIPO Overview 3.0, section 3.4.

In this case, the Panel concludes that the Respondent is using the Disputed Domain Name for an illegitimate purpose that demonstrates knowledge of the Complainant’s trademark rights and a bad faith intent to register and use the Disputed Domain Name. Specifically, the Respondent is using the Disputed Domain Name to commit financial fraud by using a fraudulent email to move money from the Complainant’s bank account to the Respondent’s account. See, e.g., Tetra Laval Holdings & Finance S.A. v. Yusufu Mieraili, WIPO Case No. D2017-1943 (concluding that the respondent’s use of the disputed domain name to send a phishing email “suggests that the [r]espondent registered the disputed domain name with a view to committing some form of financial fraud.”).

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 <colbeck.net> be transferred to the Complainant.

Lynda M. Braun
Sole Panelist
Date: December 18, 2019