WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Wärtsilä Technology Oy Ab v. WhoisGuard Protected, WhoisGuard, Inc. / Fred Tapper

Case No. D2020-1146

1. The Parties

The Complainant is Wärtsilä Technology Oy Ab, Finland, represented by SafeNames Ltd., United Kingdom.

The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Fred Tapper, United States of America.

2. The Domain Name and Registrar

The disputed domain name <wartsila-group.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 May 7, 2020. On May 7, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 7, 2020, 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 April 18, 2020 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 April 19, 2020.

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 20, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 9, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 22, 2020.

The Center appointed Johan Sjöbeck as the sole panelist in this matter on July 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 is a Finnish corporation, which operates in the field of smart technologies and complete lifecycle solutions for the marine and energy markets.

The Complainant has submitted evidence that it is the owner of a number of trademark registrations, including the following:

WÄRTSILÄ, United States of America trademark registration number 2078313 and registration date July 15, 1997, covering class 7.

WÄRTSILÄ, European Union Trade Mark (“EUTM”) registration number 000838466 and registration date February 21, 2000, for goods and services in class 7, 12, and 37.

WÄRTSILÄ, International trademark registration number 1005789 and registration date May 22, 2009, for goods and services in class 7, 9, 11, 12, 35, 37, 41, and 42.

WÄRTSILÄ, EUTM registration number 008304149 and registration date November 25, 2009, for goods and services in class 7, 9, 11, 12, 35, 37, 41, and 42.

WARTSILA, EUTM registration number 011765294 and registration date September 18, 2013, for goods and services in class 7, 9, 11, 12, 35, 37, 41, and 42.

The disputed domain name <wartsila-group.com> was registered by the Respondent on April 13, 2020. The disputed domain name resolves to a parking page containing pay-per-click links.

5. Parties’ Contentions

A. Complainant

The Complainant is a Finnish corporation, which operates in the field of smart technologies and complete lifecycle solutions for the marine and energy markets. Within this sector, it places a strong emphasis on sustainable innovation, efficiency and data analytics to maximize the environmental and economic performance of its customers’ vessels and power plants. As of 2019, the Complainant had net sales of EUR 5.2 billion with approximately 19,000 employees. The Complainant has a strong international presence with operations in over 200 locations across more than 80 countries. The Complainant’s activities are centered around two businesses: “Wärtsilä Marine” and “Wärtsilä Energy”. The Complainant’s Wärtsilä Marine business is concerned with enhancing the business of its marine and oil & gas industry customers by providing innovative products and integrated solutions that eliminate process inefficiencies. It strives for decarbonization and ecosystem thinking through the implementation of environmentally sustainable solutions. The Complainant’s Wärtsilä Energy business is engaged in providing services and solutions to enhance the business performance of power generation companies. It achieves this by offering, among other solutions, energy management and storage systems, as well as lifecycle services to improve the efficiency and performance of power plants.

The Complainant was established in, and has been operating continually, since 1834. In its early years, the Complainant operated as a sawmill and iron works company. It gradually moved into other fields and began producing its first commercial engines in 1959. In 2001, the Complainant expanded into biopower and was later deemed among the 100 most sustainable corporations in the world. The Complainant has made a number of acquisitions over the course of its history. The mark WÄRTSILÄ stands for “The passionate and creative partner who gets things done”.

In accordance with the Policy, the Complainant has brought this Complaint on the basis of its substantive rights and interests in the trademarks WÄRTSILÄ and WARTSILA. It contends that it has established such rights and interests through exclusive, extensive and consistent use of the term within the global marketplace. The Complainant has spent a considerable amount of time, money and effort promoting, marketing and using the WÄRTSILÄ and WARTSILA trademarks to identify and distinguish its services domestically and internationally. As a result of this, the WÄRTSILÄ and WARTSILA trademarks have acquired distinctiveness in the market worldwide with customers that rely on the brand’s name and quality.

The Complainant operates from its main website, <wartsila.com>, which it uses to advertise its products and services, in addition to promoting its WÄRTSILÄ and WARTSILA trademarks globally. The Complainant holds a portfolio of over 400 active domain name registrations. The Complainant has also established a social media presence and uses the WÄRTSILÄ and WARTSILA trademarks to promote its services.

The Complainant holds numerous trademark registrations for the WÄRTSILÄ term covering multiple jurisdictions. The Complainant has over 40 active trademark registrations, the oldest of which date from the mid-1990s. The Complainant has been a complainant in two previous UDRP disputes and previous panels have recognized the value of the WÄRTSILÄ trademark and its association with the Complainant.

A side-by-side comparison of the disputed domain name <wartsila-group.com> and the trademarks WÄRTSILÄ and WARTSILA indicates that there is a confusing similarity. The disputed domain name incorporates the Complainant’s trademark in its entirety, positioned immediately before the word “group”. It is accepted that where the relevant mark is recognizable within the disputed domain name, the addition of other terms does not prevent a finding of confusing similarity under the first element.

The Respondent’s conjunction of the trademark with the independently generic term “group” serves to create further confusion in the minds of Internet users. The appearance of “group” after the Complainant’s distinctive brand has connotations to a “corporate group”, referring collectively to any or all corresponding parent or subsidiary corporations. The Complainant therefore submits that users familiar with the Complainant’s brand will assume the disputed domain name is under its control.

The Respondent lacks rights and legitimate interests in the disputed domain name. To the best of the Complainant’s knowledge, the Respondent has not registered any trademarks for the terms “Wärtsilä” and “Wartsila” or “Wartsila-Group”. The Complainant also cannot find any evidence to suggest the Respondent retains unregistered trademark rights in “Wärtsilä” and “Wartsila” or “Wartsila-Group”. Moreover, the Respondent has not been licensed by the Complainant to use domain names featuring any of the Complainant’s trademarks.

The Respondent has not used, nor prepared to use, the disputed domain name in connection with a bona fide offering of goods or services. Prior to notice of this Complaint, the Respondent used the disputed domain name to impersonate the Complainant’s President and CEO with the intention of deriving commercial gain from the President and CEO of one of its clients. Specifically, the Respondent requested financial support from the Complainant’s client to cover purported expenses implicitly associated with the Covid-19 outbreak. This request was followed by an assertion that it would reimburse the Complainant “on or before next week Tuesday”. The Respondent has engaged in the severest form of phishing, often referred to as “spear phishing”, by specifically addressing, and tailoring, its communications to the Complainant’s client. The Respondent has impersonated the Complainant’s President and CEO by replicating the latter’s name at the start of its email address (e.g. “[...]@wartsila-group.com”) and in the footer of all correspondence. The disputed domain name currently resolves to a parking page containing pay-per-click links. Many of these links capitalize on the Complainant’s reputation by redirecting Internet users to websites, which offer competing goods and services. Given the above, the Complainant asserts that the Respondent cannot demonstrate that it has used, or made demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy.

The Respondent is not making a legitimate noncommercial use, nor a fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the WÄRTSILÄ and WARTSILA trademarks. The Respondent’s use of the disputed domain name for phishing, as an illegal activity, clearly cannot constitute fair use. Its use of the disputed domain name, purporting to be the Complainant’s President and CEO, to encourage the transfer of funds to an unauthorized bank account, cannot constitute legitimate noncommercial use. The Complainant has presented a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy.

The Respondent registered and is using the disputed domain in bad faith, in accordance with paragraph 4(a)(iii) of the Policy. The Complainant’s earliest trademark registrations for WÄRTSILÄ predate the disputed domain name registration by over 20 years. The Complainant has developed substantial goodwill and recognition over its 180-year history, operating in over 200 locations across more than 80 countries. Given the above and in light of the evidence surrounding the disputed domain name’s use, the Respondent unequivocally knew of the Complainant’s trademark and international reputation. This is also clearly reinforced by the fact that the phishing attack began one day after the disputed domain name was registered. The Respondent intentionally attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s WÄRTSILÄ and WARTSILA trademarks.

The Respondent’s use of the disputed domain name within the context of email communications heightens the likelihood of initial confusion. This is because the Respondent’s emails contain accurate details of the Complainant’s President and CEO, who it has been attempting to impersonate. The use of the word “Group” in the footer title “President & Group CEO”, is not included in the CEO’s title as described on the Complainant’s official website. The Complainant suggests the Respondent added this word to distract its recipient from noticing that official email addresses of the Complainant’s employees end in “@wartsila.com”. The repetition of the word “Group” in the footer of the Respondent’s emails has the effect of psychological reinforcement. The communications also show that the Respondent is taking advantage of prior relations between both CEOs. The Respondent addresses the Complainant’s client by his first name with an initial, short message that engages the recipient’s trust. The Complainant’s client’s initial response, also addressed to the Complainant’s CEO by his first name, is demonstrative of actual confusion caused by the Respondent’s deception. The Respondent leverages the Complainant’s client’s trust by making an emotional appeal for financial aid, capitalizing on the pretext of the current Covid-19 crisis. The Respondent’s deceptive practices to gain the Complainant’s client’s trust, in order to derive financial gain, constitutes strong evidence of bad faith use under paragraph 4(b)(iv) of the Policy.

In summary, the Respondent has intentionally attempted to attract Internet users by using, and relying on, the confusingly similar disputed domain name in conjunction with accurate details of the Complainant’s President and CEO in order to create a likelihood of confusion as to the source of the Respondent’s communications.

B. Respondent

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

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:

(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 the disputed domain name; and

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

A. Identical or Confusingly Similar

The Complainant is, according to the submitted evidence, the owner of the registered trademarks WÄRTSILÄ and WARTSILA. The disputed domain name <wartsila-group.com> incorporates the WARTSILA trademark in its entirety with the addition of a hyphen and the descriptive term “group”. In addition to the above, the disputed domain name contains the trademark WÄRTSILÄ in its entirety, save for the non-ASCII character “ä” which is replaced by the letter “a” in the disputed domain name. The addition of the descriptive term “group” does not prevent a finding of confusing similarity under the first element test. It is standard practice to disregard the generic Top-Level Domain (“gTLD”) under the confusingly similar test.

Having the above in mind, the Panel concludes that the disputed domain name <wartsila-group.com> is confusingly similar to the Complainant’s trademarks WÄRTSILÄ and WARTSILA and that the Complainant has proven the requirement under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant must show that the Respondent has no rights or legitimate interests with respect to the disputed domain name. The Respondent may establish rights or legitimate interests in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:

(i) that the Respondent uses or has made 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 prior to the dispute; or

(ii) that the Respondent is commonly known by the disputed domain name, even if the Respondent has not acquired any trademark rights; or

(iii) that 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.

The Complainant’s trademark registrations for WÄRTSILÄ and WARTSILA predate the Respondent’s registration of the disputed domain name <wartsila-group.com>. The Complainant has not licensed, approved or in any way consented to the Respondent’s registration and use of the trademarks in the disputed domain name.

There is no evidence in the case indicating that the Respondent has made any preparations to use the disputed domain name <wartsila-group.com> in connection with a bona fide offering of goods or services prior to the dispute. On the contrary, the submitted evidence demonstrates that the Respondent has been using the disputed domain name to impersonate the CEO and President of the Complainant in an attempt to lure a third party into making a financial payment to the Respondent using the Covid-19 crisis as a pretext. The Respondent’s use of the disputed domain name for fraudulent purposes, such as impersonation and phishing, cannot be held to constitute a bona fide use of the disputed domain name.

Although given the opportunity, the Respondent has not rebutted the Complainant’s prima facie case. It has not submitted any evidence indicating that the Respondent is the owner of any trademark or that the Respondent is commonly known by the disputed domain name. Furthermore, there is no evidence indicating that the Respondent intends to make 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.

The Respondent has failed to invoke any circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy or otherwise, any rights or legitimate interests in respect of the disputed domain name. Thus, there is no evidence in the case that refutes the Complainant’s submissions, and the Panel concludes that the Complainant has also proven the requirement under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include without limitation:

(i) circumstances indicating the disputed domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the disputed domain name; or

(ii) circumstances indicating that the disputed domain name was registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding disputed domain name, provided there is a pattern of such conduct; or

(iii) circumstances indicating that the disputed domain name was registered primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the disputed domain name has intentionally been used in an attempted to attract, for commercial gain, Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on that website or location.

The Complainant’s trademark registrations WÄRTSILÄ and WARTSILA predate the registration of the disputed domain name <wartsila-group.com>. Considering that the Complainant has a 180-year old history and employs 19,000 people in over 80 countries worldwide, the Panel finds it unlikely that the Respondent did not have the Complainant in mind when registering and using the disputed domain name. In fact, the submitted evidence in the case demonstrates that the Respondent specifically targeted the Complainant for a phishing and impersonation campaign. Only one day after the Respondent registered the disputed domain name, the Respondent used the disputed domain name to impersonate the Complainant’s President and CEO, in order to lure a third party to make a financial payment to the Respondent.

By using the disputed domain name in the above-mentioned way, the Respondent has intentionally attempted to mislead Internet users by creating a confusion as to the source of the disputed domain name and the Respondent’s email communications in order to illegally obtain a payment from an unsuspecting third party. Accordingly, the Panel finds that the Respondent’s registration and use of the disputed domain name <wartsila-group.com> for purposes of sending fraudulent emails constitutes bad faith under paragraph 4(b)(iv) of the Policy.

There is no evidence in the case record that refutes the Complainant’s submissions.

The Panel concludes that the Complainant has proven the requirements under paragraph 4(a)(iii) of the Policy and that the disputed domain name has been registered and 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 <wartsila-group.com> shall be transferred to the Complainant.

Johan Sjöbeck
Sole Panelist
Date: July 15, 2020