WIPO Arbitration Mediation Center

ADMINISTRATIVE PANEL DECISION

Wärtsilä Technology Oy Ab v. WhoisGuard Protected / Nelson Dito, Nelson Dito LLC

Case No. D2020-1230

1. The Parties

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

The Respondent is WhoisGuard Protected / Nelson Dito, Nelson Dito LLC, Nigeria.

2. The Domain Name and Registrar

The disputed domain name <warstsila.com> (the “Disputed Domain Name”) 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 15, 2020. On May 15, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On the same day, 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 22, 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 May 27, 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 27, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 16, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 18, 2020.

The Center appointed Douglas M. Isenberg as the sole panelist in this matter on July 1, 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 states that it is “a Finnish corporation which operates in the field of smart technologies and complete lifecycle solutions for the marine and energy markets”; that it “was established in and has been operating continually since 1834”; that its “activities are centered around two businesses”, one of which “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” and the other of which “is engaged in providing services and solutions to enhance the business performance of power generation companies”; that it “had net sales of EUR 5.2 billion with approximately 19,000 employees” in 2019; and that it “has a strong international presence with operations in over 200 locations across more than 80 countries”.

The Complainant states, and provides evidence to support, that it is the owner of multiple registrations for the trademark WARTSILA (or WÄRTSILÄ) in various jurisdictions, including U.S. Reg. No. 2,078,313 for WARTSILA (registered July 15, 1997) for use in connection with “diesel motors and internal combustion engines used in energy-production power plants and in ships as main propulsion engines and as back up or auxiliary engines and parts for the foregoing”. These trademarks are referred to herein as the “WARTSILA Trademark”.

The Complainant states that it is the registrant of the domain name <wartsila.com>, which was created on January 5, 1996, and which the Complainant uses in connection with its main website.

The Disputed Domain Name was created on October 3, 2019. The Complainant states, and provides evidence to support, that the Disputed Domain Name “has been used to send out email communications purporting to originate from the Complainant, specifically, a senior employee from the Complainant’s business, to contact clients of the Complainant in an attempt to request money transfers to an unauthorized bank account which claims to be affiliated with the Complainant”.

5. Parties’ Contentions

A. Complainant

- The Disputed Domain Name is confusingly similar to the WARTSILA Trademark because the WARTSILA Trademark is “recognizable within the limits of the second level of the Disputed Domain Name” despite the addition of the letter “s” in the middle of the Disputed Domain Name and because “[i]t is a general consensus that a domain name which consists of a common, obvious or intentional misspelling of a trademark is considered by Panels to be confusingly similar, for the purposes of the first element”.

- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “[t]o the best of the Complainant’s knowledge, the Respondent has not registered any trademarks for the term ‘WÄRTSILÄ’/’WARTSILA’ and there is no evidence that the Respondent holds any unregistered right to the term ‘WÄRTSILÄ’/’WARTSILA’ Moreover, the Respondent has not received any license from the Complainant to use a domain name which features the ‘WÄRTSILÄ’/’WARTSILA’ trademark”; “although the Respondent does not use the Disputed Domain Name to host an active website, the Respondent has used the Disputed Domain Name to facilitate email phishing attacks”; “attempts to pass off as the Complainant in furtherance of a phishing scheme does not confer a right or legitimate interest”; and “the Respondent is not known, nor has it ever been known as ‘WÄRTSILÄ’/’WARTSILA’“ because the mark “is distinctive and not used in commerce other than by the Complainant”.

- The Disputed Domain Name was registered and is being used in bad faith because, inter alia, “the Disputed Domain Name consists of an intentional misspelling of the Complainant’s trademark” and such “[t]yposquatting is a known practice whereby a domain name registrant deliberately introduces typographical errors or misspellings into a trademark mark and uses the resulting malformed string in a domain name hoping that Internet users with either inadvertently type the wrong domain name and/or be confused by the domain name, as to whether it is associated with the Complainant”; “Respondent has used the Disputed Domain Name with the intention to profit off the likelihood that users, on the receiving end of the fraudulent emails, will be confused as to the source, sponsorship or affiliation of the Disputed Domain Name”.

B. Respondent

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

6. Discussion and Findings

Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name has been registered and is being used in bad faith. See Policy, paragraph 4(a).

A. Identical or Confusingly Similar

Based upon the trademark registrations cited by the Complainant, it is apparent that the Complainant has rights in and to the WARTSILA Trademark.

As to whether the Disputed Domain Name is identical or confusingly similar to the WARTSILA Trademark, the relevant comparison to be made is with the second-level portion of the Disputed Domain Name only (i.e., “warstsila”) because “[t]he applicable Top-Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test”. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.1.

The Disputed Domain Name contains the WARTSILA Trademark in its entirety, adding only a single letter “s” in the middle of the Disputed Domain Name. As set forth in section 1.7 of 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”. Further, as set forth in section 1.9 of WIPO Overview 3.0, “[a] domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element”.

Accordingly, the Panel finds that the Complainant has proven the first element of the Policy.

B. Rights or Legitimate Interests

The Complainant has argued that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “[t]o the best of the Complainant’s knowledge, the Respondent has not registered any trademarks for the term ‘WÄRTSILÄ’/’WARTSILA’ and there is no evidence that the Respondent holds any unregistered right to the term ‘WÄRTSILÄ’/’WARTSILA’ Moreover, the Respondent has not received any license from the Complainant to use a domain name which features the ‘WÄRTSILÄ’/’WARTSILA’ trademark”; “although the Respondent does not use the Disputed Domain Name to host an active website, the Respondent has used the Disputed Domain Name to facilitate email phishing attacks”; “attempts to pass off as the Complainant in furtherance of a phishing scheme does not confer a right or legitimate interest”; and “the Respondent is not known, nor has it ever been known as ‘WÄRTSILÄ’/’WARTSILA’” because the mark “is distinctive and not used in commerce other than by the Complainant.”

WIPO Overview 3.0, section 2.1, states: “[w]hile 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.”

The Panel finds that the Complainant has established its prima facie case and without any evidence from the Respondent to the contrary, the Panel is satisfied that the Complainant has satisfied the second element of the Policy.

C. Registered and Used in Bad Faith

Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. See Policy, paragraph 4(b).

As set forth above, the Complainant states, and provides evidence to support, that the Disputed Domain Name “has been used to send out email communications purporting to originate from the Complainant, specifically, a senior employee from the Complainant’s business, to contact clients of the Complainant in an attempt to request money transfers to an unauthorized bank account which claims to be affiliated with the Complainant”. This clearly creates a “likelihood of confusion” leading to bad faith under paragraph 4(b)(iv) of the Policy. Further, “fraudulently impersonating” a complainant has often been found to constitute bad faith. See, e.g., The Dow Chemical Company v. dowaychemical [email protected] +86.7508126859, WIPO Case No. D2008-1078. Furthermore, sending emails that appear to be from the Complainant under the facts of this case is a type of “phishing” that is “manifestly considered evidence of bad faith”. See WIPO Overview 3.0, section 3.1.4.

Accordingly, the Panel finds that the Complainant has proven the third element of the Policy.

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 <warstsila.com> be transferred to the Complainant.

Douglas M. Isenberg
Sole Panelist
Date: July 15, 2020