WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Dexus Holdings Pty Ltd v. WhoisGuard Protected, WhoisGuard, Inc./ Dexus invest, dexusinvest

Case No. D2020-1939

1. The Parties

Complainant is Dexus Holdings Pty Ltd, Australia, represented by CSC Digital Brand Services Group AB, Sweden.

Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Dexus Invest, dexusinvest, Nigeria.

2. The Domain Name and Registrar

The disputed domain name <dexusinvest.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 July 24, 2020. On July 24, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 24, 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 named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on August 6, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. On August 7, 2020, the Center sent an email communication to the Parties notifying that the disputed domain name is set to expire on October 9, 2020. Complainant filed an amended Complaint on August 11, 2020. On the same date, the Center received an email communication from Complainant confirming that the disputed domain name has been renewed.

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 Respondent of the Complaint, and the proceedings commenced on August 12, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 1, 2020. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 2, 2020.

The Center appointed Phillip V. Marano as the sole panelist in this matter on September 11, 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

Complainant is a subsidiary under the umbrella of Dexus Property Group, an Australian real estate investment trust listed on the Australian stock exchange. Complainant owns valid and subsisting registrations for the DEXUS trademark in numerous countries, including in Australia, China, New Zealand, the United Kingdom and the United States of America, such as registration no. 3519724 registered on October 21, 2008.

Respondent registered the disputed domain name on October 9, 2019. At the time of this Complaint, the disputed domain name to resolve to an “investment platform website” for “Dexus Invest, Investment Solutions”, an entity purportedly registered as “DexusInvest PLC” in the United Kingdom, as well as “registered in the Australia Company Address – 98 Roseda-Tinamba Road, HEDLEY, Victoria”.

5. Parties’ Contentions

A. Complainant

Complainant asserts ownership of the DEXUS trademark and has adduced evidence of trademark registrations in numerous countries around the world including in Australia and the United Kingdom where Respondent’s website purports it is located, with earliest priority dating back to February 21, 2008. The disputed domain name is confusingly similar to Complainant’s DEXUS trademark, according to Complainant, because Respondent has added the descriptive word “invest” to Complainant’s DEXUS trademark. “Invest” and investment management are one of Complainant’s main sources of activity.

i. Complainant further asserts that Respondent lacks any rights or legitimate interests in the disputed domain name based on:

ii. the lack of any permission, sponsorship, or affiliation as between Complainant and Respondent;

iii. the lack of any evidence that Respondent is legitimately known by the name DEXUS, taking into account Respondent’s use of a proxy registration service, and the absence of any entity registered as “Dexus Invest” with the Nigerian Corporate Affairs Commission; and

iv. Respondent’s registration and use of the disputed domain name in connection with investment management services in direct competition with Complainant, all years after Complainant acquired rights in the DEXUS trademark.

Complainant argues that Respondent has registered and used the disputed domain name in bad faith for numerous reasons, including:

i. the fame of the Complainant’s DEXUS trademark, plus the purported location of Respondent in Australia, make it illogical to believe that Respondent has not specifically targeted Complainant;

ii. Respondent’s website offers false information about Respondent’s registration as an entity licensed in Australia and the United Kingdom;

iii. Respondent’s website mirrors another, potentially fraudulent phishing website, that resolves through the <cryptbox.biz> domain name;

iv. Respondent’s use of the DEXUS trademark with the related term “invest” in connection with investment services that compete with Complainant clearly targets Complainant in an attempt to mislead Internet users;

v. Respondent used a proxy registration service to hide its identity; and

vi. Respondent ignored Complainant’s cease and desist letter.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

In order to succeed in its Complaint, Complainant must establish in accordance with paragraph 4(a) of the Policy:

i. that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights;

ii. that Respondent has no rights or legitimate interests in respect of the disputed domain name; and

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

Although Respondent did not reply to Complainant’s contentions, the burden remains with Complainant to establish by a balance of probabilities, or a preponderance of the evidence, all three elements of paragraph 4(a) of the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.3 (“ […] a respondent’s default would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true. […] UDRP […] panels have been prepared to draw certain inferences in light of the particular facts and circumstances of the case, e.g. where a particular conclusion is prima facie obvious, where an explanation by the respondent is called for but is not forthcoming, or where no other plausible conclusion is apparent.”); The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064 (“The Respondent’s default does not automatically result in a decision in favor of the complainant. The Complainant must still prove each of the three elements required by Policy paragraph 4(a)”).

A. Identical or Confusingly Similar

Ownership of a nationally or regionally registered trademark serves as prima facie evidence that Complainant has trademark rights for the purposes of standing to file this Complaint. WIPO Overview 3.0 , section 1.2.1 . Complainant submitted evidence that the DEXUS trademark has been registered in numerous countries with earliest priority dating back to February 21, 2008, more than eleven years before the disputed domain name was registered by Respondent. Thus, the Panel finds that Complainant’s rights in the DEXUS trademark have been established pursuant to the first element of the Policy.

The only remaining question under the first element of the Policy is whether the disputed domain name is identical or confusingly similar to Complainant’s DEXUS trademark. The Panel finds that the disputed domain name is confusingly similar to Complainant’s DEXUS trademark because, disregarding the “.com” generic Top-Level Domain (“gTLD”), the trademark is contained in its entirety within the disputed domain name, see WIPO Overview 3.0 , section 1.7 . (“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 domain name […]. [i]n 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...”). Such gTLDs, like “.com” in the disputed domain name, are generally viewed as a standard registration requirement and are disregarded under the first element, see WIPO Overview 3.0 , section 1.11 .

This confusing similarity is not dispelled by combination of Complainant’s DEXUS trademark with the descriptive term “invest”, see WIPO Overview , section 1.8 (Additional terms “whether descriptive, geographic, pejorative, meaningless, or otherwise” do not prevent a finding of confusing similarity where the relevant trademark is recognizable within the disputed domain name); see also AT&T Corp. v. WorldclassMedia.com, WIPO Case No. D2000-0553 (“Each of the domain names in dispute comprises a portion identical to [the ATT trademark] in which the Complainant has rights, together with a portion comprising a geographic qualifier, which is insufficient to prevent the composite domain name from being confusingly similar to Complainant’s [ATT trademark]”) OSRAM GmbH v. Cong Ty Co Phan Dau Tu Xay Dung Va Cong Nghe Viet Nam, WIPO Case No. D2017-1583 (“[T]he addition of the letters ‘hbg’ to the trademark OSRAM does not prevent a finding of confusing similarity between the Disputed Domain Name and the said trademark.”).

In view of Complainant’s registration for the DEXUS trademark, and Respondent’s incorporation of that trademark in its entirety in the disputed domain name, the Panel concludes that Complainant has established the first element of the Policy.

B. Rights or Legitimate Interests

Complainant must make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name, shifting the burden of production on this element to Respondent to come forward with evidence demonstrating such rights or legitimate interests. Where, as in this Complaint, Respondent fails to come forward with any relevant evidence, Complainant is deemed to have satisfied the second element of the Policy, see WIPO Overview , section 2.1 .

The Panel lacks satisfactory evidence to conclude that Respondent, identified by registration data for the disputed domain name first as “WhoisGuard Protected”, and later revealed as “Dexus Invest”, is truly known by the disputed domain name. In fact, evidence submitted by Complainant, and independent searches of incorporation databases performed by the Panel, confirm that there is no entity registered as “Dexus Invest” in either Australia, Nigeria, or the United Kingdom, contrary to the representations made on Respondent’s website.

Although Complainant has not proffered direct evidence of illegal or malicious conduct on the part of Respondent, in conjunction with the misrepresentations made on Respondent’s website and Respondent’s mirror website at <cryptbox.biz>, Complainant has alleged that Respondent is engaged in phishing for sensitive financial information. In the absence of any response from Respondent, as well as in view of the totality of Complainant’s evidence establishing Respondent’s bad faith registration and use of the disputed domain name, it is clear that Respondent is engaged in fraudulent activity. UDRP panels have categorically held that use of a domain name for fraudulent or illegal activity – including the impersonation of the complainant and other types of fraud – can never confer rights or legitimate interests on a respondent. Circumstantial evidence can support a credible claim made by Complainant asserting Respondent is engaged in such illegal activity, including that Respondent has masked its identity to avoid being contactable, or that Respondent’s website has been suspended by its hosting provider, see WIPO Overview 3.0 , section 2.13 . See e.g. Graybar Services Inc. v. Graybar Elec, Grayberinc Lawrenge, WIPO Case No. D2009-1017 (“Respondent has used the domain name to pretend that it is the Complainant and in particular to create false emails pretending that they are genuine emails coming from the Complainant and one of its senior executives”) See also The Commissioners for HM Revenue and Customs v. Name Redacted, WIPO Case No. D2017-0501 (“In addition, the disputed domain names […] have had their web hosting suspended as a result of fraudulent activities. This is evidence of bad faith registration and use of the disputed domain names.”) To this end, the second and third elements of the Policy may be assessed together where clear indicia of bad faith suggests that there cannot be any Respondent rights or legitimate interests, see WIPO Overview 3.0 , section 2.15 .

In view of Complainant’s credible argument that Respondent’s website merely phishes for sensitive financial data, Respondent’s use of a proxy registration service to mask its identity, Respondent’s failure to respond to Complainant’s cease and desist letter, and Respondent’s failure to respond to this Complaint or take any part in these proceedings, the Panel concludes that Complainant has established the second element of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy proscribes the following non-exhaustive circumstances as evidence of bad faith registration and use of the disputed domain name:

i. Circumstances indicating that Respondent has registered or Respondent has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to Complainant who is the owner of the trademark to a competitor of that Complainant, for valuable consideration in excess of Respondent’s documented out of pocket costs directly related to the disputed domain name; or

ii. Respondent has registered the disputed domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

iii. Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

iv. By using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

Previous UDRP panels have categorically held that registration and use of a domain name for illegal activity – including impersonation, passing off, and other types of fraud – is manifestly considered evidence of bad faith within paragraph 4(b)(iv) of the Policy, see WIPO Overview 3.0 , section 3.1.3 . Use of the disputed domain name by Respondent to pretend that it is Complainant or that it is associated with Complainant “brings the case within the provisions of paragraph 4(b)(iii) of the Policy, for it shows Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor, namely Complainant”. Graybar Services Inc. v. Graybar Elec, Grayberinc Lawrenge, supra; see also GEA Group Aktiengesellschaft v. J. D., WIPO Case No. D2014-0357 (concluding that Respondent’s use of the disputed domain name to disrupt the Complainant’s business by using it to impersonate the Complainant for commercial gain was evidence of respondent’s bad faith registration and use of the disputed domain).

Wrongful use of others’ trademarks to extort information from unsuspecting and unwary people, by using the disputed domain name for phishing activity, is considered abusive registration of the disputed domain name under the Policy.See CareerBuilder, LLC v. Stephen Baker, WIPO Case No. D2005-0251; The Boots Company, PLC v. The programmer adviser, WIPO Case No. D2009-1383; WSI Holdings Ltd. v. WSI House, WIPO Case No. D2004-1089 (“Respondent appears to be engaged in ‘phishing’ for mistaken potential employees of the Complainant […] Respondent (1) has adopted a confusingly similar domain name, (2) it has used the trade dress of the Complainant’s website, and (3) it has sought to attract users to its site by creating confusion between its site and the Complainant’s. It has clearly engaged in activity which fulfils the bad faith requirements of Paragraph 4(b)(iv) of the Policy.”); Go Daddy Operating Company, LLC v. Wu Yanmei, WIPO Case No. D2015-0177 (emails sent by the respondent from domain names using the complainant’s trademark in an attempt to obtain complainant’s customer information was held to be use of the disputed domain name for a phishing scheme and consequently bad faith under the Policy); AB Electrolux v. Piotr Pardo, WIPO Case No. D2017-0368 (engaging in fraudulent email phishing activities through unauthorized use of a trademark for obtaining data or deriving information is construed as bad faith under the Policy).

Furthermore, where it appears that a respondent employs a privacy or proxy service merely to avoid being notified of a UDRP proceeding filed against it, UDRP panels tend to find that this supports an inference of bad faith, see WIPO Overview section 3.6 . Use of a privacy or proxy registration service to shield a respondent’s identity and elude or frustrate enforcement efforts by a legitimate complainant demonstrates bad-faith use and registration of a disputed domain name. See Fifth Third Bancorp v. Secure Whois Information Service, WIPO Case No. D2006-0696 (the use of a proxy registration service to avoid disclosing the identity of the real party in interest is also consistent with an inference of bad faith when combined with other evidence of evasive, illegal, or irresponsible conduct).

Finally, the Panel further concludes that failure by Respondent to answer Complainant’s cease and desist letter “suggests that Respondent was aware that it has no rights or legitimate interests in the disputed domain name, and that the disputed domain name has been registered and is being used in bad faith”. See America Online, Inc. v. Antonio R. Diaz, WIPO Case No. D2000-1460 (internal citations omitted). Seealso Spyros Michopoulos S.A. v. John Tolias, ToJo Enterprises, WIPO Case No. D2008-1003. Furthermore, the failure of Respondent to answer this Complaint or take any part in the present proceedings, in the view of the Panel, is another indication of bad faith on the part of Respondent. See Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787.

In view of Complainant’s credible argument that Respondent’s website merely phishes for sensitive financial data, Respondent’s failure to respond to Complainant’s cease and desist correspondence or this Complaint, and Respondent’s use of a proxy registration service to mask its identity, the Panel concludes that Complainant has established 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 <dexusinvest.com> be transferred to Complainant.

Phillip V. Marano
Sole Panelist
Date: September 25, 2020