The Complainant is Elkem ASA, Norway, represented by Zacco Norway AS, Norway.
The Respondent is Domains By Proxy, LLC, United States of America (“United States” or “USA”) / Name Redacted1.
The disputed domain name <eelkem.com> (the “Domain Name”) is registered with Wild West Domains, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 5, 2020. On August 5, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 6, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 7, 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 August 7, 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 August 10, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 30, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 31, 2020.
The Center appointed Mathias Lilleengen as the sole panelist in this matter on September 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.
The Complainant is a Norwegian company and one of the world’s leading suppliers of silicon-based advanced materials with operations throughout the value chain from quartz to specialty silicones. The Complainant is listed on the Oslo Stock exchange, and regularly features in Norwegian newspapers.
The Complainant owns several trademark registrations such as ELKEM (word marks) and E ELKEM (device marks), registered in several countries, including in the European Union and the USA, for example European Union Trade Mark No. 003447562 E ELKEM, registered on May 19, 2005. The Complainant also owns several domain names that incorporate its ELKEM trademark, for example <elkem.com>.
According to the Registrar, the Domain Name was registered on April 20, 2020. The Complainant has provided evidence that the Domain Name has been used in an email fraud attempt. At the time of drafting the Decision, the Domain Name resolved to a web page with pay-per-click links.
The Complainant provides evidence of trademark registrations. The Complainant argues that the Domain Name is identical or confusingly similar to the Complainant’s trademark as the Domain Name incorporates the Complainant’s trademarks in their entirety.
The Complainant asserts that the Respondent is not authorized to use the Complainant’s trademark. The Respondent is not commonly known by the Domain Name. The Respondent cannot establish rights in the Domain Name as it has not made any use of, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services. On the contrary, the Complainant can document that the Respondent has chosen the Domain Name based on the Complainant’s trademark in order to attempt fraud. The Domain Name has been used together with the email address “[...]@eelkem.com”, an email address confusingly similar to the email address of an actual employee of the Complainant. The fraud involved communication with a customer of the Complainant. The customer spotted the minor difference in the email address and the phone number, and reported the fraud attempt to the Complainant’s IT department.
The Complainant believes the Respondent was aware of the Complainant’s activity and trademark, taking into account the fame of the Complainant’s trademarks and the Respondent’s use of the Domain Name. By registering the Complainant’s trademark in the Domain Name, the Respondent was seeking to create a likelihood of confusion with the trademark and illegally impersonate an employee of the Complainant.
The Respondent did not reply to the Complainant’s contentions.
The Complainant has established that it has rights in the trademarks ELKEM and E ELKEM.
The test for confusing similarity involves the comparison between the trademarks and the Domain Name. In this case, the Domain Name is identical or confusingly similar to the Complainant’s trademarks. For the purpose of assessing under paragraph 4(a)(i) of the Policy, the Panel may ignore the generic Top-Level Domain (“gTLD”) “.com”; see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.
The Panel finds that the Domain Name is identical or confusingly similar to trademarks in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
The Complainant has made assertions that it has not granted any authorization to the Respondent to register the Domain Name containing the Complainant’s trademarks or otherwise make use of its marks. There is no evidence that the Respondent has registered the Domain Name as a trademark or acquired unregistered trademark rights. The Respondent cannot establish rights in the Domain Name as it has not made any use of the Domain Name in connection with a bona fide offering of goods or services. On the contrary, the Respondent’s attempt to impersonate an employee of the Complainant is fraudulent.
The Panel finds that the Complainant has made out an unrebutted case. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name in accordance with paragraph 4(a)(ii) of the Policy.
The Respondent was aware of the Complainant when it registered the Domain Name. This is evident from the fact that the Respondent is situated in Norway, and the Respondent’s use of the Domain Name. The Respondent has attempted to impersonate an employee of the Complainant. Moreover, the Respondent has taken active steps to conceal his identity by activating a privacy service.
For the reasons set out above, the Panel concludes that the Domain Name was registered and is being used in bad faith, within the meaning of paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <eelkem.com> be transferred to the Complainant.
Date: September 9, 2020
1 The Respondent appears to have used the name of a third party when registering the disputed domain name. In light of the potential identity theft, the Panel has redacted the Respondent’s name from this decision. However, the Panel has attached as Annex 1 to this decision an instruction to the Registrar regarding transfer of the disputed domain name, which includes the name of the Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this decision shall not be published due to the exceptional circumstances of this case. See Banco Bradesco S.A. v. FAST‑12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788.
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