The Complainant is Dycom Industries, Inc., United States of America (“United States”), represented by Shearman & Sterling LLP, United States.
The Respondent is Name Redacted,1 United States.
The disputed domain name <dycomind.net> is registered with Gandi SAS (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 12, 2020. On August 13, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 14, 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 July 14, 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 July 14, 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 24, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 13, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 14, 2020.
The Center appointed Evan D. Brown as the sole panelist in this matter on September 18, 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 Respondent appears to have used the name of an officer of the Complainant when registering the disputed domain name. In light of this apparent identity theft, the Panel has redacted the Respondent’s name corresponding to an officer of the Complainant 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 pursuant to the Registrar’s verification. 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. See ASOS plc. v. Name Redacted, WIPO Case No. D2017-1520; Banco Bradesco S.A. v. FAST-12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788; Aquent LLC v. Registration Private, Domains By Proxy, LLC / Name Redacted, WIPO Case No. D2019-0689.
The Complainant is in the business of installation and maintenance of various sorts of infrastructure elements such as utility, cable, and gas distribution systems. It owns several trademarks, including the word mark DYCOM, which is the subject of United States Reg. No. 3193496, issued on January 2, 2007. The disputed domain name was registered on February 11, 2020. The Respondent used the disputed domain name to set up a web page imitating the Complainant’s own web page.
The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s trademark; that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and, that the disputed domain name was registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the 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.
The incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark. See Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505. In this case, the disputed domain name contains the Complainant’s trademark DYCOM in its entirety. The addition of “ind” (possibly an abbreviation of “industries” which forms part of the Complainant’s full corporate name) within the disputed domain name does not prevent a finding of confusing similarity.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. See Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen, WIPO Case No. D2014-0657. The Complainant has demonstrated its rights because it has shown that it is the owner of multiple valid and subsisting trademark registrations for the mark DYCOM.
Accordingly, the Panel finds that the Complainant has shown that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
The Panel evaluates this element of the Policy by first looking to see whether the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. If the Complainant makes that showing, the burden of production to demonstrate rights or legitimate interests shifts to the Respondent.
The Complainant has established, prima facie, that the Respondent lacks rights or legitimate interests in the disputed domain name. On this point, the Complainant asserts, among other things, that:
- the Respondent did not have, before any notice of the dispute, use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to such domain name in connection with a bona fide offering of goods or services;
- the Respondent is not commonly known by the disputed domain name but has misappropriated the details of its corporate officer to register the disputed domain name and set up an imitation web page; and
- the Respondent has not made any legitimate commercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert Internet users or to tarnish the trademark or service mark at issue.
These facts establish the Complainant’s prima facie showing. The Respondent has not provided any evidence to rebut this prima facie showing.
The Panel finds that the Complainant has established this second element under the Policy.
The Policy requires a complainant to establish that the domain name was registered and is being used in bad faith. The Policy describes several non-exhaustive circumstances demonstrating a respondent’s bad faith use and registration. Under paragraph 4(b)(iv) of the Policy, a panel may find bad faith when a respondent “[uses] the domain name to intentionally attempt to attract, for commercial gain, Internet users to [respondent’s] web site or other on-line location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] web site or location or a product or service on [the respondent’s] web site or location”.
The Respondent registered and is using the disputed domain name in bad faith. Establishing a website to essentially misrepresent itself as the Complainant using a disputed domain name that incorporates the Complainant’s mark – and using registrant details that misappropriate those of a corporate officer of the Complainant – is a clear example of bad faith registration and use under the Policy.
The Panel finds that the Complainant has established this third element under 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 disputed domain name <dycomind.net> be transferred to the Complainant.
Evan D. Brown
Date: October 3, 2020
1 The Panel has concluded that the named Respondent was not in fact the individual responsible for the registration and use of the disputed domain name and has directed that the name of the individual identified by the Registrar as the registrant of the disputed domain name should be redacted from this decision. All references in this decision to “Respondent” are references to the unknown underlying registrant of the disputed domain names.
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