The Complainant is UMICORE, Belgium, represented by Gevers, Belgium.
The Respondents are Mike, Mike Johnson, United States of America (“United States”) / Desmond Jordan, United States / Paul Won, United States / and Name Redacted1, Belgium.
The disputed domain names <eu-umicore.com> and <eu-unnicore.com> are registered with PDR Ltd. d/b/a PublicDomainRegistry.com. The disputed domain name <eu-umicore.tech> is registered with Hostinger, UAB. The disputed domain name <umicore-be.com> is registered with Ascio Technologies Inc.
PDR Ltd. d/b/a PublicDomainRegistry.com, Hostinger UAB and Ascio Technologies Inc are separately and collectively referred to below as the “Registrar”.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 23, 2020. On September 24, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 25 and 26, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 28, 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 October 2, 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 Respondents of the Complaint, and the proceedings commenced on October 13, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 2, 2020. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on November 3, 2020.
The Center appointed Matthew Kennedy as the sole panelist in this matter on November 5, 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 global materials technology group with activities centered on catalysis, energy materials, performance materials and recycling. The Complainant carries out its activities in Asia, Africa, Europe and North America. The Complainant is the proprietor of multiple trademark registrations for UMICORE, including International trademark registration number 775794, registered on January 22, 2002, and designating multiple jurisdictions, and United States trademark registration number 2996277, registered on September 20, 2005. Both these registrations specify goods and services in classes 1, 2, 6, 9, 14, 40 and 42. Both registrations remain current. The Complainant has also registered the domain name <umicore.com> that it uses in connection with a website where it provides information about itself and its activities.
The Respondents are named as four individuals. The disputed domain names were registered on the following dates by the following named registrants with the following Registrars:
Date of registration
October 21, 2019
Mike, Mike Johnson
December 9, 2019
PDR Ltd. d/b/a PublicDomainRegistry.com
April 7, 2020
PDR Ltd. d/b/a PublicDomainRegistry.com
June 25, 2020
Ascio Technologies Inc
A series of emails impersonating a particular employee of the Complainant was sent from an address in the disputed domain name <eu-unnicore.com> to a client of the Complainant on April 7, 15, 16 and 23, 2020. The emails requested the client to make payments to a new bank account. One email included an attachment that displayed the Complainant’s Umicore logo.
The name and street address of the registrant of the disputed domain name <umicore-be.com> impersonate a particular officer of the Complainant, with a different contact email address.
The disputed domain name <umicore-be.com> has been activated but, at the time of this decision, the other three disputed domain names do not resolve to any active website; rather, they are passively held.
The disputed domain names are identical or, at the very least, confusingly similar to the Complainant’s UMICORE trademark and trade name rights.
The Respondents have no rights or legitimate interests with respect to the disputed domain names. The Complainant’s UMICORE trademark is not a generic or descriptive term. The registrants of the disputed domain names do not own any valid trademark rights over “Umicore” nor over “Unnicore”; they are not commonly known by the disputed domain names; they do not have any connection or affiliation with the Complainant whatsoever nor have they received any license or consent, express or implied, to use the UMICORE trademark in a domain name or in any other manner.
The disputed domain names were registered and are being used in bad faith. The Respondents registered the disputed domain names well after the Complainant’s UMICORE trademark was in use and became well-known. The disputed domain names incorporate the UMICORE trademark in its entirety and contain minimal additional elements, giving a false impression that the disputed domain names are authorized, licensed, affiliated or connected to the Complainant. The messaging services of all disputed domain names have been activated. The disputed domain name <eu-unnicore.com> was used to send phishing and fraudulent emails to the clients of the Complainant. The name and contact details of the registrant of <umicore-be.com> are false.
The Respondents did not reply to the Complainant’s contentions.
The amended Complaint initiates disputes in relation to nominally different domain name registrants. The Complainant alleges that the domain name registrants are the same entity or mere alter egos of each other. The Complainant requests consolidation of the disputes against the disputed domain name registrants pursuant to paragraph 10(e) of the Rules. The disputed domain name registrants did not comment on the Complainant’s request.
Paragraph 3(c) of the Rules states that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder. However, the Panel does not consider that paragraph 3(c) was intended to enable a single person or entity to put a complainant to the unnecessary time, expense and effort of initiating multiple proceedings against technically different domain name registrants, particularly when each registration raises the same issues. In addressing the Complainant’s request, the Panel will consider whether:
(i) the disputed domain names or corresponding websites are subject to common control; and
(ii) the consolidation would be fair and equitable to all Parties. See Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons,WIPO Case No. D2010-0281 and WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2.
As regards common control, the Panel notes that all four disputed domain names follow a pattern in that they all incorporate the same trademark (in one case, with a spelling error) plus a two-letter country code (either “eu” or “be”), separated by a hyphen. The operative element of two disputed domain names is identical (“eu‑umicore”) and differs from the operative element of a third differs only slightly (the “m” is replaced by “nn” in “eu-unnicore”). Of these disputed domain names, two are registered with the same Registrar. Two disputed domain names (<eu-unnicore.com> and <umicore-be.com>) have both been used to impersonate an officer or employee of the Complainant (one in an email and the other in the registration contact details). The name of the registrant of the disputed domain name <umicore-be.com> is false. In these circumstances, the Panel is persuaded that all four disputed domain names are under common control.
As regards fairness and equity, the Panel sees no reason why consolidation of the disputes would be unfair or inequitable to any Party.
Accordingly, the Panel decides to consolidate the disputes regarding the nominally different disputed domain name registrants (referred to below as “the Respondent”) in a single proceeding.
Paragraph 4(a) of the Policy provides that a complainant must prove each of the following elements:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
Based on the evidence submitted, the Panel finds that the Complainant has rights in the UMICORE mark.
The disputed domain names <eu-umicore.com>, <eu-umicore.tech> and <umicore-be.com> wholly incorporate the UMICORE mark. The mark remains clearly recognizable within these disputed domain names.
The disputed domain name <eu-unnicore.com> incorporates an obvious misspelling of the UMICORE mark that is identical to that mark except for the substitution of “nn” for the “m”. This is an example of a practice known as “typosquatting”. The Panel does not consider this minor typographical difference capable of dispelling confusing similarity with the Complainant’s trademark. See Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775. Further, there is evidence on the record of an instance of actual confusion between this disputed domain name and the Complainant’s UMICORE trademark.
All four disputed domain names also include the element “eu-” or “-be”, which are two-letter country codes. This does not prevent a finding of confusing similarity with the UMICORE mark in any case.
The only other element in each disputed domain name is a generic Top-Level Domain (“gTLD”) (either “.com” or “.tech”). As a technical requirement of registration, this element is generally disregarded in the comparison between a domain name and a trademark for the purposes of the first element of the Policy. See WIPO Overview 3.0, section 1.11.
Therefore, the Panel finds that the disputed domain names are confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.
Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable 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; or
(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) [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 or service mark at issue.
The Complainant submits that the Respondent does not have any connection or affiliation with the Complainant whatsoever nor has it received any license or consent, express or implied, to use the UMICORE trademark in a domain name or in any other manner.
As regards the first circumstance set out above, none of the disputed domain names is used in connection with a bona fide offering of goods or services within the terms of paragraph 4(c)(i) of the Policy.
As regards the second circumstance, the Registrar has confirmed that the disputed domain names are registered in various names, none of which has any relation to any of the disputed domain names. There is no evidence that the Respondent has been commonly known by any of the disputed domain names within the terms of paragraph 4(c)(ii) of the Policy.
As regards the third circumstance, three of the disputed domain names are passively held; the other one has been activated but does not appear to be in active use. One of the disputed domain names has been used in connection with a fraudulent email. None of these uses is a legitimate noncommercial or fair use within the terms of paragraph 4(c)(iii) of the Policy.
In view of the above circumstances, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent did not rebut that prima facie case because he did not respond to the Complaint.
Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant has satisfied the second element in paragraph 4(a) of the Policy.
Paragraph 4(b) of the Policy provides that certain circumstances shall be evidence of the registration and use of a domain name in bad faith but these circumstances are not exhaustive.
With respect to registration, the disputed domain names were registered in 2019 and 2020, years after the registration of the Complainant’s UMICORE trademark. UMICORE is a coined word with no meaning other than as a reference to the Complainant and its trademark. The disputed domain names wholly incorporate the UMICORE trademark or an obvious misspelling of that mark as their only distinctive elements. The Complainant has acquired a considerable reputation in its UMICORE mark in the technology sector through longstanding and widespread use. Two of the disputed domain names have been used to impersonate an officer or employee of the Complainant (in one case in an email, in the other in the registrant name and contact details, and in both cases on the day of registration of the disputed domain name). This demonstrates that the Respondent was aware of the Complainant and its trademark at the time of registration of those disputed domain names. Another disputed domain name includes the gTLD “.tech” which indicates an awareness of the nature of the Complainant’s business earlier. This evidence all gives the Panel reason to find that the Respondent knew of the Complainant’s mark at the time he registered the disputed domain names.
With respect to use, the Respondent currently makes only passive use of three disputed domain names and has merely activated the other disputed domain name, but this does not preclude a finding of use in bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In the present dispute, all disputed domain names wholly incorporate the UMICORE trademark or an obvious misspelling of that mark, together with a two-letter country code, giving the false impression that they refer to the European or Belgian website of the Complainant. One disputed domain name has been used in connection with fraudulent emails that impersonate an employee of the Complainant. The registrant name and contact details of another disputed domain name impersonate an officer of the Complainant. The Respondent provides no explanation of any potential good faith use of the disputed domain names. In all these circumstances, the Panel considers that the Respondent is using the disputed domain names in bad faith.
Therefore, the Panel finds that the disputed domain names have been registered and are being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) 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 disputed domain names <eu-umicore.com>, <eu-umicore.tech>, <eu-unnicore.com> and <umicore-be.com> be transferred to the Complainant.
Date: November 10, 2020
1 One of the Respondents appears to have used the name and contact details of an officer of the Complainant when registering the disputed domain name <umicore-be.com>. In light of the potential identity theft, the Panel has redacted this Respondent’s name from the decision. However, the Panel has attached as Annex 1 to this decision an instruction to the Registrar regarding transfer of the disputed domain name <umicore-be.com>, 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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