The Complainant is Eskdalemuir Forestry Limited, United Kingdom, represented by Shepherd and Wedderburn LLP, United Kingdom.
The Respondent is Privacy Administrator, Anonymize, Inc., United States of America (“United States”).
The disputed domain name <eskdalemuirforestry.com> (“Disputed Domain Name”) is registered with Epik, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 5, 2020. On October 6, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 6, 2020, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the Disputed Domain Name.
The Center verified that the 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 October 8, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 28, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 29, 2020.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on November 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 Scotland-based forestry and silviculture company, incorporated on September 19, 1994. The Complainant was incorporated with the name Alderleaf Limited, with a change of name to Kronospan Forestry Limited on October 25, 1994, and a further change of name to Eskdalemuir Forestry Limited, its current name, on September 26, 2008. The Complainant does not have registered trade mark rights to its company name or any related terms.
Since its incorporation, the Complainant has built a forestry portfolio of over 30 properties, covering over 11,000 hectares. Its principal business activities are the ownership and management of its forests and is based at Clerkhill Farm, Eskdalemuir, Dumfries and Galloway, Scotland. The nature of the Complainant’s activities are listed on Companies House as silviculture and other forestry activities and logging.
The Complainant has been a member of the Confederation of Forest Industries (“Confor”), the trade association for the Forestry Industry in the United Kingdom, for eight years and was a member of the United Kingdom Forest Products Association (“UKFPA”) prior to the UKFPA merging with Confor in 2019. Additionally, the Complainant is a member of the Forest Safety Industry Accord (“FISA’) and has been a regular member of FISA since May 13, 2013.
The Disputed Domain Name was registered by the Respondent on April 27, 2020, through a privacy shield and currently resolves to an active website purportedly run by “ESKDALEMUIR FORESTRY LIMITED”.
The Complainant’s primary contentions can be summarised as follows:
(a) the Disputed Domain Name is identical to or highly similar to the Complainant’s company name Eskdalemuir Forestry Limited, in which it has rights in “eskdalemuir forestry” as a distinctive identifier of its brand as a result of the doctrine of passing off, which have been wholly incorporated into the Disputed Domain Name;
(b) the Complainant has never authorised or given permission to the Respondent, who is not connected with the Complainant in any way, to use its name “eskdalemuir forestry” and the Respondent has no rights or legitimate interests in the Disputed Domain Name; and
(c) the reputation of and considerable goodwill generated in the term “eskdalemuir forestry” by the Complainant, combined with the Respondent’s use of a privacy shield when registering the Disputed Domain Name and the Respondent purporting to operate as the Complainant in running a fraudulent enterprise, support the fact that the Respondent is acting in bad faith.
The Respondent did not reply to the Complainant’s contentions.
Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark 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 by the Respondent in bad faith.
The fact that the Respondent has not submitted a formal Response does not automatically result in a decision in favor of the Complainant. However, the Respondent’s failure to file a Response may result in the Panel drawing appropriate inferences from such default. The Panel may also accept all reasonable and supported allegations and inferences flowing from the Complaint as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies, WIPO Case No. D2009-1437 and Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403). Notably, the website at the disputed domain name contains no email address, and only a WhatsApp number.
The Complainant does not have registered trade mark rights for the term “eskdalemuir forestry”. To establish unregistered or common law trade mark rights for the purposes of the UDRP, the Complainant must show that the term “eskdalemuir forestry” has become a distinctive identifier which consumers associate with the Complainant’s goods and/or services.
As to whether the term “eskdalemuir forestry” is a mere geographical term, the Panel recognises that Eskdalemuir is a civil parish and village in Scotland. In general, except where registered as a trade mark, geographical terms used only in their ordinary geographical sense would not provide standing to file a UDRP case. However, UDRP panels have exceptionally found that geographical terms which are not registered as trade marks may support standing to file a UDRP complaint if the complainant is able to show that it has rights in the term sufficient to demonstrate consumer recognition of the mark in relation to the complainant’s goods or services. See section 1.6 of the WIPO Overview Panel views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). In general, UDRP panels have been divided on this issue, as there have been a number of decisions under the Policy where complainants have succeeded (See BAA plc, Aberdeen Airport Limited v. Mr. H. Hashimi, WIPO Case No. D2004-0717 and Thompson Island Outward Bound Education Center v. Larrie Noble/ Dirty Mackn Entertainment Corp, WIPO Case No. D2013-1144), whereas there have also been a number of decisions where complainants have not been successful (See Brisbane City Council v. Joyce Russ Advertising Pty Limited, WIPO Case No. D2001-0069 and Stadt Heidelberg v. Media Factory, WIPO Case No. D2001-1500).
In this case, the Panel is of the view that the Complainant has unregistered rights in the term “eskdalemuir forestry” for the following reasons:
(i) the nature of use of the mark appears to be sufficiently wide in the relevant industry, as supported by Confor and FISA and the related articles as produced by the Complainant;
(ii) a quick Internet search conducted by the Panel shows that the top search results returned for the keyword “eskdalemuir forestry” are several websites relating to the Complainant; and
(iii) the Complainant’s use of its current company name for 12 years has generated sufficiently wide recognition in the relevant industry in Scotland and parts of the United Kingdom.
The Disputed Domain Name incorporates the term “eskdalemuir forestry” in its entirety. Moreover, it is well established that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the generic Top-Level Domain (“gTLD”) extension “.com” may be disregarded. See section 1.11 of the WIPO Overview 3.0.
As such, the Panel finds that the Disputed Domain Name is identical or confusingly similar to the Complainant’s “eskdalemuir forestry” mark and accordingly, paragraph 4(a)(i) of the Policy is satisfied.
Once a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent in a disputed domain name, the respondent then carries the burden of demonstrating that it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See section 2.1 of the WIPO Overview 3.0.
The Panel accepts that the Complainant has not authorised the Respondent to use the term “eskdalemuir forestry”, and there is no relationship between the Complainant and the Respondent which would otherwise entitle the Respondent to use the term “eskdalemuir forestry”. The Panel is of the view that a prima facie case has been established and it is for the Respondent to show rights or legitimate interests in the Disputed Domain Name. As the Respondent has not submitted a Response, the Panel will assess the case based on the reasonable inferences that can be drawn from the Complainant’s evidence and by carrying out her own investigation.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Name by demonstrating any of the following:
(i) before any notice to him 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 was in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the Disputed Domain Name, even if he has acquired no trade mark 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 trade mark or service mark at issue.
There is no evidence to suggest that the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name was in connection with a bona fide offering of goods or services.
Further, no evidence has been provided to suggest that the Disputed Domain Name has been used in connection with any legitimate noncommercial or fair use within the meaning of paragraph 4(c)(iii) of the Policy. In fact, the website is being used for the Respondent’s fraudulent enterprise purporting to be the Complainant, which is discussed further below. Moreover, the fact that the Disputed Domain Name wholly incorporates the term “eskdalemuir forestry” carries a high risk of implied affiliation with the Complainant and such falsity cannot constitute fair use.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
In this case, the Panel finds that the registration and use of the Disputed Domain Name by the Respondent amounts to bad faith registration and use for the following reasons;
(i) the Respondent failed to respond to the Complainant’s contentions and has provided no evidence of any actual or contemplated good faith use by it of the Disputed Domain Name;
(ii) the Respondent registered the Disputed Domain Name using a privacy shield to conceal his identity in the WhoIs records, which supports an inference of bad faith (see Primonial v. Domain Administrator, PrivacyGuardian.org / Parla Turkmenoglu,WIPO Case No. D2019-0193);
(iii) the website to which the Disputed Domain Name resolves may at first glance appear legitimate but is in fact being used in the Respondent’s running of a fraudulent enterprise purporting to be the Complainant. The website purports to offer silviculture and other forestry services, which are identical to the Complainant’s line of business. The Respondent clearly incorporated the term “eskdalemuir forestry” to attract Internet users or potential customers to the website to which the Disputed Domain Name resolves for business purposes and commercial gain. In fact, after being alerted by one of the Complainant’s customers, the Complainant has filed a report against the Respondent with Action Fraud, the UK’s national reporting centre for fraud and cybercrime, and with Google; and
(iv) the email correspondence between the Respondent and Complainant’s customer is evidence of bad faith use of the website to which the Disputed Domain Name resolves. In particular, the customer received an email on May 25, 2020, from the Respondent purporting to be the Complainant by using the an email address with the term “procurement” and the disputed domain name. The email contained the Complainant’s company number and registered address in the email signature. Moreover, the payment information provided in the Respondent’s email correspondence with the customer appears to be fraudulent.
Therefore, it is very difficult to conceive of any plausible use of the Disputed Domain Name that would amount to good faith use, given that the Respondent is running a fraudulent enterprise for illegal commercial gain and appears to be targeting the Complainant’s customers.
In the circumstances, the Panel finds that the Respondent registered and has been using the Disputed Domain Name in bad faith, and paragraph 4(a)(iii) of the Policy has been satisfied.
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, <eskdalemuirforestry.com> be transferred to the Complainant.
Date: November 17, 2020
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