WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Proceq AG v. Michael Adams, Proceqmail

Case No. D2020-3122

1. The Parties

The Complainant is Proceq AG, Switzerland, represented by Hepp Wenger Ryffel AG, Switzerland.

The Respondent is Contact Privacy Inc. Customer 0159220330, Canada / Michael Adams, Proceqmail, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <proceqmail.com> is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 20, 2020. On November 20, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 20, 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 December 3, 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 December 8, 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 December 14, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 3, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 19, 2021.

The Center appointed Fabrice Bircker as the sole panelist in this matter on February 4, 2021. 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

The Complainant is notably active in the field of portable non-destructive testing equipment and related services.

It is part of Screening Eagle Technologies and operates its business under the brand PROCEQ.

This brand is protected worldwide through many trademark registrations, such as:

- International trademark registration No. 1550310 for PROCEQ in classes 9, 37, 38, and 42, registered on July 7, 2020, and protected in the European Union and in Germany;

- International trademark registration No. 618696 for PROCEQ in classes 9, 37, and 42, registered on May 9, 1994, and protected in the United Kingdom, Mexico, Viet Nam, Singapore, Norway, Japan, Australia, and in the European Union;

- Swiss trademark registration No. 2P-409971 for PROCEQ in class 9, filed on January 14, 1994 registered on May 9, 1994, and regularly renewed since then;

- United States trademark registration No. 4490011 for PROCEQ in classes 9 and 42, filed on February 1, 2013 and registered on March 4, 2014.

Besides, the Complainant has a subsidiary in the United States of America named Proceq USA Inc.

The disputed domain name, <proceqmail.com>, was registered on September 4, 2020.

It does not currently resolve to any active website.

However, according to the record of the case, the disputed domain name was used to send emails by which the Respondent, by deceitfully pretending being an employee of the Complainant’s United States subsidiary, has attempted to purchase goods from a third company by requesting a 30-day payment term after the invoice date.

5. Parties’ Contentions

A. Complainant

Identical or Confusingly Similar

The Complainant contends that the disputed domain name is confusingly similar to its trademark PROCEQ, as it fully reproduces said trademark by merely adding the generic term “mail”.

Rights or Legitimate Interests

The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name because it has not been authorized by the Complainant to use the PROCEQ trademark.

In addition, the Complainant contends that the disputed domain name is not used in connection with a bona fide offering of goods or services because it has been used for creating an email address for the purpose of impersonating the Complainant to perpetrate fraud and illegal activities (namely ordering goods in the name of the Complainant and without intending to pay the vendor).

Registered and Used in Bad Faith

The Complainant contends that the Respondent used the disputed domain name to impersonate an employee of the Complainant’s United States subsidiary and to attempt to place order for goods.

The Complainant adds that the Respondent has registered and used the disputed domain name in bad faith because it has used it for fraudulent activities (namely, sending emails impersonating the Complainant intended to obtain the delivery of merchandises from third parties without paying them).

Therefore, the Complainant finds that given this scheme, it is impossible that the Respondent did not have the PROCEQ trademark in mind when it registered the disputed domain name. The Complainant also contends that using the disputed domain name for commercial gain by creating a likelihood of confusion with the Complainant’s trademark and for conducting fraudulent activities constitutes bad faith use.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that for obtaining the transfer or the cancellation of the disputed domain name, the Complainant must establish each of the following three elements:

(i) the disputed domain name is 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 name; and
(iii) the disputed domain name has been registered and is being used in bad faith.

Besides, paragraph 15(a) of the Rules provides that “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

Paragraphs 10(b) and 10(d) of the Rules also provide that “[i]n all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case” and that “[t]he Panel shall determine the admissibility, relevance, materiality and weight of the evidence”.

Besides, the Respondent’s failure to reply to the Complainant’s contentions does not automatically result in a decision in favor of the Complainant, although the Panel is entitled to draw appropriate inferences therefrom, in accordance with paragraph 14(b) of the Rules (see section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

Taking the foregoing provisions into consideration the Panel finds as follows.

A. Identical or Confusingly Similar

Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must first establish rights in a trademark or service mark and secondly establish that the disputed domain names are identical or confusingly similar to its trademark.

Annex 7 to the Complaint shows trademark registrations for PROCEQ in the name of the Complainant, in particular those detailed in section 4. above.

Besides, the disputed domain name, <proceqmail.com> consists in the reproduction of the PROCEQ trademark followed by the term “mail” and by the generic Top-Level Domain (gTLD) “.com”.

The addition of the element “mail” does not prevent a finding of confusing similarity because it is a mere generic term and because the PROCEQ trademark remains clearly recognizable within the disputed domain name.

Indeed, there is a consensus view among UDRP panels that where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element (see WIPO Overview 3.0, section 1.8).

As far as the gTLD “.com” is concerned, it consists in a standard registration requirement, and may therefore be disregarded when determining identity or confusing similarity under the first element.

As a result of all the above, the Panel concludes that the requirements of paragraph 4(a)(i) of the Policy are satisfied.

B. Rights or Legitimate Interests

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], [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.

While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element see WIPO Overview 3.0, section 2.1.

In the present proceeding, the Respondent has not been authorized by the Complainant to register and to use the disputed domain name.

Besides, according to the record of the case, the disputed domain name was used to send emails by which the Respondent has impersonated an employee of the Complainant’s United States subsidiary to order goods in the name of the latter and more than likely without having the intent to further paying the vendor (in particular because it requested a payment term after the invoicing date).

Obviously, such use of the domain name, which is not refuted by the Respondent, does not amount to a legitimate noncommercial or fair use of the disputed domain name. On the contrary, such use is made with intent for commercial gain by misleadingly diverting the recipient of the fraudulent emails and may also tarnish the Complainant’s trademark.

In this respect, Panels have categorically held that the use of a domain name for illegal activity (such as phishing or impersonation) can never confer rights or legitimate interests on a respondent (see WIPO Overview 3.0, section 2.13 or Colas, Société Anonyme v. Concept Bale, WIPO Case No. D2020-2733).

At last, according to the WhoIs database the Respondent would be partly named “Proceqmail”, what corresponds to the distinctive part of the disputed domain name.

However, given the use that has been done of the disputed domain name (namely, deceitfully impersonate a third party), the Respondent cannot credibly and legitimately be considered commonly known by the disputed domain name.

In this case, everything conducts to consider that such a way to fill in the WhoIs database is part of the fraudulent scheme elaborated by the Respondent (to lure the recipients of the fraudulent emails, in the event where they would conduct a WhoIs search on the disputed domain name, to believe that it is held by the Complainant or an affiliate).

In view of all the above, the Panel finds that the Complainant has discharged its burden of proof that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The burden of production now shifts to the Respondent to show that it does have some rights or legitimate interests.

The Respondent, which has not replied to the Complainant’s contentions, has not come forward with any explanation or evidence that demonstrates any rights or legitimate interests in the disputed domain name.

Based on the above, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and accordingly that the second element in paragraph 4(a) of the Policy is satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and is using the disputed domain name in bad faith.

The circumstances deemed to be evidence of the registration and use of a domain name in bad faith listed at paragraph 4(b) of the Policy are non-exhaustive examples.

In the present case, the Panel finds that the Respondent was necessarily aware of the Complainant’s rights at the time of the registration of the disputed domain name, since it has been used to create an email address from which the Respondent sent emails purporting to be an employee of the United States subsidiary of the Complainant.

Besides, the Respondent by remaining silent in this procedure has not provided any reason why the disputed domain name was registered other than by reference to the Complainant.

In addition, the Respondent is using the disputed domain name to send emails seeking to mislead recipients as to the identity of the sender for its own commercial gain.

Such conduct is deceptive, illegal, and made for commercial gain. Furthermore, previous UDRP panels have found such conduct as evidence of registration and use in bad faith (see WIPO Overview 3.0, section 3.1.4 or Royal Unibrew A/S v. Nikki Riegel, vvvv, WIPO Case No. D2020-3476).

As a conclusion of the above, the Panel finds that the disputed domain name was registered and is being used in bad faith, within the meaning of paragraph 4(a)(iii) 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, <proceqmail.com> be transferred to the Complainant.

Fabrice Bircker
Sole Panelist
Date: February 15, 2021