The Complainant is Conduent, Inc. of Florham Park, New Jersey, United States of America ("United States"), represented by Steven M. Levy, Esq., United States.
The Respondent is Towry DeRozan, Raptors LLC of Longwood, Florida, United States1.
The disputed domain name <conduent.cc> is registered with Key-Systems GmbH dba domaindiscount24.com (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 19, 2018. On July 20, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 23, 2018, 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 the same date 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 23, 2018.
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 July 30, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 19, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 20, 2018.
The Center appointed Dennis Foster as the sole panelist in this matter on August 23, 2018. 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 an established United States company specialized in producing management transactional systems for use between companies or governmental agencies and their customers/users and it does significant business on an international basis. The Complainant conducts operations under the CONDUENT service mark and has obtained registration with the United States Patent and Trademark Office ("USPTO") for that mark (e.g., Registration No. 5297518; registered on September 26, 2017).
The disputed domain name, <conduent.cc> was registered on June 25, 2018. The disputed domain name resolves to an inactive parked webpage from which the Respondent has issued emails to various Complainant customers, soliciting payment for invoices.
- The Complainant, created on January 3, 2017, is a subsidiary of Xerox Corporation, a large, well-known United States of America company. It specializes in producing management transactional systems for use between companies or governmental agencies and their customers/users. The Complainant's clients include most Fortune 100 companies and many governmental agencies throughout the United States and in countries around the world.
- The Complainant has operated under its CONDUENT service mark since its inception. The mark is registered with the USPTO and other pertinent authorities. The Complainant also does business routinely through a website located at its domain name, <conduent.com>.
- The disputed domain name, <conduent.cc>, is identical to the CONDUENT service mark. The principal part of the name is an identical copy of the mark; and the additional country code Top-Level Domain ("ccTLD") does nothing to alleviate the confusion between the name and mark.
- The Respondent has no rights or legitimate interests in the disputed domain name. Policy paragraph 4(c) cannot be invoked to support the Respondent's claim to those rights or interests. The name is attached to a parked webpage that is inactive. Moreover, there is concrete evidence that the Respondent uses the name to engage in a "phishing" scheme to fraudulently seek payment from the Complainant's customers for fake invoices. Neither of these circumstances constitutes "a bona fide offering of goods or services" or "a legitimate noncommercial or fair use" of the disputed domain name. Finally, based upon the WhoIs record, there is no evidence that the Respondent, or any company that he might own, has been commonly known as the disputed domain name.
- The disputed domain name was registered and is being used in bad faith. The Complainant has given no consent for the Respondent to use the Complainant's well-known CONDUENT mark. As decided in prior UDRP cases, passive use of the disputed domain name can constitute bad faith registration and use of the same. Moreover, the Respondent's employment of the name for a "phishing" scheme is clear evidence of bad faith registration and use. The Respondent's refusal to respond to the Complainant's demand letter regarding the disputed domain name is further evidence of bad faith. The Respondent's bad faith is also made clear by his registration of the disputed domain name through a WhoisProxy service (which lists the registrant as "On behalf of conduent.cc OWNER") in an attempt to conceal his true identity.
The Respondent did not reply to the Complainant's contentions.
In accordance with Policy paragraphs 4(a)(i)-(iii), the Panel may find for the Complainant and grant a transfer of the disputed domain name, <conduent.cc>, provided the Complainant proves that:
- The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- The disputed domain name has been registered and is being used in bad faith.
It is clear to the Panel that the disputed domain name, <conduent.cc>, is identical to the Complainant's CONDUENT service mark. The primary section of the disputed domain name, "conduent", contains the same letters in the same order as does the mark. Also, in concurrence with section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), the Panel determines that the addition of the ccTLD, ".cc", is disregarded for the purposes of this confusing similarity analysis. See, Compagnie Générale des Etablissements Michelin v. Zeng Yan, WIPO Case No. DCC2018-0004 (finding <michelin.cc> to be identical to the MICHELIN mark); and Vodafone Group PLC v. Wikipiedra S.L. / Jonathan Palma Ruz, WIPO Case No. DCC2010-0006 (finding <vodafone.cc> to be identical to the VODAFONE mark while stating, "[t]he addition to a trade mark of a top level domain (gTLD) or a ccTLD are disregarded as insignificant for purposes of determining the similarity between the Domain Name and the trade mark, because the TLDs are functionally necessary to operate the domain name.").
As to whether the Complainant owns the requisite rights in the CONDUENT service mark for the purposes of Policy paragraph 4(a)(i), the Panel accepts the Complainant's submission of uncontested evidence that it has a valid USPTO registration for that mark as conclusive with respect to ownership. See, Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen, WIPO Case No. D2014-0657 ("A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner."); and The Schneider Group, Inc. v. Jack Mann, WIPO Case No. D2010-0448 ("The Panel finds that Complainant has established rights in the PROTEK mark under Policy paragraph 4(a)(i) through its registration with the USPTO.").
As a result, the Panel finds that the Complainant has satisfied the first element required under paragraph 4(a) of the Policy.
Paragraph 4(c) of the Policy offers three non-exclusive ways in which a respondent might establish its rights or legitimate interests in a disputed domain name, as follows:
"(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."
In this case, the Respondent has failed to file a Response, thus the Panel must examine the record elsewhere to determine whether any of the criteria above apply. In so doing, the Panel is left to consider as true any reasonable contention made in the Complaint. See, WIPO Overview 3.0, section 2.1 ("The panel may draw inferences from the absence of a response as it considers appropriate, but will weigh all available evidence irrespective of whether a response is filed."); and Rockefeller & Co., Inc. v. James McCallum, Worlds-Wisdom-Inc., WIPO Case No. D2017-0009 ("Because of Respondent's default, the Panel may accept as true the factual allegations stated within the Complaint, and may draw appropriate inferences therefrom.").
The Panel accepts the Complainant's reasonable contention, supported by submissions in the Complaint, that the disputed domain name is connected to an inactive webpage. Moreover, the Panel also believes the Complainant's unrebutted contention that the Respondent is otherwise using the name to send emails to some of the Complainant's customers, requesting of them that they send payments to the Respondent based on fabricated invoices. The Panel concludes that neither circumstance constitutes "a bona fide offering of goods or services" per paragraph 4(c)(i) above. Moreover, as the second contention involves potential monetary transfers to the Respondent, the Panel finds that paragraph 4(c)(iii) is inapplicable as well. See, "Dr. Martens" International Trading GmbH and "Dr. Maertens" Marketing GmbH v. Godaddy.com, Inc., WIPO Case No. D2017-0246 ("The Panel [...] finds that the Respondent is neither making a bona fide offering of goods or services or a legitimate non-commercial or fair use of the [disputed] Domain Name as the [disputed] Domain Name is not resolving to an active website."); and The Swatch Group AG and Swatch AG v. Christopher Biedermann / Marcin Rulnicki, WIPO Case No. D2017-0388 ("There is no right or legitimate interest in holding a domain name for the purpose of furtherance of a fraud through impersonation."). Finally, with respect to the paragraph 4(c)(ii) above, the Panel determines that neither the Respondent, Towry DeRozan, nor his company, Raptors LLC, are commonly known as the disputed domain name.
Since the Panel has found no applicability of Policy paragraph 4(c) to this case, the Panel must conclude that the prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, as set forth by the Complainant, is controlling under these circumstances.
As a result, the Panel finds that the Complainant has satisfied the second element required under paragraph 4(a) of the Policy.
As noted above, the Panel accepts the Complainant's contention that the webpage to which the disputed domain name is attached is not active. The history of UDRP decisions is replete with rulings that passive use of a disputed domain name may be considered registration and use of that name in bad faith under appropriate circumstances. The Panel reaches that conclusion regarding bad faith in this case, given that: the Complainant's mark is distinctive and known internationally; the disputed domain name is identical to the Complainant's CONDUENT service mark; the Respondent has failed to respond to the Complaint; the Respondent sought to conceal his identity by registering the disputed domain name deceptively through a WhoIsProxy service; and there appears to be no reasonable or good faith non−infringing use to which the name could be put. See, WIPO Overview 3.0, section 3.3, ("From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or 'coming soon' page) would not prevent a finding of bad faith under the doctrine of passive holding"); "Dr. Martens" International Trading GmbH and "Dr. Maertens" Marketing GmbH v. Godaddy.com, Inc, supra; and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Furthermore, the Respondent's alleged use of the disputed domain name (unrebutted by the Respondent) to issue fraudulent payment invoices to unsuspecting customers of the Complainant, i.e., to engage in a cyber "phishing" scheme, may constitute additional evidence of registration and use of the disputed domain name in bad faith. See, CMA CGM v. Diana Smith, WIPO Case No. D2015-1774 ("...the Panel accepts Complainant's undisputed submission that bad faith registration and use of the [disputed] Domain Name is further indicated by the fact that there is strong suspicion of Respondent using the [disputed] Domain Name in a phishing scam."); and OLX, Inc. v. J D Mason Singh, WIPO Case No. D2014-1037 ("There is no better evidence of bad faith than a case like this where a fraudulent phishing scheme is set up with the help of a domain name that contains the trademark of a company the customers of which are being misled and deceived into believing they are dealing with the owner of the trademark.").
As a result, the Panel finds that the Complainant has satisfied the third element required under 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 name, <conduent.cc>, be transferred to the Complainant.
Dennis A. Foster
Date: September 7, 2018
1 The Panel notes that the initially named Respondent in the Complaint was "On behalf of conduent.cc OWNER, c/o whoisproxy.com". However, the Complainant replaced this information in the amended Complaint with the underlying registrant information of the disputed domain name provided by the Registrar.
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