WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Syncsort Incorporated v. On behalf of syncsort.co Owner, c/o whoisproxy.com / Name Redacted

Case No. DCO2020-0081

1. The Parties

The Complainant is Syncsort Incorporated, United States of America (“United States” or “US”), represented by Cooley LLP, United States.

The Respondent is On behalf of syncsort.co Owner, c/o whoisproxy.com, United States / Name Redacted, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <syncsort.co> is registered with Key-Systems GmbH (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 5, 2020. On November 5, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 6, 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 November 11, 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 November 16, 2020.

The Center verified that the Complaint together with 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 November 19, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 9, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 10, 2020.

The Center appointed Peter Burgstaller as the sole panelist in this matter on January 6, 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 has made a request to redact the Respondent’s name under section VII. of the amended Complaint because “the registrant has, without authorization and in bad faith, registered the Domain Name in the name of Complainant’s former employee. For these reasons, and because it would be unfair and unjust for the personal data of Complainant’s former employee to appear in such proceedings, Complainant requests that the Panel redact the name used by the Respondent”. Additionally, the Complainant also made a request that Annex 9 to the Complaint, which also contains a misappropriated name, shall not be published due to the exceptional circumstances of this case.

There are no indications otherwise in the case file for this Panel that the disputed domain name was obtained by a third-party under false pretenses, and that individual named as co-Respondent in the amended Complaint was not responsible for the registration.

However, noting that the Complainant has submitted (and certified by signing the amended Complaint) that the co-Respondent is a former employee of the Complainant, the Panel therefore has decided to redact the co-Respondent’s name from the caption and body of this decision.¹

4. Factual Background

The Complainant offers under the trademark SYNCSORT software goods and services and has grown to one of the global leaders in optimizing traditional data systems and integrate mission-critical data from these systems to next-generation analytic platforms (Annex 8 to the Complaint).

The Complainant is the owner of two US trademark registrations for SYNCSORT (Reg. No. 1157917, registered on June 23, 1981 and Reg. No 5419067, registered on March 6, 2018); moreover, the Complainant owns a US trademark registration for VISUAL SYNCSORT (Reg. No. 2427390) registered on February 6, 2001 (Annex 6 to the Complaint).

The Complainant has used the SYNCSORT mark as its trade and company name and registered the domain name <syncsort.com> on January 20, 1994 and has continuously hosted the Complainant’s website since its registration (Annex 7 to the Complaint).

The disputed domain name <syncsort.co> was registered on January 15, 2020 (Annex 1 to the Complaint).

The Respondent used the disputed domain name as an email address for trying to collect payments by stating to third parties that the Complainant’s bank details for receiving payment had changed with immediate effect (Annex 9 to the Complaint).

5. Parties’Contentions

A. Complainant

In 1971, Whitlow Computer Systems developed SYNCSORT software, a mainframe sorting solution. In 1981, the company formally changed its name from Whitlow Computer Systems to Syncsort Incorporated (the Complainant). Since its founding, the Complainant has continuously offered its SYNCSORT software goods and services and has grown to be the global leader in Big Data, used by leading enterprises in over 100 countries around the world to optimize traditional data systems and integrate mission-critical data from these systems to next-generation analytic platforms.

The Complainant has used the SYNCSORT mark as its trade name from 1981 through 2020 and has used SYNCSORT as a trademark since November 23, 1971. The Complainant is the owner of two federal US trademark registrations for SYNCSORT (Reg. No. 1157917 and 5419067) and a federal US trademark registration for VISUAL SYNCSORT (Reg. No. 2427390).

The Complainant’s long established domain name is <syncsort.com> registered on January 20, 1994 and has continuously hosted the Complainant’s website since its registration.

The disputed domain name is identical with the Complainant’s registered trademarks, its company name and its registered domain name.

The Respondent has no rights or legitimate interests with respect to the disputed domain name; it has no connection or affiliation with the Complainant, and has not received any license or consent, express or implied, to use the Complainant’s trademarks SYNCSORT in a domain name or in any other manner.

The Respondent has registered and has used the disputed domain name in bad faith, especially by setting up an email account using the disputed domain name in order to send out emails under the false pretense that they were legitimate e-mails from the Complainant’s account receivables department; in fact, the Respondent sent an email in which the Respondent stated that the Complainant’s bank details for receiving payment had changed with immediate effect.

B. Respondent

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

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove that

(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 with respect to the disputed domain name; and

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

A. Identical or Confusingly Similar

The Complainant has rights in the registered trademark, trade and company name SYNCSORT. The disputed domain name is <syncsort.co> and is therefore identical to the Complaint’s trademarks, since suffixes such as a generic Top-Level Domain (“gTLD”) are viewed as a standard registration requirement and as such are disregarded under the first element identity or confusing similarity test (see section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”).

The Panel therefore finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

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 section 2.1 of the WIPO Overview 3.0).

In the present case the Respondent failed to submit a Response. Considering all of the evidence in the Complaint (especially with regard to the annexes presented by the Complainant) and the Complainant’s contentions that the Respondent has no rights or legitimate interests in the disputed domain name, that the Respondent has no connection or affiliation with the Complainant, and the Respondent has not received any license or consent, express or implied, to use the Complainant’s trademarks SYNCSORT in a domain name or in any other manner, lead the Panel to the conclusion that the Complainant has made out an undisputed prima facie case so that the conditions set out in paragraph 4(a)(ii) of the Policy have been met by the Complainant.

Panels moreover have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent (see section 2.13 of the WIPO Overview 3.0). In the present case the Complainant put forward evidence (Annex 9 to the Complaint) showing that the Respondent was fraudulently trying to collect payments by using the disputed domain name as email address and stating that the Complainant’s bank details for receiving payment had changed with immediate effect; the Respondent has not objected this.

The Panel therefore finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

As stated in many decisions rendered under the Policy (e.g., Robert Ellenbogen v. Mike Pearson, WIPO Case No. D2000-0001), both conditions, registration and use in bad faith, must be demonstrated; consequently, the Complainant must show that:

- the disputed domain name was registered by the Respondent in bad faith, and
- the disputed domain name is being used by the Respondent in bad faith.

(a) The disputed domain name is identical with the trademark SYNCSORT in which the Complainant has rights; the mark SYNCSORT is moreover non-descriptive.

The disputed domain name was registered on January 15, 2020 by the Respondent. The Complainant has registered trademark rights in the mark SYNCSORT since 1981 onwards and has been using the mark for decades, especially as domain name since 1994.

Because of the above mentioned activities of the Complainant with regard to the trademark SYNCSORT it is inconceivable that the Respondent has registered the disputed domain name without knowledge of the Complainant’s rights; this is especially supported by the fact that the trademark SYNCSORT is distinctive.

Furthermore, noting registrant obligations under UDRP paragraph 2, panels have found that respondents who (deliberately) fail to search and/or screen registrations against available online databases would be responsible for any resulting abusive registrations under the concept of willful blindness; this concept has been applied irrespective of whether the registrant is a professional domainer (see section 3.2.3 of the WIPO Overview 3.0).

The Panel is therefore convinced that the disputed domain name was registered with full knowledge of the Complainant’s rights and as such in bad faith by the Respondent.

(b) Panels have held that the use of a domain name for purposes other than to host a website may constitute bad faith as well. Such purposes include sending email, phishing or identity theft. Many such cases involve the respondent’s use of the domain name to send deceptive emails, e.g., to solicit payment of fraudulent invoices by the complainant’s actual or prospective customers (see section 3.4 of the WIPO Overview 3.0).

Following the evidence put forward by the Complainant, the Respondent used the disputed domain name as an email address stating that the Complainant’s bank details for receiving payment had changed with immediate effect; this fraudulent scheme, trying to collect payments, represents unquestionable bad faith use of the disputed domain name.

The evidence and documents produced and put forward by the Complainant together with the fact that the Respondent has failed to present any evidence of any good faith registration and use with regard to the disputed domain name make this case aclear case of cybersquatting: The disputed domain name was registered and is being used by the Respondent with fraudulent intent and therefore in bad faith under 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 <syncsort.co> be transferred to the Complainant.

Peter Burgstaller
Sole Panelist
Date: January 20, 2021

¹ In light of the stated reasons, the Panel has redacted the co-Respondent’s name 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 co-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.