WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Demco, Inc. v. Adminprivateregcontact a/k/a Demco USA

Case No. D2011-1516

1. The Parties

The Complainant is Demco, Inc. of Madison, Wisconsin, United States of America (“United States”), represented by Quarles & Brady LLP, United States.

The Respondent is Adminprivateregcontact a/k/a Demco USA of Sunnyvale, California, United States.

2. The Domain Name and Registrar

The disputed domain name <demcousa.com> is registered with Melbourne IT Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 9, 2011. On September 9, 2011, the Center transmitted by email to Melbourne IT Ltd a request for registrar verification in connection with the disputed domain name. On September 13, 2011, Melbourne IT Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 16, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 6, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 17, 2011.

The Center appointed Angela Fox as the sole panelist in this matter on October 18, 2011. 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 a Wisconsin company trading in the United States in the field of library, school and office furniture and in the provision of planning and layout design services for libraries and media centers. It has been using the trademark DEMCO in relation to these goods and services continuously since at least as early as 1929.

The Complainant states that by virtue of its longstanding and extensive use of the trademark DEMCO and its marketing of goods and services provided under it, its DEMCO trademark has become recognized by consumers and others in the industry as denoting the Complainant and its business. Annexed to the Complaint were print-outs from the Complainant’s website at “www.demco.com” showing its use of the trademark DEMCO in relation to the goods and services outlined in the Complaint. The Complainant registered the domain name <demco.com> on December 15, 1994.

Accompanying the Complaint were copies of registration certificates showing that the Complainant owns the following trademark registrations for DEMCO, all of which pre-date the registration of the disputed domain name:

- United States registration no. 2,721,302, filed on September 9, 2002

- United States registration no. 2,885,669, filed on September 9, 2002

- United States registration no. 2,812,368, filed on September 9, 2002

- United States registration no. 2,453,304, filed on June 21, 2000

- United States registration no. 2,453,303, filed on June 21, 2000

- United States registration no. 2,455,455, filed on June 21, 2000

The disputed domain name was registered on August 31, 2011. It resolves to a parking page stating simply, “This site is under construction.”

Annexed to the Complaint were copies of a chain of email correspondence emanating from an email address connected to the disputed domain name. The email chain began on September 1, 2011 with an email from that address to […]@memorysales.net, reading:

“Dear sales Dept,

We would appreciate a formal quote emailed to us at your earliest convenience on the listed items our company undergoing project.

1. My Passport Essential SE 1 TB USB 2.0/USB 3.0 Hard Drives (WDBACX0010BRD)

2. WSC3560V224PSS CATALYST 3560V2 24PORT 10/100 (New Unit)

Kindly Provide a quote with pricing and availability and we would get back with as soon as possible to how to move forward.

Looking forward to your prompt response.

Best regards,

Mike Schmitt

Purchase Managerkk

Demco, Inc.

4810 Forest Run Road

Madison, WI 53704”

The annexed correspondence shows a short exchange that then ensued on September 1 and 2, 2011 on method and terms of payment and an indication of quantity sought.

According to the Complainant, this exchange was not connected to or authorized by the Complainant and was a fraudulent misrepresentation by the Respondent with the aim of obtaining goods from a supplier at the Complainant’s expense. The Complainant states that the Respondent has been creating email addresses combining the disputed domain name with the names of actual employees of the Complainant in order to contact suppliers and seek delivery of goods on account. The Complainant states, moreover, that, on information and belief, the Respondent has begun using the Complainant’s actual bank account and tax identification numbers in combination with the fraudulent email addresses in order to establish accounts with suppliers.

The Complaint was filed on September 9, 2011.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain name <demcousa.com> is confusingly similar to its registered trademark DEMCO, because the sole distinctive element is “demco” and the remaining element, “usa”, is non-distinctive.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has not authorized the Respondent to use the DEMCO mark, and asserts that the Respondent has not been using the disputed domain name, or making preparations to use it, in connection with any bona fide offer of goods or services, and has not been making any legitimate, noncommercial use of the disputed domain name.

On the contrary, the Complainant asserts that the Respondent has been using the disputed domain name solely for the purpose of fraudulently misleading suppliers into supplying goods to the Respondent at the Complainant’s expense. The Complainant claims that the Respondent’s conduct threatens to cause substantial harm to the Complainant and its goodwill in the DEMCO trademark.

Finally, the Complainant contends that the disputed domain name was registered, and has been used, in bad faith. The Complainant claims that the Respondent registered the disputed domain name with the intention of taking advantage of the Complainant’s reputation and using it to commit a fraud. According to the Complainant, the Respondent’s use of the disputed domain name to create email addresses for the purpose of fraudulently establishing supplier contracts and obtaining goods for which the Complainant will be billed will inevitably lead to disruption of the Complainant’s business and thus entitle a panel to find both registration and use in bad faith under paragraph 4(b)(iii) of the Policy.

The Complainant seeks the transfer of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions and is in default. No exceptional circumstances explaining the default have been put forward. Therefore, in accordance with paragraphs 14(a) and (b) of the Rules, the Panel will decide the Complaint and shall draw such inferences as it considers appropriate from the Respondent’s default.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the panel finds that:

(i) the 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 in the domain name; and

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

All three elements must be present before a complainant can succeed in an administrative proceeding under the Policy.

A. Identical or Confusingly Similar

The Complainant has proved that it owns registered trademark rights in DEMCO in the United States.

The sole distinctive element of the disputed domain name is “demco”, which is identical to the Complainant’s trademark. The remaining element, “usa”, is a mere geographical identifier referring to the United States, where the Complainant’s business is based.

Panels have consistently found that the presence in a domain name of mere geographic descriptors does not detract from confusing similarity with a complainant’s trademarks. (See e.g., Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046; Wal-Mart Stores, Inc. v. Lars Stork, WIPO Case No. D2000-0628; Amway Corporation, Inc. v. Business Internet Connection and Rex Mehta, WIPO Case No. D2000-1118 and Jefferson Smurfit Group plc v. Stephen Davidson Inc., WIPO Case No. D2000-1117; to name but a few).

In this case, the combination of elements within the disputed domain name is likely to cause Internet users to link the disputed domain name to the Complainant and its DEMCO-branded business in the United States.

The Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trademark. The Complainant has therefore succeeded under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has not authorized the Respondent to use the disputed domain name, nor is there any evidence that the Respondent has used, or made preparations to use, the disputed domain name in connection with a bona fide offer of goods or services or any legitimate noncommercial or fair purpose.

The name under which the Respondent registered the disputed domain name, “Adminprivateregcontact a/k/a Demco USA”, is the only possible evidence that the Respondent may have been known by a name corresponding to the disputed domain name prior to notice of the dispute. However, the identity of a domain name registrant is not typically checked at the time of registration, and there is no evidence whatsoever that the Respondent was in fact actually known as Demco USA.

Indeed, on the contrary, the evidence points to the Respondent having used at least one email address linked to the disputed domain name in order to impersonate the Complainant, Demco, Inc., and to seek to place unauthorized orders for goods from third-party suppliers in the Complainant’s name. The Respondent has not sought to deny that it is behind this activity.

The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and the Respondent has not attempted to refute the Complainant’s assertions in this regard.

The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has therefore succeeded under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

As indicated above, the Complainant has shown in evidence that the disputed domain name has been used in order to create at least one email address used to impersonate the Complainant and to seek to place orders for goods from third-party suppliers at the Complainant’s expense.

The email chain filed in evidence by the Complainant shows that the Respondent impersonated the Complainant in approaching a third-party supplier through an email address linked to the disputed domain name on September 1, 2011, just one day after the disputed domain name had been registered. This strongly suggests not only that the disputed domain name was registered in the knowledge of the Complainant’s business under the DEMCO mark(and indeed, the Complainant’s full name and contact details were given in the September 1, 2011 email chain), but that the disputed domain name was registered for the purpose of perpetrating the fraud.

Such circumstances have in the past been found to constitute evidence of registration and use of a disputed domain name in bad faith. In particular, in Graybar Services, Inc. v. Graybar Elec, Grayberinc Lawrenge, WIPO Case No. D2009-1017, the panelist dealt with a similar fact scenario and held as follows:

“…the evidence shows that having registered the domain name the Respondent has been using it to perpetrate a fraud. The essence of the fraud is that the Respondent has used the domain name to pretend that it is the Complainant and in particular to create false emails pretending that they are genuine emails coming from the Complainant and one of its senior executives. These false emails were then used to order goods from the Complainant's suppliers using the documents created for the purported transactions to attempt to have the Complainant pay for the goods and with the intention that the goods were received by the Respondent free of charge.

Such conduct brings the case within the provisions of paragraph 4(b)(iii) of the Policy, for it shows the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor, namely the Complainant. That is so because such a fraudulent transaction inevitably creates a dispute as to who is liable for the price of the goods, gives rise to bad relations between the Complainant and its suppliers and incurs a considerable waste of time and money in unraveling the fraud and its consequences, all of which are disruptive of the business of the Complainant.

The Respondent's conduct also brings the case within the provisions of paragraph 4(b)(iv) of the Policy, for the whole of the fraudulent transaction was conducted on the Internet, showing that by using the domain name as the origin of the emails, the Respondent intentionally attempted to attract, for commercial gain, Internet users being the Complainant's suppliers to the Respondent's on-line location, by creating a likelihood of confusion between the Complainant's mark and the source or affiliation of the fraudulent emails.

In any event the whole of the modus operandi of the Respondent was fraudulent, showing that the registration and use of the domain name were in bad faith.”

In the present case, the fraud apparently perpetrated by the Respondent is essentially the same as that in Graybar Services, Inc. v. Graybar Elec, Grayberinc Lawrenge, supra. In this Panel’s view, there is no doubt that the Respondent’s conduct is potentially disruptive of the Complainant’s business, and the timing of the registration of the disputed domain name and the September 1, 2011 email chain indicate that the disputed domain name was registered with that disruptive purpose in mind.

In this case, however, not enough is known about the Respondent to enable the Panel to determine whether the Respondent is a competitor of the Complainant, such that paragraph 4(b)(iii) of the Policy would be applicable. As regards paragraph 4(b)(iv) of the Policy, it is evident that the Respondent in this case has used the disputed domain name in order to create at least one email address used to lure third-party suppliers into supplying goods to the Respondent’s order under the false pretence that the Respondent was the Complainant, and such conduct was regarded in Graybar as bringing the dispute within paragraph 4(b)(iv) as an intentional attempt to attract, for commercial gain, users of Internet-based communications to the Respondent’s on-line location by creating a likelihood of confusion between the Complainant’s mark and the source or affiliation of the fraudulent emails. However, in the present case, the lack of any reference to an on-line location or website address in the September 1, 2011 email chain, the absence of any content at the website linked to the disputed domain name, and the lack of any clear evidence of the nature of the Respondent’s presumed commercial gain through the fraud, while not ruling out the application of paragraph 4(b)(iv) of the Policy, do at least make it problematic.

The circumstances set out paragraph 4(b) of the Policy as evidence of registration and use in bad faith are not, however, exhaustive, and the facts of this case do not need to fit squarely within either paragraph 4(b)(iii) or paragraph 4(b)(iv) of the Policy for the Panel to find bad faith registration and use if the facts suggest that there are other grounds for such a finding.

In this case, the Panel concludes that there are indeed other grounds for finding registration and use of the disputed domain name in bad faith. The evidence shows that the disputed domain name was used to create an email address that was itself then used, just one day after the disputed domain name was registered, in order to impersonate the Complainant and to seek to place what the Complainant contends, and the Respondent does not deny, was a fraudulent order for goods in the Complainant’s name. These facts indicate that the Respondent was aware of the Complainant and its business at the time that it registered the disputed domain name, and that indeed such knowledge prompted the registration for the purpose of creating an email address that the Respondent then used in order to cloak itself in the Complainant’s identity.

The Panel is satisfied that the facts of this case point to registration and use of the disputed domain name in bad faith. The Complainant has therefore succeeded 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 <demcousa.com>, be transferred to the Complainant.

Angela Fox
Sole Panelist
Dated: October 31, 2011