Complainant is Hager SE of Blieskastel, Germany, represented by Dreyfus & associés, France.
Respondent is Oneandone Private Registration, 1&1 Internet Inc of Chesterbrook of United States of America (“United States”) / Ashwin Rayaprolu, Kabarama of Dublin, California, United States.
The disputed domain name <hagergrovp.com> is registered with 1&1 Internet AG (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 1, 2018. On March 1, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 5, 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 Complainant on March 7, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on March 9, 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 Respondent of the Complaint, and the proceedings commenced on March 15, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 4, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 5, 2018.
The Center appointed Roberto Bianchi as the sole panelist in this matter on April 12, 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.
Complainant’s group is a leading supplier of solutions and services for electrical installations in residential, commercial and industrial buildings.
Complainant owns, inter alia, the following trademark registrations:
United States trademark HAGER, Reg. No. 2312624, Reg. Date January 25, 2000, duly renewed, filed on October 15, 1997, covering electrical equipment in International Class 9, with a first use in commerce date of December 9, 1996.
International trademark HAGER, Reg. No. 722980, Reg. Date September 20, 1999, covering installation equipment for energy transmission and energy distribution, etcetera, in International Class 9, and electrical consumer equipment, namely lamp holders, lamp sets, in International Class 11.
Complainant and its affiliates operate the domain names <hager.com>, registered on May 28, 1997, and <hagergroup.com>, registered on July 15, 1998.
The disputed domain name was registered on February 26, 2018.
Currently, the website to which the disputed domain name redirects is inactive.
Complainant’s contentions are as follows:
The disputed domain name <hagergrovp.com> is confusingly similar to Complainant’s trademark HAGER and Complainant’s domain name <hagergroup.com>. The disputed domain name entirely reproduces the trademark HAGER with the association of the misspelled term “grovp” which can easily be confused with the dictionary term “group”. The inclusion of the misspelled word is likely to cause further confusion since this term clearly refers to the companies owned and controlled by Complainant. Complainant is the parent company of many subsidiaries and affiliates and is presented as a group on its website.
Respondent has no rights or legitimate interests in respect of the domain name. Respondent has no prior rights or legitimate interests in the domain name. The registration of the HAGER trademark preceded the registration of the disputed domain name for years. Respondent is not commonly known by the name “Hager”. Respondent is neither affiliated in any way with Complainant, nor authorized or licensed to use the HAGER trademark, or to seek registration of any domain name incorporating said trademark.
The disputed domain name is so identical to the trademark HAGER and Complainant’s group of companies - added to the fact that the disputed domain name points towards a parking page - that Respondent cannot reasonably pretend he was intending to develop a legitimate activity through the disputed domain name. Consequently, Respondent fails to show any intention of fair use of the disputed domain name. Finally, Respondent is engaged in a fraudulent scheme: Respondent usurped the identity of Complainant’s CEO in order to mislead its employees and divert payments. Annex 4 to the Complaint. Consequently, the disputed domain name is not used in any type of legitimate business or services. It deceives employees, who incorrectly understand that they are referred to Complainant’s bona fide services. See WIPO Case No. DMX2012-0006, Google, Inc. v. Robert Takovich. Therefore, Respondent cannot pretend to have any legitimate interests in the disputed domain name.
As to registration in bad faith, it is implausible that Respondent was unaware of Complainant and its trademark HAGER when he registered the disputed domain name. Under Section 2 of the ICANN Policy, it is established that when someone registers a domain name, he represents and warrants to the registrar that, to his knowledge, the registration of the domain name will not infringe the rights of any third party. This means that it was Registrant’s duty to verify that the registration of the disputed domain name would not infringe the rights of any third party before registering the said domain name. Considering the reputation of Complainant’s trademark HAGER and its goodwill, it is hard to believe that Respondent was unaware of the existence of Complainant and its trademark at the time of registration of the disputed domain name.
Since Respondent linked an email server using the name of Complainant’s CEO, there is no doubt that Respondent registered the disputed domain name in bad faith because he was aware of Complainant and its employees. Respondent’s entire reproduction of Complainant’s trademark clearly proves that Respondent was aware of the existence of Complainant’s trademark.
Respondent uses the disputed domain name to direct Internet users to a webpage displaying pay-per-click links, which are likely to generate revenues. Panels have held that the use of domain names to divert Internet users and to direct them to a webpage providing click-through revenues to Respondent evidences bad faith. Respondent is taking undue advantage of Complainant’s trademark to generate profits. The use of a well-known trademark to attract Internet users to a website for commercial gains constitutes a use in bad faith pursuant to the Policy. In addition, there is no indication of Respondent’s own activities on the aforementioned website. Respondent uses the disputed domain name to direct Internet users to a webpage displaying commercial links, which numerous prior Panels have considered that this behavior is an additional proof of bad faith.
It is more likely than not that Respondent’s primary motive in registering and using the disputed domain name was to capitalize on or otherwise take advantage of Complainant’s trademark rights, through initial interest confusion. Coupled with the parking page set up by Respondent, the disputed domain name is set up with email services and is used for fraudulent activities. Respondent is engaged in a phishing scheme and clearly aims to divert payments from Complainant through an email address usurping Complainant’s CEO name. Panels have agreed that there is no better evidence of bad faith than a fraudulent phishing scheme set up with the help of a domain name containing the trademark of a company the customers or Internet users of which are being misled and deceived into believing they are dealing with the owner of the trademark.
Respondent did not reply to Complainant’s contentions.
By submitting printouts taken from the databases of official trademark offices, Complainant has satisfied the Panel that it has trademark rights in the mark HAGER. See section 4 above.
In the disputed domain name, Complainant’s HAGER mark is incorporated in its entirety, while the added term “grovp” is a clear mistyping of the generic or descriptive term “group”. It is well established that such kind of differences are irrelevant to distinguish one identifier from the other. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8 (“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. The nature of such additional term(s) may however bear on assessment of the second and third elements.”)
The Panel concludes that the disputed domain name is confusingly similar to Complainant’s mark HAGER.
There is no evidence on the record that Respondent has registered any mark corresponding to the disputed domain name, or that it was authorized or licensed by Complainant to use the HAGER mark in any manner, including in a domain name. The Panel also notes that there is no evidence that Respondent is known – commonly or otherwise – by the disputed domain name. In fact, according to the relevant WhoIs data, the registrant of the disputed domain name is “Ashwin Rayaprolu”, while the registrant’s organization is “Kabarama”. Thus, Respondent does not fall within Policy paragraph 4 (c)(ii).
Complainant has shown in Annex 4 to the Complaint that Respondent used the disputed domain name in an email address, impersonating Complainant’s CEO to mislead Complainant’s employees. Clearly, impersonation by using a domain name confusingly similar to a third party with dubious intentions is neither a use in connection with a bona fide offering of goods or services under Policy paragraph 4(c)(i), nor a fair or legitimate noncommercial use of the domain name pursuant to Policy paragraph 4(c)(iii). See Kumfs Brand Limited v. George, WIPO Case No. D2016-1272 (“Even apart from the illustrative criteria set forth in paragraphs 4(c)(i)-4(c)(iii) of the Policy, the Respondent’s use of the disputed domain name, as part of a scheme to deliberately impersonate the Complainant in order to lead another into believing that it is dealing with the Complainant, when in actuality it is not, and then to induce that party to make payments ultimately to the Respondent is not entitled, is itself illegitimate.”).
In the Panel’s view, the available evidence is sufficient for Complainant to make a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Given Respondent’s failure to provide the Panel with any explanation for his registration and use (and present lack of use) of the disputed domain name, the Panel concludes that Respondent lacks any rights or legitimate interests in the disputed domain name. See WIPO Overview 3.0, section 2.1 (“While the overall burden of proof in UDRP proceedings is on the complainant, 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 faciecase 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.”)
The Panel notes that Complainant’s registrations for the HAGER mark predate the registration of the disputed domain name by at least 18 years. See section 4 above. The Panel also notes that the disputed domain name contains Complainant’s mark in its entirety, and the addition of the term “grovp” unmistakably refers to Complainant’s group of companies. Accordingly, the Panel concludes that Respondent knew of, and targeted Complainant and its HAGER mark at the time of registering the disputed domain name. In the circumstances of this case, this means that such registration was in bad faith.
Currently, the website at the disputed domain name is inactive (The Panel’s attempts to connect its browser to the website at the disputed domain name returned a “404 Not Found” error.) This current inaction and the lack or any submission or explanation by Respondent contribute to the Panel’s impression that Respondent is acting in bad faith.
In addition, Complainant has shown at Annex 4 to the Complaint that Respondent has used the disputed domain name as an email address, from which at least one message – purportedly signed by Complainant’s CEO – was sent to one employee of Complainant. Since that email address does not belong to Complainant, it is evident that it was Respondent or at least someone authorized by Respondent who impersonated Complainant’s official. Whatever the purpose of Respondent in the setting up and execution of the impersonation, this scheme is a use in utmost bad faith pursuant to Policy paragraph 4(a)(iii).
The Panel concludes that the disputed domain name was registered and is being used in bad faith.
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 <hagergrovp.com> be transferred to Complainant.
Roberto Bianchi
Sole Panelist
Date: April 25, 2018