The Complainant is NEOVIA of Saint-Nolff, France, represented by Innis Law Group LLC, United States of America (“United States”).
The Respondent is WhoIs Guard Protected of Panama, Panama / Thomas Sal of Bergen, Norway.
The disputed domain name <ptwisium.com> is registered with NameCheap, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 5, 2019. On March 6, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 6, 2019, 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 March 7, 2019, 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 amendment to the Complaint on March 14, 2019.
The Center verified that the Complaint together with the amendment to 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 15, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 4, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 5, 2019.
The Center appointed Ian Blackshaw as the sole panelist in this matter on April 10, 2019. 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 was founded in 1954 and is now an international multibillion-dollar company with over 8,200 employees and seventy-five production sites serving customers in more than twenty-eight countries around the world.
For over sixty years, the Complainant has been a major global provider in animal health and animal nutrition solutions, with a global presence across Europe, North America, South America, Asia, and Africa.
In 2017, the Complainant had global sales of EUR 1,7 billion.
The Complainant owns numerous worldwide trademark registrations of its WISIUM trademark (the “WISIUM Mark”).
The WISIUM Mark is considered the Complainant’s Masterbrand for its pre-mix and firm-services business. Since 2017, the WISIUM Mark has been registered in the United States for the following goods and services:
- Class 05 – non-medicated additives for animal feed for use as nutritional supplements, namely, nutritional additives for foodstuff for livestock and horses, as well as for pets solely when intended for incorporation into their products by manufacturers of pet food; nutritional supplements and non-medicated additives for animal feed for use as nutritional supplements for livestock and horses, namely, dietary supplements made with trace elements, vitamins, minerals; veterinary products for the care of livestock and horses, namely, greases for veterinary purposes; sanitary products for livestock and horses, namely, disinfectants for livestock and horses;
- Class 31 – foodstuff for livestock and horses, as well as for pets solely when intended for incorporation into their products by manufacturers of pet food, namely, animal feed; products for animal litter and drying products for livestock litter, namely litter peat;
- Class 44 – consulting services relating to agriculture, namely, agricultural advice; consulting services in the field of veterinary services, namely, advice and assistance relating to animal food and animal health and hygiene.
The Panel has been provided with a copy of the United States Certificate of Registration for the WISIUM Mark.
Additionally, the Complainant owns numerous worldwide registrations of the WISIUM Mark that cover a wide range of goods and services. A representative list of those registrations has been provided to the Panel.
The goods and services offered under the WISIUM Mark are present in over fifty countries around the world. The Complainant currently manufactures over thirty-million tons of feed to be sold under the WISIUM Mark for over one-thousand industrial customers. As a result of promoting the WISIUM Mark and its extensive use of the WISIUM Mark, the Complainant has built an enhanced international reputation and goodwill in the WISIUM Mark.
The Complainant also owns the domain name <wisium.com> including its sub-domain name <pt.wisium.com>.
The <wisium.com> domain name and the <pt.wisium.com> sub-domain name were adopted, registered and are currently used by the Complainant in connection with its WISIUM products and services, including animal nutrition and premixes.
The Complainant also maintains an extensive on-line presence for its WISIUM goods and services through the website at <wisium.com>. Screenshots of the <wisium.com> domain name and the <pt.wisium.com> sub-domain name have been provided to the Panel.
The “www.wisium.com” website allows consumers to read about the worldwide presence of the Complainant’s WISIUM goods and services. The website describes the Complainant’s products offered under the WISIUM Mark and provides customers with the latest news on the Complainant and the goods/services offered under its WISIUM Mark.
The “www.wisium.com” website is an integral part of the Complainant’s business that allows consumers from around the world to learn about the Complainant and its goods/services sold under the WISIUM Mark. The site also allows consumers to conduct business with the Complainant from anywhere in the world. Through sub-domains, the “www.wisium.com” website appears in different languages to better serve the Complainant’s customers and potential customers around the world. Furthermore, the <wisium.com> domain name and sub-domain name are used by the Complainant’s employees in their email communications to clients and other employees. The <pt.wisium.com> sub-domain name is relevant to this proceeding because it is virtually identical to the disputed domain name that the Respondent has registered.
The Complainant also maintains an extensive online presence for itself and its WISIUM goods and services on Twitter, LinkedIn, and YouTube. Screenshots of the Complainant’s social media presence, including for its WISIUM products, have been provided to the Panel.
The disputed domain name was registered on February 13, 2019 and according to the evidence provided by the Complainant has been used to send fraudulent emails.
The Complainant makes the following assertions:
The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights
Similarity of the disputed domain name and the WISIUM Mark.
The disputed domain name is necessarily visually confusingly similar to the WISIUM Mark. It is established that “the prominent presence of a recognizable trademark in a domain name is sufficient to amount to confusing similarity with the trademark, irrespective of any dilution with other words or letters”. Osram Sylvania, Inc. v. Jason Blevins, WIPO Case No. D2009-0233.
Here, the disputed domain name completely and entirely incorporates the Complainant’s well-known WISIUM Mark and the WISIUM portion of the disputed domain name is clearly the most prominent part. Moreover, the inclusion of “pt” greatly increases the confusing similarity given the Complainant’s strong worldwide presence and use of its <pt.wisium.com> sub-domain name.
In fact, the disputed domain name could easily be mistaken for the Complainant’s website <pt.wisium.com> and only differs by the inclusion of a period between the “pt” and “WISIUM.”
The disputed domain name and the WISIUM Mark are also phonetically and conceptually similar. As previously mentioned, the WISIUM Mark is fully encompassed by the disputed domain name. As a result, they are necessarily phonetically similar with the only difference being the non-distinctive “pt.” Both the WISIUM Mark and the disputed domain name consist of six identical letters in the same order with no punctuation. It has been held that “the absence of a punctuation mark can be regarded as excluded for convenience and is only a slight change that does not alter the impression of the disputed domain name”. Carver Korea Co., Ltd. v. cai jiang nan cai jiang nan, cai jiang nan, WIPO Case No. D2016-0978. As a result, the disputed domain name and the WISIUM Mark should be treated as conceptually identical.
As discussed, the disputed domain name could easily be mistaken for the Complainant’s domain name <wisium.com> and sub-domain name <pt.wisium.com>. Thus, the inclusion of “pt” only serves to increase the confusion with the Complainant’s WISIUM Mark.
Additionally, employees of the Complainant use “pt.wisium.com” in the email addresses for legitimate communications within the business and to the Complainant’s customers. For example, the “[...]@pt.wisium.com” email is used by the Complainant to communicate with its customers regarding services offered under the WISIUM mark.
As set forth in more detail below, the Respondent deliberately registered the disputed domain name and illegally used the WISIUM Mark and to cause confusion as to the source of the emails in order to fraudulently obtain the recipient’s banking information. Specifically, the Respondent is using the disputed domain name to impersonate multiple employees of the Complainant in an attempt to defraud the Complainant in connection with its unauthorized use of the WISIUM Mark and in violation of numerous civil and criminal laws.
Given the clear, visual, phonetic, and conceptual similarities, the Respondent’s disputed domain name is identical or confusingly similar to the Complainant’s WISIUM Mark.
The Respondent has no rights or legitimate interests in respect of the disputed domain name
The Complainant has not licensed or otherwise permitted the Respondent to use its WISIUM Mark or register the disputed domain name.
Further, upon information and belief, the Respondent is not nor has ever been commonly known, either as a business, individual, or an organization, by the disputed domain name.
Additionally, upon information and belief, the Respondent is not exercising a legitimate non-commercial or fair use of the disputed domain name without intent for commercial gain. Instead, the Respondent is using the disputed domain name to impersonate employees of the Complainant, including the Complainant’s General Director and Director of Finance, in violation of civil and criminal laws, in order to fraudulently obtain the recipients’ banking information.
Furthermore, upon information and belief, the Respondent does not use, nor has made 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.
The disputed domain name does not contain any content associated with a bona fide business but rather is a holding page. Screenshots of the disputed domain name have been provided to the Panel.
On the contrary, and as described in more detail below, the Respondent has deliberately adopted the disputed domain name and is now using it and the WISIUM Mark to intentionally trade on the goodwill of the Complainant’s WISIUM Mark and business reputation by impersonating multiple employees of the Complainant in email communications in an attempt to gain customer banking information.
The record shows that the Respondent has no rights or legitimate interests in the disputed domain name.
The disputed domain name was registered and is being used in bad faith
The facts set forth below clearly establish that the Respondent is using the disputed domain name in bad faith to impersonate the Complainant’s employees for fraudulent and illegal purposes in an attempt to obtain customer banking information and in violation of numerous civil and criminal laws.
Specifically, the Respondent is impersonating G. R., the General Director of the Complainant (“Mr. R.”), and J. M. S., the Director of Finance (“Mr. S.”), for the Respondent’s own financial gain and causing financial harm and damage to the Complainant by sending fraudulent emails to its customers in an attempt to obtain bank account information. This fact alone is sufficient to establish bad faith. See SouthCrest Bank, N.A. v. VistaPrint Technologies Ltd., WIPO Case No. DCO2015-0009 (finding the respondent’s use of the dispute domain was bad faith where the respondent used domain to impersonate the complainant’s Chief Financial Officer).
In addition, the Respondent, through the registration of the disputed domain name, has also engaged in typo squatting with the intent to deceive users.
Finally, the Respondent must have been aware of the Complainant’s rights, given its worldwide registrations and the intentional and fraudulent use of the Complainant’s WISIUM Mark.
Thus, the facts of this case compel a finding of bad faith. The Respondent deliberately adopted the disputed domain name and is now using the WISIUM Mark to intentionally trade on the goodwill of the Complainant’s name, the WISIUM Mark, and the Complainant’s business reputation by falsely impersonating its employees, including Mr. R. and Mr. S., to obtain bank information from the Complainant’s customers. These facts are egregious and establish that the Respondent is using the WISIUM Mark in bad faith. See SHUAA Capital psc v. SHUAA CAPITAL, FA 1581256 (Nat. Arb. Forum Oct. 29, 2014) (“Respondent’s registration of a domain name obviously intended to create confusion with Complainant, together with its use of that domain name in connection with a fraudulent scheme involving email messages sent to third parties in an attempt to exploit such confusion, is indicative of bad faith”); see SouthCrest Bank, N.A. v. VistaPrint Technologies Ltd., supra (finding the respondent’s use of the dispute domain was in bad faith where the respondent used domain to impersonate the complainant’s Chief Financial Officer); see also Advance Magazine Publishers Inc. v. Domains By Proxy LLC/Marculles Brackard, Rock Your Fashion, Inc., WIPO Case No. DCO2016-0006 (finding bad faith where the respondent used the disputed domain name to send fraudulent emails impersonating the Editor-in-Chief). A compilation of the emails sent to actual customers of the Complainant and used by the Respondent to impersonate Mr. R. and Mr. S. has been provided to the Panel. Neither the Complainant, Mr. R., nor Mr. S. generated or authorized the creation of such emails.
The Respondent is using the disputed domain name with the illegal intent to impersonate the Complainant’s employees and defraud the Complainant, its employees, its customers, and potential customers. On February 14, 2019, the Respondent falsely represented himself as Mr. R. in an email chain to a customer, E. E. of Hi-Nutrients (“Mr. E.”), where the Complainant’s legitimate banking details were provided to Mr. E. Evidence of this has also been provided to the Panel. The Respondent then posed as Mr. S. and requested Mr. E.’s payments to the Complainant be made in Euros instead of US dollars. The Respondent copied the false email address for Mr. R. to make the email seem legitimate. Subsequently, on February 15, 2019, the Respondent again posed as Mr. S. to notify Mr. E. that payments to the Complainant’s legitimate bank account were to be halted. The Respondent then provided Mr. E. with a new bank account and information for Mr. E. to make payments to. The Respondent again copied the false email address for Mr. R. so that the email would appear to be official. In fact, the Complainant was alerted to the Respondent’s use of the disputed domain name when Mr. E. contacted Mr. S. to confirm the banking details of the Respondent’s email.
Thus, the Respondent’s act of using the disputed domain name to impersonate Mr. R. and Mr. S. is clear evidence of bad faith. See Archer-Daniels-Midland Company v. Name Redacted, WIPO Case No. D2016-1618 (finding bad faith where the respondent impersonated the complainant’s CEO and Chairman in a phishing scheme); SouthCrest Bank, N.A. v. VistaPrint Technologies Ltd., supra (finding the respondent’s use of the dispute domain was bad faith where the respondent used domain to impersonate the complainant’s Chief Financial Officer); TVS Motor Company Limited v. VistaPrint Technologies Ltd., WIPO Case No. DCO2014-0007(the respondent used the disputed domain in bad faith where he used the domain to create emails purporting to be officers of the complainant); Roper Industries, Inc. v. VistaPrint Technologies, Ltd., WIPO Case No. D2014-1828 (finding bad faith where the respondent used disputed domain as the return email address in a fraudulent correspondence sent to an officer of the complainant in that case); Syngenta Participations AG v. Who Is Agent/Rogeria Biasottoi, WIPO Case No. D2015-0253 (finding bad faith where the respondent used the disputed domain to send fraudulent emails impersonating an employee of the complainant).
Furthermore, in 2015, Archer-Daniels-Midland Company successfully brought a UDRP action against a fraudulent domain name that copied ADM’s website in order to solicit private information for its users. See Archer-Daniels-Midland Company v. Chamiris Mantrana, WIPO Case No. D2013-0257 (finding bad faith where the respondent copied the complainant’s website and used a false Contact Us page to lure users to provide private information).
It has also been established that typo squatting is considered evidence of bad faith on the part of the Respondent. See Learning Tree International Inc. v. hghgghjjk, jghjjklk, WIPO Case No. D2015-1243 (holding that the registrant engaged in typo squatting with the domain <learninngtree.com> which evidenced bad faith registration). By registering the disputed domain name, the Respondent has engaged in typo squatting.
The Respondent’s registration of the disputed domain name is nearly identical to the <pt.wisium.com> sub-domain name owned by the Complainant. The Respondent deliberately removes the period between the “pt” and “wisium” to deceive and cause confusion with the Complainant’s <pt.wisium.com> sub-domain name. This typo squatting is also evidence of bad faith on the part of the Respondent.
The reasons set forth above compel a finding that the Respondent registered and is using the disputed domain name in bad faith. Ultimately, the Respondent’s actions are designed to commit fraud by deceiving the Complainant’s customers and employees through the impersonation of the General Director, Director of Finance, and other employees of the Complainant, and the sending of fraudulent emails.
The disputed domain name should, therefore, be transferred to the Complainant.
The Respondent, having been duly notified of the Complaint and of these proceedings, did not reply to the Complainant’s contentions or take any part in these proceedings.
To qualify for cancellation or transfer of the disputed domain name, the Complainant must prove each of the following elements of paragraph 4(a) of the Policy, namely:
(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.
In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.
In accordance with paragraph 14(a) of the Rules, in the event that a party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules or the panel, the panel shall proceed to a decision on the complaint; and under paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the panel, the panel shall draw such inferences as it considers appropriate.
In accordance with paragraph 10(d) of the Rules, the panel shall determine the admissibility, relevance, materiality and weight of the evidence.
In previous UDRP cases in which the respondents failed to file a response, the panels’ decisions were based upon the complainants’ reasonable assertions and evidence, as well as inferences drawn from the respondents’ failure to reply. See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064 and also Köstritzer Schwarzbierbrauerei v. Macros-Telekom Corp., WIPO Case No. D2001-0936.
Nevertheless, the panel must not decide in the complainant’s favor solely based on the respondent’s default. See Cortefiel, S.A. v. Miguel García Quintas, WIPO Case No. D2000-0140. In the present case, the Panel must decide whether the Complainant has introduced elements of proof, which allow the Panel to conclude that its allegations are true.
It is well established in previous UDRP decisions that, where the disputed domain name incorporates a complainant’s registered trademark, this may be sufficient to establish that the disputed domain name is identical or confusingly similar for the purposes of the Policy. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.
In the present case, the disputed domain name incorporates the Complainant’s registered trademark WISIUM and this makes the disputed domain name confusingly similar to the Complainant’s well-known registered trademark WISIUM.
The Panel agrees with the Complainant’s contention that the omission from the disputed domain name of the period after the letters “pt” is irrelevant and does not have the effect of avoiding the confusing similarity. See Volkswagen AG v. Privacy Protection Services, WIPO Case No. D2012-2066. See also Osram Sylvania, Inc. v. Jason Blevins, WIPO Case No. D2009-0233.
In view of the above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s well-known registered trademark WISIUM, in which the Complainant has demonstrated, to the satisfaction of the Panel, that it has prior rights in and commercial use of the same.
The first element of the Policy, therefore, has been met.
In order to determine whether the Respondent has any rights or legitimate interests in respect of the disputed domain name (paragraph 4(c) of the Policy), attention must be paid to any of the following circumstances, in particular, but without limitation:
- whether there is any evidence of 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 before any notice to the Respondent of the dispute;
- whether 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;
- whether 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.
There is no evidence before the Panel to show that the Respondent was acting in pursuance of any rights or legitimate interests with respect to registering the disputed domain name. On the contrary, if the Respondent had any such rights or legitimate interests, the Respondent would have reasonably been expected to assert them, which the Respondent clearly has not done so, by not replying to the Complaint or taking any part in these proceedings. See Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.
There is no evidence either before the Panel that the Respondent has been authorized or licensed by the Complainant to use the Complainant’s well-known registered trademark WISIUM. In fact, in the view of the Panel, the adoption by the Respondent of a domain name confusingly similar to the Complainant’s well-known registered trademark WISIUM, which the Panel considers, as asserted above by the Complainant, would appear not by mere chance but by design, inevitably leads to confusion on the part of Internet users and consumers seeking information about the Complainant and its products and services.
Further, the Panel finds that the Respondent is consequentially trading unfairly on the Complainant’s well-known registered trademark WISIUM and also the valuable goodwill that the Complainant has established in this trademark through prior and lengthy commercial use, as evidenced above, without any right or legal justification for doing so.
Also, the Panel finds no evidence that the Respondent has used or undertaken any demonstrable preparations to use the disputed domain name in connection with any bona fide offering of goods or services.
Likewise, no evidence has been adduced that the Respondent has commonly been known by the disputed domain name; nor, for the reasons mentioned above, is the Respondent making a legitimate noncommercial or fair use of the disputed domain name.
Therefore, for all the above reasons and those advanced above by the Complainant, the Panel concludes that the Respondent has neither rights nor legitimate interests in the disputed domain name.
Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, which constitute prima facie evidence of bad faith. However, this list is not exhaustive, but merely illustrative. See Nova Banka v. Iris, WIPO Case No. D2003-0366.
Paragraph 4(b)(iv) of the Policy is particularly relevant to the present case and provides that there is evidence of bad faith in the following circumstances:
“(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] web site or location or of a product or service on [its] web site or location.”
Based on the evidence provided on the record, the Panel considers that the Respondent, by registering the disputed domain name incorporating the Complainant’s well-known registered trademark WISIUM, is trading unfairly on the Complainant’s valuable goodwill established in such trademark.
The nature of the disputed domain name, in the view of the Panel, is bound to lead to confusion on the part of consumers and Internet users seeking information about the Complainant and its products and services marketed under its well-known registered trademark WISIUM.
Also, the effect of such conduct on the part of the Respondent is to mislead Internet users and consumers into thinking that the Respondent is, in some way or another, connected to, sponsored by or affiliated with the Complainant and its business; or that the Respondent’s activities are approved or endorsed by the Complainant. None of which the Panel can find, on the basis of the evidence provided on the record, is, in fact, the situation. Such misleading consequences, in the view of the Panel, are indicative of bad faith on the part of the Respondent. See Columbia Insurance Company v. Pampered Gourmet, WIPO Case No. D2004-0649.
Furthermore, see also Microsoft Corporation v. J. Holiday Co., WIPO Case No. D2000-1493, in which it was stated that “consumers expect to find a company on the Internet at a domain name address comprised of the company’s name or trademark”. As this is not, in fact, the situation in the present case, the use by the Respondent of the disputed domain name is confusing and misleading and, in the view of the Panel, this is a further indication that the disputed domain name was registered and is being used in bad faith.
Again, in the absence of any explanation to the contrary by the Respondent, of which none is forthcoming on the record, the Panel agrees with the Complainant’s contention that the Respondent did not register and use the disputed domain names by chance, but, as noted above, appears to have been fully aware of the notoriety of the Complainant and its business activity as well as its well-known registered trademark WISIUM and its prior and lengthy commercial use.
Moreover, the Panel agrees with the Complainant’s contentions that the Respondent’s use of the disputed domain name and the sending of emails, described above by the Complainant, with the intention of impersonating the Complainant’s employees and defrauding the Complainant, its employees, its customers, and potential customers, as detailed above by the Complainant, is also an indication of bad faith on the part of the Respondent, for the reasons and on the basis of the previous UDRP cases cited above by the Complainant.
Finally, the failure of the Respondent to answer the Complaint or take any part in the present proceedings, again, in the view of the Panel, is another indication of bad faith on the part of the Respondent. See Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787.
Therefore, taking all these particular facts and circumstances into account and for all the above-mentioned reasons, as well as the arguments advanced by the Complainant in its contentions, as set out above, the Panel concludes that the Respondent has registered and is using the disputed domain name 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 <ptwisium.com> be transferred to the Complainant.
Ian Blackshaw
Sole Panelist
Date: April 11, 2019