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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

WILO USA LLC v. Registration Private, Domains By Proxy, LLC / AUSTIN FRANKOSKI LLC, AUSTIN FRANKOSKI LLC

Case No. D2021-1174

1. The Parties

The Complainant is WILO USA LLC, United States of America (“United States”), represented by Momkus LLC, United States.

The Respondent is Registration Private, Domains By Proxy, LLC, United States / AUSTIN FRANKOSKI LLC, AUSTIN FRANKOSKI LLC, United States.

2. The Domain Name and Registrar

The disputed domain name <wilo-ca.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 16, 2021. On April 16, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 19, 2021, the Registrar 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 26, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 16, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 17, 2021.

The Center appointed David H. Bernstein as the sole panelist in this matter on May 26, 2021. 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 subsidiary of Wilo SE and a member of the Wilo Group. The Wilo Group is a pump systems provider serving the building services, water management and industrial sectors. Wilo SE is the owner of a United States trademark registration for WILO (Reg. No. 3,179,232), filed on July 19, 2004, and registered by the United States Patent and Trademark Office (“USPTO”) on December 5, 2006. The goods and services claimed include pumps for drainage, wastewater, sewage, mechanical building and industrial services, heating apparatus pumps and circulators, and related electro-technical apparatus. The Complainant states that it is authorized by its parent to use the WILO mark in the United States.

The Respondent registered the disputed domain name <wilo-ca.com> on April 8, 2021. The disputed domain name redirects to the Complainant’s website <wilo.com>.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the disputed domain name <wilo-ca.com> is confusingly similar to domain names owned by the Complainant, including <wilo.com> and <wilo-us.com>, which incorporate trademarks in which the Complainant has rights.

The Complainant asserts that the Respondent has no rights to or legitimate interests in the disputed domain name and alleges that the Respondent is using the disputed domain name to impersonate and commit fraud. The Complainant states that it has identified numerous incidents of a party fraudulently using the disputed domain name to impersonate the Complainant’s personnel and attempt to defraud the Complainant’s customers and vendors. The Complainant also states that on April 15, 2021, after being informed of the true registrant of the disputed domain name, the Complainant’s counsel sent a cease and desist letter to the Respondent. The Complainant asserts that the Respondent did not stop the illegitimate activity.

Finally, the Complainant asserts that the disputed domain name was registered and used in bad faith. The Complainant alleges that the disputed domain name is being used for the purpose of fraudulent impersonation. The Complainant alleges that the Respondent has attempted to conceal its identity by registering the disputed domain name through a proxy service. Lastly, the Complainant asserts that, in addition to being fraudulent, the use of the disputed domain name is creating a likelihood of confusion with the Complainant’s own marks and domain names, including <wilo.com> and <wilo-us.com>. The Complainant argues these reasons establish beyond dispute that the disputed domain name was registered and used in bad faith.

The Complainant requests the Panel transfer the disputed domain name to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.1

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements in order to obtain cancellation or transfer of a disputed domain name:

(i) the domain name registered by the respondent 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 with respect to the domain name; and

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

A. Identical or Confusingly Similar

The Complainant has established rights in the WILO mark by virtue of the ownership of trademark registration for that mark by its parent company Wilo SE.
The second level of the disputed domain name, <wilo-ca.com>, incorporates the WILO mark in its entirety, adding only the term “-ca”. That alone is sufficient to establish that the disputed domain name is confusingly similar to the Complainant’s trademark for purposes of the Policy. WIPO Overview 3.0, section 1.7 (“in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.”). The addition of the term “-ca”, whether taken as a geographical indicator or otherwise, does not prevent a finding of confusing similarity. 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.”).

Because the “.com” Top-Level Domain (“TLD”) is not relevant to the analysis in this case, the Panel disregards it for purposes of assessing confusing similarity. WIPO Overview 3.0, section 1.11 (“The [TLD] in a domain name is typically disregarded under the confusing similarity test.”). See also Rejuve Clinics LLC v. Merlin Kauffman, Rejuve Inc., WIPO Case No. D2019-2607 (“[TLDs] can be disregarded when evaluating the identity or confusing similarity of the complainant’s mark to the disputed domain name under paragraph 4(a)(i) of the Policy, unless the TLD has relevance in a particular case.”).

Accordingly, the Panel finds that the disputed domain name is confusingly similar to the mark in which the Complainant has rights and concludes the first element has been satisfied.

B. Rights or Legitimate Interests

Demonstrating that a respondent has no rights or legitimate interests in a domain name requires the complainant to prove a negative, which can be challenging if only the respondent is aware of its intentions with respect to the domain name and its claim of rights or legitimate interests. For this reason, although the burden of proof always remains on the complainant, when a complainant has made a prima facie showing that the respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the respondent. WIPO Overview 3.0, section 2.1. Where the respondent fails to come forward with evidence establishing rights or legitimate interests in the disputed domain name, the complainant is deemed to have satisfied this element. Id.

The Complainant has asserted sufficient allegations to make a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant asserts the disputed domain name is being used for the purpose of impersonating the Complainant’s personnel and attempting to defraud the Complainant’s customers and vendors. The Complainant has not submitted any details of these impersonation or fraud schemes, such as copies of fraudulent emails or other evidence to substantiate the claimed impersonation. Although the Complaint’s evidence for this claim is therefore thin, the Complainant did appropriately certify that all statements of fact in the Complaint are true as required by the Rules, paragraph 3. Moreover, the disputed domain name automatically redirects to the Complainant’s own website, which is consistent with the kind of impersonation scheme that the Complainant has described. Under those circumstances, and given that the Respondent has not refuted the accuracy of these assertions, the Panel accepts as true the Complainant’s assertions with respect to the Respondent’s fraudulent activities.

Further supporting the Complainant’s assertion is the fact that, on April 14, 2021, the Complainant posted a Scam Notice on <wilo.com> alerting website visitors of fraudulent behavior concerning the disputed domain name <wilo-ca.com>.2 The Scam Notice warns against parties falsely claiming to be associated with Wilo Canada Inc. and seeking to obtain lines of credit or place fraudulent purchase orders. It also warns that Wilo Canada Inc.’s name, logo, and other company information have been used in these attempts, many of which have come from emails associated with the disputed domain name.

Moreover, the construction of the disputed domain name carries a risk of implied affiliation. WIPO Overview 3.0, section 2.5.1.

The use of a domain name for illegal activity, including impersonation or other types of fraud, can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1. Therefore, the Panel finds that the Complainant has established that the Respondent lacks rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The Respondent is using the disputed domain name to impersonate the Complainant’s personnel and defraud the Complainant’s customers and vendors. Such use is paradigmatic bad faith. WIPO Overview, section 3.1.4 (“Given that the use of a domain name for per se illegitimate activity…can never confer rights or legitimate interests on a respondent, such behavior is manifestly considered evidence of bad faith.”).

The Respondent’s use of a privacy shield to hide its identity and the automatic redirection to the Complainant’s own website further supports a finding of bad faith. The use of a domain name incorporating a trademark by an unauthorized third party to redirect Internet users to a complainant’s website has been specifically recognized as evidence of bad faith registration and use. WIPO Overview, 3.1.4 (“Panels have moreover found the following types of evidence to support a finding that a respondent has registered a domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark: […] redirecting the domain name to the complainant’s […] website”); id. (“Similarly, panels have found that a respondent redirecting a domain name to the complainant’s website can establish bad faith insofar as the respondent retains control over the redirection thus creating a real or implied ongoing threat to the complainant.”).

Accordingly, the Panel concludes that the Complainant has satisfied this element.

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 <wilo-ca.com> be transferred to the Complainant.

David H. Bernstein
Sole Panelist
Date: June 8, 2021

1 Given the absence of a Response, the Panel has carefully reviewed the record to ensure that Respondent received fair notice of this proceeding. Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415. The Center sent notification of the Complaint to the Respondent by email and courier. The Written Notice was sent by DHL to the Lake Worth, Florida, mailing address listed for Austin Frankoski; the DHL tracking results confirm that the package was delivered to this address and signed for by “AUSTIN FRANKOSKI” on April 28, 2021. Thus, it appears that the Respondent received actual notice of the Complaint, but even if it did not, the Panel finds that the Center has discharged its obligation to provide fair notice to Respondent as required by the Rules, paragraph 2(a).

2 https://wilo.com/us/en_us/About-Wilo/News-and-events/Current-News/ScamNotice-wilo-ca.com_2624.html

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