Complainant is Zef Scientific, Inc., United States of America (“United States”), represented by Moore Ruddell LLP, United States.
Respondent is Name Redacted.1
The disputed domain name <zefcsi.com> is registered with Squarespace Domains LLC
(the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 11, 2021. On June 14, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names, stated in the Complaint as <zefscl.com> and <zefcsi.com>. On June 16, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on June 18, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on June 18, 2021.
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 Respondent of the Complaint, and the proceedings commenced on June 24, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 15, 2021. On June 30, 2021, the Center received an email communication from a third party regarding an apparent identity theft situation. Respondent did not submit any response. Accordingly, the Center notified the Parties of Respondent’s default on July 19, 2021.
The Center appointed Ingrīda Kariņa-Bērziņa as the sole panelist in this matter on August 3, 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.
On August 24, 2021, having identified that the disputed domain names were registered by two different Parties, the Panel issued Procedural Order No. 1 asking Complainant to state a request to consolidate the proceedings or to indicate which of the disputed domain names would no longer be a subject of the proceedings. On September 8, 2021, Complainant indicated that it had filed a separate complaint for the domain name <zefscl.com>. Respondent did not comment on Complainant’s filing. Accordingly, the proceedings concern the disputed domain name <zefcsi.com> and Respondent has been informed accordingly.
Complainant is an American company operating in the business of servicing and repairing mass spectrometry laboratory equipment around the world. Complainant established its business and registered the domain name <zefsci.com> in 2005. Complainant claims that it has rights in the ZEFSCI mark, which has obtained significance as a source identifier over the past 16 years through its continuous use, advertising, and sales.
The disputed domain name was registered on June 4, 2021. It does not resolve to an active website. The record contains copies of email correspondence sent to Complainant’s customers using an email address based on the disputed domain name in which Respondent impersonated Complainant’s employee.
Complainant’s contentions may be summarized as follows.
Under the first element, Complainant asserts standing based on its rights in the ZEFSCI and ZEF SCIENTIFIC marks. It has operated its business continuously under these marks from May 2005 to the present. It registered the domain name <zefsci.com> on May 19, 2005, and hosts its primary business website at that domain name from that time. The ZEFSCI and ZEF SCIENTIFIC marks are well known throughout the pharmaceutical, environmental, food, forensics, diagnostics, chemical research, energy and academia industries. Complainant employs 50 persons in the United States, with additional offices in Canada, Morocco, and India. Complainant has annual revenues above USD 10 million. It obtains new clients through its reputation for high quality services, and additionally places advertisements on Google and “labx.com”, and makes regular appearances at industry trade shows. The disputed domain name is identical to Complainant’s mark, except for the transposition of the letters “s” and “c”. Therefore, it is evident that Respondent has targeted Complainant’s mark.
Under the second element, Complainant states that since the sole use of the disputed domain name has been to impersonate Complainant in an attempt to defraud Complainant’s customers, Respondent has no rights or legitimate interests in the disputed domain name. The disputed domain name has not been put to any other use.
Under the third element, Complainant states that, within days of registering the disputed domain name, Respondent created email addresses using the disputed domain name and sent emails to Complainant’s customer seeking payment of a large invoice. In this correspondence, Respondent provided fraudulent bank account information on Complainant’s letterhead and using Complainant’s mark in an attempt to divert funds. The disputed domain name was registered and used solely for fraudulent purposes.
Complainant requests transfer of the disputed domain name.
Respondent did not reply to Complainant’s contentions. However, on June 30, 2021, the Center received an email communication from a third party stating “I did not register these domain names. My credit card was hacked and an unidentified person used my information to open these accounts using Squarespace Domains LLC. I have contacted Squarespace and American Express to reverse all charges, cancel my American Express card and issue a new card”.
Paragraph 4(a) of the UDRP requires Complainant to make out all three of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) Respondent has registered and is using the disputed domain name in bad faith.
The Panel finds that Complainant has unregistered trademark rights in the ZEFSCI mark for the purposes of the Policy, through the claimed duration and nature of use of the mark, which have not been contested by Respondent. Complainant has used the domain name <zefsci.com> to host its primary website and so may be viewed by Internet users as a source identifier for its services. Respondent, by targeting this source identifier in an attempt to defraud Internet users via confusion, is not in a position to dispute the source identifying nature of Complainant’s ZEFSCI mark (see, e.g., Greenspring Associates, Inc. v. Lisa Knowles, Victoria capital pty, WIPO Case No. D2019-0265). In that regard, the evidence presented supports Complainant’s contention that Respondent has targeted Complainant’s mark. Accordingly, Complainant thereby satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.3.
In comparing Complainant’s ZEFSCI mark with the disputed domain name, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark. The disputed domain name consists of an obvious misspelling of Complainant’s mark. It is the consensus view of UDRP panels that, in such cases, Complainant has standing to bring a case because Complainant’s mark is sufficiently recognizable within the disputed domain name. See WIPO Overview 3.0, section 1.9.
It is the well-established view of UDRP panels that the generic Top-Level Domain “.com” is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. See WIPO Overview 3.0, section 1.11.1.
Accordingly, the Panel finds that Complainant has established the first element under paragraph 4(a) of the Policy.
The Panel finds that the evidence submitted by Complainant establishes a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not authorized by Complainant and is not commonly known by the disputed domain name. The disputed domain name is an obvious misspelling of Complainant’s mark, thereby suggesting sponsorship or endorsement by the trademark owner. Such use cannot confer rights or legitimate interests.
Pursuant to WIPO Overview 3.0, section 2.1, and cases thereunder, where Complainant makes out a prima facie case that Respondent lacks rights or legitimate interests, the burden of production on this element shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name.
Respondent has not provided any evidence of rights or legitimate interests in the disputed domain name. There is no evidence that Respondent is commonly known by the disputed domain name, or that there are any circumstances or activities that would establish Respondent’s rights therein. Rather, the disputed domain name is inactive, and Respondent has used it to generate fraudulent emails. Such use cannot establish rights or legitimate interests. See WIPO Overview 3.0, section 2.13.
Accordingly, the Panel finds that Complainant has established the second element under paragraph 4(a) of the Policy.
Paragraph 4(b) of the Policy defines several circumstances that may provide evidence of the registration and use of a disputed domain name in bad faith.
The Panel finds that Complainant has, on balance, demonstrated Respondent’s bad faith registration and use of the disputed domain name. Complainant’s registration of the domain name <zefsci.com> and use of the ZEFSCI mark predate the registration of the disputed domain name by nearly two decades. The disputed domain name is an obvious misspelling of Complainant’s ZEFSCI mark, indicating bad faith on the part of Respondent.
The use of the disputed domain name also demonstrates bad faith. The unrefuted evidence supports a finding that the disputed domain name was used to create an email address to impersonate Complainant’s employee in an attempt to extract payment from Complainant’s clients. Such conduct constitutes bad faith. Respondent has provided no evidence of actual or contemplated good-faith use of the disputed domain name and the Panel does not find any such use plausible. See, for instance, AB Electrolux v. Jamie Larnie, WIPO Case No. D2020-0506; Arla Foods Amba v. Michael Guthrie, M. Guthrie Building Solutions, WIPO Case No. D2016-2213. See also WIPO Overview 3.0, section 3.4.
The Panel therefore finds that Complainant has established the third element under paragraph 4(a) of the Policy.
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 <zefcsi.com> be transferred to Complainant.
Ingrīda Kariņa-Bērziņa
Sole Panelist
Date: September 24, 2021
1 Respondent appears to have used the name and contact details of a third party in the registration of the domain name. In view of the apparent identity theft, the Panel has redacted from this Decision the name of the individual whose name was fraudulently adopted. 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 concerned Respondent. The Panel has authorized the Center to transmit Annex 1 to the concerned 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.