The Complainant is RBB Economics LLP, United Kingdom, represented by Stevens & Bolton LLP, United Kingdom.
The Respondent Is Jeff Wall, Hong Kong, China.
The disputed domain name <rbbecon.co> (the “Disputed Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 23, 2020. On September 23, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 24, 2020, 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 September 24, 2020, 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 September 25, 2020.
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 September 28, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 18, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 19, 2020.
The Center appointed Lynda M. Braun as the sole panelist in this matter on October 29, 2020. 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, established in 2002, is a management consultancy firm, providing economic advice to its clients. The Complainant serves clients worldwide and is one of the global leaders in the economics of competition law.
The Complainant is the owner of a number of registered trade marks, including, but not limited to:
- RBB ECONOMICS, United Kingdom Trade Mark No. UK0002322097A, registered on February 6, 2004 in International class 42;
- RBB, United Kingdom Trade Mark No. UK0002322097B, registered on February 6, 2004 in International class 42; and
- RBB ECONOMICS, European Union Trade Mark No. 003043171, registered on November 30, 2004 in International classes 35 and 42.
The aforementioned trade marks will hereinafter collectively be referred to as the “RBB Mark”.
The Complainant owns the domain name <rbbecon.com>, which resolves to its official website at “www.rbbecon.com” that is used to promote and describe its services.
The Disputed Domain Name was registered on August 5, 2020 and resolves to an inactive website. The Disputed Domain Name is being used in connection with a phishing scheme. The Respondent configured the Disputed Domain Name for email functions and used the email address “[...]@rbbecon.co”, to impersonate the Complainant and send emails of employees of the Complainant to its customers. The Complainant’s email accounts had been hacked by the Respondent and used to divert customer emails, resulting in approximately GBP 166,000 being fraudulently transferred to a third-party bank account, presumably belonging to the Respondent. The false email accounts are identical to the email addresses of the Complainant’s employees, except for the use of the country code Top-Level Domain (“ccTLD”) “.co” instead of the generic Top-Level Domain (“gTLD”) “.com”.
The following are the Complainant’s contentions:
- the Disputed Domain Name is confusingly similar to the Complainant’s trademark;
- the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and,
- the Disputed Domain Name was registered and is being used in bad faith.
The Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraphs 4(a)(i)-(iii)):
(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 was registered and is being used in bad faith.
This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark. The Panel concludes that the Disputed Domain Name is confusingly similar to the RBB Mark. It is uncontroverted that the Complainant has established rights in the RBB Mark based on its years of use as well as its registered trademarks for the RBB Mark in the United Kingdom and the European Union. The general rule is that “registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive”. See CWI, Inc. v. Domain Administrator c/o Dynadot, WIPO Case No. D2015-1734. The Respondent has not rebutted this presumption, and therefore the Panel finds that the Complainant has rights in the RBB Mark.
The Disputed Domain Name consists of the entirety of the RBB Mark followed by the term “econ”, an abbreviation for the dictionary term “economics”, and then followed by the ccTLD “.co”. It is well established that a domain name that wholly incorporates a trademark may be deemed confusingly similar to that trademark for purposes of the Policy, despite the addition of a descriptive, dictionary or other term. See Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo, WIPO Case No. D2011-0795; see also Hoffmann-La Roche, Inc. v. Wei-Chun Hsia, WIPO Case No. D2008-0923. As stated in section 1.8 of the Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “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”.
Further, the addition of a ccTLD such as “.co” in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182. Thus, the Panel concludes that the Disputed Domain Name is confusingly similar to the Complainant’s RBB Mark.
Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant.
Under the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of production of evidence that demonstrates rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1.
In this case, the Panel finds that the Complainant has made out a prima facie case. The Respondent has not submitted any arguments or evidence to rebut the Complainant’s prima facie case. Furthermore, the Complainant has not authorized, licensed or otherwise permitted the Respondent to use its RBB Mark. Nor does the Complainant have any type of business relationship with the Respondent. There is also no evidence that the Respondent is commonly known by the Disputed Domain Name or by any name similar to it.
Furthermore, the Respondent is using the Disputed Domain Name solely for the purpose of perpetrating a fraudulent scheme on unwitting Internet users. “Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent.” WIPO Overview 3.0, section 2.13.1. Given the phishing scheme the Respondent operated by reconfiguring the Disputed Domain Name to impersonate the Complainant’s email addresses, the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name, but rather is using the Disputed Domain Name for commercial gain with the intent to mislead by defrauding the Complainant’s customers. As such, the Panel determines that the Respondent does not have rights or legitimate interests in the Disputed Domain Name.
Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant.
The Panel finds that based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith pursuant to paragraph 4(b) of the Policy.
First, the Disputed Domain Name was registered long after the Complainant first began using its RBB Mark. The Panel finds it likely that the Respondent had the Complainant’s RBB Mark in mind when registering the Disputed Domain Name. The Disputed Domain Name <rbbecon.co> is almost identical to the Complainant’s domain name <rbbecon.com>, save for the use of the ccTLD “.co” in the Disputed Domain Name.
Second, the Respondent used the Disputed Domain Name to impersonate the Complainant and perpetrate a phishing scheme directed at the Complainant, a strong indication of bad faith. The Respondent’s phishing scheme to send fraudulent emails purporting to come from the Complainant, seeking money from the Complainant’s customers, evidences a clear intent to disrupt the Complainant’s business, deceive individuals, and trade off the Complainant’s goodwill by creating an unauthorized association between the Respondent and the Complainant’s RBB Mark. See Banco Bradesco S.A. v. Fernando Camacho Bohm, WIPO Case No. D2010-1552. Such conduct is emblematic of the Respondent’s bad faith registration and use of the Disputed Domain Name. See Petróleo Brasileiro S.A. - Petrobras v. AK Bright, WIPO Case No. D2013-2063 (considering the reputation of the complainant and the emails sent by the respondent using the complainant’s trademark, the respondent is held to have registered and used the disputed domain name in bad faith). Further, UDRP panels have found that email-based phishing schemes that use a complainant’s trademark in the disputed domain name are evidence of bad faith. See, e.g., DeLaval Holding AB v. Registration Private, Domains By Proxy LLL / Craig Kennedy, WIPO Case No. D2015-2135.
Finally, the registration of a domain name that reproduces a trademark in its entirety (being identical or confusingly similar to such trademark) by an individual or entity that has no relationship to that mark, without any reasonable explanation on the motives for the registration, may be sufficient in certain circumstances to infer opportunistic bad faith. See Ebay Inc. v. Wangming, WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163. Based on the circumstances here, the Respondent registered and is using the Disputed Domain Name in bad faith to target the Complainant’s RBB Mark for commercial gain.
Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant.
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 <rbbecon.co> be transferred to the Complainant.
Lynda M. Braun
Sole Panelist
Date: November 10, 2020