The Complainant is Haas Food Equipment GmbH of Vienna, Austria, represented by Preslmayr Rechtsanwälte OG, Austria.
The Respondent is Andrea Rocco / Khan Arif of London, United Kingdom of Great Britain and Northern Ireland (the “UK”).
The disputed domain name <haas-mondosmix.com> is registered with 101Domain, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 14, 2015. On July 14, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on August 26, 2015.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 27, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was September 16, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 17, 2015.
The Center appointed Luca Barbero as the sole panelist in this matter on September 23, 2015. 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 is an Austrian company operating worldwide in the field of mechanical engineering, and is a member of the Haas Group.
The Haas Group owns several trademark registrations for the trademark MONDOMIX, including the International trademark No. 474486 for MONDOMIX (word mark) of January 1, 1983, in classes 7 and 9.
The Complainant owns and operates a web site at <haas.com> and also owns the domain name <haas-mondomix.com>, registered on March 17, 2011.
The Respondent registered the disputed domain name <haas-mondosmix.com> on November 4, 2014. The disputed domain name is not pointed to an active web site.
The Complainant alleges that the disputed domain name is almost identical to the Complainant’s domain name <haas-mondomix.com> and encompasses its registered trademark MONDOMIX.
The Complainant submits that the Respondent has no legitimate interests in the disputed domain name. It states that “Haas” has been a well-known family business for more than 40 years.
The Complainant also asserts that the Respondent registered and used the disputed domain name in bad faith for fraudulent purposes, specifying that the registration of the disputed domain name is a case of typosquatting. As additional circumstances of bad faith, the Complainant submits that the Respondent is passively holding the disputed domain name and that the Complaint could not be delivered by the Complainant since the Respondent is unknown at its address.
The Complainant claims that criminals registered and used another domain name,<haas-mond0mix.com>, in connection with a web site reproducing the contents of the Complainant’s site available at <haas-mondomix.com> and with a fake email address, similar to an existing address of the Complainant, that was created and used to send communications purportedly coming from a Complainant’s senior executive. The Complainant alleges that the Respondent also misused the Complainant’s office papers and a scanned signature of an “Haas’ Chief Financial Officer, and instructed one of the Complainant’s agent to use a bank account in China to deliver payments due to the Complainant. As a result, the Respondent allegedly obtained several hundred thousand Euro that ought to be paid to the Complainant.
The Complainant also states that the Respondent registered the domain name <haaas.co> and the disputed domain name to fulfill similar attacks.
The Complainant informs the Panel that it reported the above-mentioned fraudulent activities to the Austrian Police Department and that the domain names <haas-mond0mix.com> and <haaas.co> were subject of the prior UDRP cases (see Haas Food Equipment GmbH v. Usman ABD, Usmandel, WIPO Case No. D2015-0285 and Haas Food Equipment GmbH v. VistaPrint Technologies Ltd, WIPO Case No. DCO2015-0016).
The Respondent did not reply to the Complainant’s contentions.
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a service in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
The Complainant has provided evidence of trademark registrations for MONDOMIX granted before the registration date of the disputed domain name.
As indicated in paragraph 1.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), the location of the trademark, its date of registration and the goods and/or services for which it is registered, are all irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP.
The threshold test for confusing similarity under paragraph 4(a)(i) of the Policy involves a comparison between the trademark and the disputed domain name to determine the likelihood of confusion by Internet users. The trademark at issue generally needs to be recognizable as such within the domain name, and the addition of common, dictionary, descriptive or negative terms are typically not regarded as sufficient to prevent threshold confusion by Internet users. (See paragraph 1.2 of the WIPO Overview 2.0).
In the case at hand, the Panel notes that the trademark MONDOMIX is entirely included in the disputed domain name, with the addition of the surname “Haas” and of the letter “s” between the words “mondo” and “mix” comprised in the trademark.
The Panel finds that the differences between the disputed domain name and the Complainant’s trademark MONDOMIX are insufficient to negate the confusing similarity, and that the selection of the term “Haas” added to the trademark in the disputed domain name is even apt to increase the likelihood of confusion with the Complainant and its domain name <haas-mondomix.com>.
With reference to the addition of the letter “s”, the Panel further notes that this is a typical case of a deliberate misspelling of a mark (so-called “typo-squatting”), and that numerous panels in the past have found similarity to be present. See, inter alia, Haas Food Equipment GmbH v. VistaPrint Technologies Ltd, WIPO Case No. DCO2015-0016; Yurtici Kargo Servisi A.S. v. Yurticicargo Yurticikargo, WIPO Case No. D2003-0707; CareerBuilder, LLC v. Azra Khan, WIPO Case No. D2003-0493; The Sportsman’s Guide, Inc. v. Vipercom, WIPO Case No. D2003-0145; Neuberger Berman Inc. v. Alfred Jacobsen, WIPO Case No. D2000-0323.
In view of the above, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
It is established in paragraph 4(a) of the Policy that the Complainant has the burden of proof. However, satisfying the burden of proving a lack of the Respondent’s rights or legitimate interests in respect of the disputed domain name according to paragraph 4(a)(ii) of the Policy is potentially quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one.
Accordingly, in line with previous UDRP decisions, it is well-established that it is sufficient that the Complainant make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production on the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (See Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393; Accor v. Eren Atesmen, WIPO Case No. D2009-0701).
In the case at hand, the Panel finds that the Complainant has made a prima facie case and that the Respondent, by not submitting a Response, has failed to prove any of the circumstances that could demonstrate, pursuant to paragraph 4(c) of the Policy, rights or legitimate interests in the disputed domain name.
According to the documents and statements submitted by the Complainant, there is no relation between the Respondent and the Complainant, the Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademark or to register the disputed domain name.
In addition, there is also no indication before the Panel that the Respondent might be commonly known by the disputed domain name or that the disputed domain name, which is passively held by the Respondent, might have been used in connection with a bona fide offering of goods or services.
In light of the substantial identity of the disputed domain name with the Complainant’s domain name <haas-mondomix.com> and in the absence of any explanations by the Respondent, the Panel finds that no legitimate use of the disputed domain name could be envisaged, and that the purpose of this registration was very likely to create the false impression that the disputed domain name and contents conveyed thereby be originated or approved by the Complainant.
The Panel therefore finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the disputed domain name according to paragraph 4(a)(ii) of the Policy.
In light of the prior registration and use of the trademark MONDOMIX by the Complainant and the Haas Group, and of the substantial identity of the disputed domain name with the Complainant’s domain name <haas-mondomix.com>, the Panel finds that, in all likelihood, the Respondent registered the disputed domain name with the Complainant and its trademark in mind.
The Panel notes that the disputed domain name is not used actively, i.e. is passively held. As stated in several prior decisions, the passive holding of a domain name does not prevent the finding of bad faith use. See, amongst others, the leading case Telstra Corporation Limited v. Nuclear Marshmellows, WIPO Case No. D2000-0003.
As highlighted in section 5A, frauds were perpetrated against the Complainant through the registration of other domain names confusingly similar to the Complainant’s trademarks (<haas-mond0mix.com> and <haaas.co>), which were used in connection with the sending of email communications purportedly addressed from the Complainant’s employees in order to redirect payments due to the Complainant to different bank accounts.
While the Complainant has not submitted evidence of similar frauds realized through the use of the disputed domain name and has not provided elements to demonstrate that the authors of the prior frauds might be actually connected to the Respondent, the circumstances of the case, in particular the virtual identity of the disputed domain name with the Complainant’s domain name <haas-mondomix.com> and the absence of a Response, indicate that the Respondent’s registration was not done for a genuine, legitimate, purpose. The Panel notes in passing, however, that the disputed domain name and the domain name <haas-mond0mix.com> which was used in the aforementioned fraud were both registered on the same day, supporting an inference of connection between the registrations.
However, on the basis of the arguments and evidence presented in this case, the Panel sees no reason to register the disputed domain name other than to create the misleading impression of an association with the Complainant that does not exist.
The Panel, therefore, finds that the Complainant has demonstrated that the disputed domain name was registered and is used in bad faith according to paragraph 4(a)(iii) 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 <haas-mondosmix.com> be transferred to the Complainant.
Luca Barbero
Sole Panelist
Date: October 10, 2015