The Complainant is NCI Group, Inc. of Houston, Texas, United States of America (“United States”), represented by Bracewell L.L.P., United States.
The Respondent is Abel Saldivarmaldonado NA of Las Vegas, Nevada, United States.
The disputed domain name <ncigrp.com> is registered with Wild West Domains, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 7, 2019. On January 7, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 8, 2019, 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 and contact information for the disputed domain name.
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 January 9, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 29, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 30, 2019.
The Center appointed Evan D. Brown as the sole panelist in this matter on February 6, 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 has been doing business as NCI Building Systems for 25 years, and owns several registered trademarks, including United States. Reg. No. 2028845, issued on January 7, 1997 for the mark NCI (and Design), for services in class 42 relating to wholesale distributorships featuring metal building products.
The Respondent registered the disputed domain name on or about November 14, 2018. The Complainant asserts that the Respondent has used the disputed domain name to pursue a criminal enterprise. Specifically, the Complainant claims that the Respondent used the disputed domain name to hold himself out to be an employee of the Complainant to submit fraudulent orders for products and to steal goods from vendors in the name of the Complainant. The Respondent is accused of setting up an email address using the disputed domain name, in the form “[…]@ncigrp.com”, to communicate in furtherance of his scheme. At least some of these false emails used a fake signature block that impersonated the procurement manager of the Complainant. This caused certain vendors to actually be confused into thinking that the Complainant was the party sending the emails using the disputed domain name.
The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s trademarks; that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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.
The Panel finds that all three of these elements have been met in this case.
The Complainant has rights in the mark NCI. The mark – and similar variations – is subject to registrations that predate registration of the disputed domain name, and has been in use for many years. The disputed domain name contains the Complainant’s mark in its entirety and is in this manner identical or confusingly similar to the NCI mark. The generic Top-Level Domain (“gTLD”) “.com” may be disregarded for the purpose of comparing the disputed domain name with the Complainant’s mark under paragraph 4(a)(i) of the Policy. Accordingly, the Panel finds in favor of the Complainant on this first element of the Policy.
The Complainant has successfully established a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain name. The use of the disputed domain name to fraudulently – and perhaps criminally – impersonate the Complainant is a clear example of a respondent lacking rights or legitimate interests. See, e.g., Advance Magazine Publishers Inc. v. Registration Private, Domains By Proxy LLC / Phillip Watson, WIPO Case No. D2016-1582.
The Policy requires a complainant to establish the disputed domain name was registered and is being used in bad faith. The facts of this case demonstrate that the Respondent registered the disputed domain name for commercial gain, and to trade on the Complainant’s goodwill and reputation. By impersonating an employee of the Complainant, the Respondent’s actions likely constituted fraud, unfair and deceptive trade practices, and may have violated criminal law. For these reasons, the Panel finds that the disputed domain name was registered and is being use 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 <ncigrp.com> be transferred to the Complainant.
Evan D. Brown
Sole Panelist
Date: February 19, 2019