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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

BAE Systems PLC v. WhoisGuard Protected, WhoisGuard, Inc. / Larry Desmond, XYZ Inc.

Case No. D2019-0617

1. The Parties

The Complainant is BAE Systems PLC, United Kingdom, represented by CMS Cameron McKenna Nabarro Olswang LLP, United Kingdom.

The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Larry Desmond, XYZ Inc., United States of America.

2. The Domain Name and Registrar

The disputed domain name <baesystems-us.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 20, 2019. On March 21, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 21, 2019, 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 March 25, 2019 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 amended Complaint on March 29, 2019.

The Center verified that the Complaint together with the amended 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 3, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 23, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 30, 2019.

The Center appointed Tobias Zuberbühler as the sole panelist in this matter on May 8, 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.

4. Factual Background

The Complainant is a well-known and globally active defence, aerospace and security company founded 19 years ago in the United Kingdom.

The Complainant is the owner of a number of United Kingdom (“UK”), European Union (“EU”) and United States (“US”) trademarks for BAE and BAE SYSTEMS (e.g., UK registration No. 1540221 of June 30, 1996; EU registration No. 1358985 of October 14, 1999; and US registration No. 1358985 of October 20, 1999).

The disputed domain name was registered on February 21, 2019. Prior to the Complaint the disputed domain name resolved to a pay-per-click page as evidenced at annex 11 of the Complaint. Currently, the disputed domain name resolves to an inactive website. According to evidence submitted by the Complainant, it appears that the Respondent is using the email handle “@baesystems-us.com” for potentially fraudulent activities. In the corresponding emails, the Respondent has purported to be the Complainant’s “IT Purchasing Manager” and contacted the Complainant’s IT suppliers, in some instances requesting shipment of large quantities of IT equipment.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that it has satisfied all elements of the Policy, paragraph 4.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has shown that it has rights in the BAE SYSTEMS trademark, which is reproduced in its entirety in the disputed domain name.

The disputed domain name differs from the Complainant’s BAE SYSTEMS trademark only by a hyphen and the geographical term “us” (designating the United States). It is the consensus view of UDRP panels that the addition of such descriptive terms does not prevent a finding of confusing similarity under the first element of the Policy (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections 1.7 and 1.8). Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark.

Therefore, the Complainant has fulfilled the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

There are no indications before the Panel of any rights or legitimate interests of the Respondent in respect of the disputed domain name. The Complainant contends that the Respondent is neither affiliated with the Complainant nor making any bona fide use of the disputed domain name.

Based on the Complainant’s credible contentions, the Panel finds that the Complainant, having made out a prima facie case which remains unrebutted by the Respondent, has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Under the circumstances of this case, it can be inferred that the Respondent was aware of the Complainant’s trademark when registering the disputed domain name.

As described in Factual Background above, the disputed domain name currently resolves to an inactive website, while emails with the handle “@baesystems-us.com” appear to be used for fraudulent activities. By creating a likelihood of confusion with the Complainant’s mark for commercial gain and attempting to disrupt the Complainant’s business, the Respondent has registered and used the disputed domain name in bad faith.

Accordingly, the Complainant has also fulfilled paragraph 4(a)(iii) of the Policy.

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 <baesystems-us.com> be transferred to the Complainant.

Tobias Zuberbühler
Sole Panelist
Date: May 21, 2019

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