WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Callery, LLC v. Jay Logs, Jaylogss

Case No. D2019-0693

1. The Parties

The Complainant is Callery, LLC, of Evans City, Pennsylvania, United States of America (the “United States”), represented by Taft, Stettinius & Hollister, LLP, United States.

The Respondent is Jay Logs, Jaylogss of Compton, California, United States.

2. The Domain Name and Registrar

The disputed domain name <calllery.com> (the “Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 27, 2019. On March 27, 2019, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the Domain Name. On March 28, 2019, the Registrar transmitted by e-mail to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

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, on April 3, 2019, the Center formally notified the Respondent of the Complaint, and the proceedings commenced. In accordance with the Rules, paragraph 5, the due date for Response was April 23, 2019. The Respondent did not submit any response. Accordingly, on April 24, 2019, the Center notified the Respondent’s default.

The Center appointed A. Justin Ourso III 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, Callery, LLC, an American company, manufactures specialty chemical products.

The Complainant owns a Canadian trademark registration for its trademark CALLERY in Class 1 for specialty chemical products, issued on May 23, 2002, under registration no. TMA562397, and owns similar registrations for its mark CALLERY issued in four countries in Asia during the period from 1996 through 2001. A predecessor of the Complainant registered the mark CALLERY in Class 1 for specialty chemical products in the United States in 1995, but another predecessor let this registration lapse.

The Respondent, Jay Logs, Jaylogss of Compton, California, United States, registered on January 28, 2019, the Domain Name, <calllery.com>, which does not resolve to a functioning web site.

5. Parties’ Contentions

A. Complainant

In addition to facts set forth in the Factual Background in section 4 above, the Complainant contends, generally:

1. The registration date for each of its trademark registrations predates the Respondent’s registration of the Domain Name.

2. It has established common law trademark rights in its mark CALLERY in the United States.

3. It owns “www.callery.com,” by which it apparently intends to allege ownership of the domain name <callery.com> and the web site at “www.callery.com,” presenting as evidence of this allegation Annex C, a WhoIs record for the domain name <callery.com>, and Annex N, a screen shot from the home page of the web site at “www.callery.com,” which it claims its predecessors and it have operated since May 1996.

4. It is the owner or operator of various social media accounts, including a LinkedIn account for “Callery, LLC.”

5. The Respondent has used the Domain Name <calllery.com> to conduct a fraudulent e-mail scheme, posing as employees of the Complainant to obtain payments from the Complainant’s customers.

6. The Respondent sent e-mails to the Complainant’s customers using e-mail addresses with the Domain Name <calllery.com> that were nearly identical to the (authentic) e-mail addresses of the Complainant’s employees with the domain name <callery.com> and the Complainant’s customer did not notice the additional letter “L” in the Domain Name.

7. As a result of this scheme, its customer made payments to bank accounts that were not owned or for the benefit of the Complainant.

8. The web site associated with the Domain Name is “blank.”

9. The Respondent acquired the Domain Name for the sole purpose of operating this fraudulent scheme.

10. It believes that the contact information that the Respondent provided to the Registrar is false, because a Google search showed that the address was not a valid address in the city stated in the contact information.

Regarding the first element of a claim set forth in the Policy, paragraph 4(a)(i), the Complainant contends:

1. Through its predecessor BASF, it acquired its CALLERY marks, which BASF had acquired from the Mine Safety Appliances Company.

2. Included in the acquisition were a United States registration issued on September 12, 1995, and registrations issued by Japan in 1996; China, the Republic of Korea, and Taiwan Province of China in 2001; and Canada in 2002.

3. It and its predecessors have operated a web site at “www.callery.com” since May 1996.

4. The Domain Name incorporates its trademark CALLERY, with addition of a third letter “L”, which is virtually identical to and is confusingly similar to its CALLERY trademark.

5. A domain name is identical or confusingly similar to a trademark for the purposes of the Policy when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name.

6. Ordinarily, the difference of a single letter does not obviate confusion; certain single-letter variations, known as typosquatting, are virtually per se cybersquatting; and the addition of a third letter “L” does not distinguish the Domain Name from being confusingly similar to its CALLERY mark.

7. Generic Top-Level Domains (“gTLDs”), such as “.com,” have no source distinguishing value and can be disregarded when comparing a domain name with a trademark.

Regarding the second element set forth in the Policy, paragraph 4(a)(ii), the Complainant contends:

1. It has not authorized the Respondent to use its CALLERY mark.

2. The Respondent has no legitimate rights in the CALLERY mark, equivalents of the mark, or the Domain Name.

3. The Respondent is using a typosquatting alternative of the Complainant’s trademark CALLERY in a fraudulent, misleading, and improper e-mail scam to obtain payments from the Complainant’s customers.

4. If the Complainant makes a prima facie case that the Respondent has no rights or legitimate interests, the evidentiary burden shifts to the Respondent “to show, by plausible, concrete evidence” that the Respondent has a right or legitimate interest in the Domain Name.

5. It is inconceivable that the Respondent could make any active use of the Domain Name without creating a false impression of association with the Complainant.

6. Using a domain name in a fraudulent e-mail scheme that uses a complainant’s employees’ names is deceptive, confusing, not a bona fide offering of goods and services, and is not a legitimate noncommercial or fair use.

7. The Respondent is using the Complainant’s CALLERY trademark in the Domain Name in association with a fraudulent e-mail scheme directly targeting the Complainant’s customers.

8. Even if the Panel were to determine that the Complainant has failed to establish a prima facie case that the Respondent has no rights or legitimate interests in the Domain Name, the Respondent cannot show a rights or legitimate interests, or that it is commonly known by the Domain Name.

9. The Respondent is not, and prior to this dispute was not, using the Domain Name in connection with a bona fide offering of goods or services.

10. The Respondent does not identify itself on the Respondent’s web site and the web site “contains no content.”

11. The Respondent is using the Domain Name to divert consumers to the Respondent’s web site.

12. The Respondent’s fraudulent e-mail scheme is misleading “consumers” as if the Respondent were the Complainant.

13. This is not a bona fide offering of goods and services; instead, the Respondent has registered and maintained the Domain Name in an illegitimate manner with intent to contact the Complainant’s customers as if the Respondent were the Complainant or the Complainant’s employees.

14. To come within the “commonly known by” safe harbor provision, a respondent must have been commonly known by the domain name at the time that the respondent registered the domain name.

15. The Respondent cannot meet this standard.

16. If the Respondent were commonly known by “www.calllery.com,” it would not have provided false registration information or fraudulently posed as the Complainant’s employees.

17. The respondent has registered the Domain Name in bad faith and, therefore, cannot be “commonly known by” such a Domain Name.

18. The Respondent cannot show that it has made legitimate noncommercial or fair use of the Domain Name.

19. The Respondent’s use of the Domain Name is fraudulent with the intent to obtain commercial gain from sending fake invoices to the Complainant’s customers.

Regarding the third element set forth in the Policy, paragraph 4(a)(iii), the Complainant contends:

1. The Respondent directly targeted the Complainant’s CALLERY trademark and the Respondent’s e-mail scam misleads “consumers” to believe that the Respondent is the Complainant, which establishes bad faith registration of the Domain Name.

2. Typosquatting is per se bad faith registration and use under the Policy.

3. Impersonating a complainant by using a complainant’s mark and the names of its employees in a fraudulent e-mail scam is disruptive, evinces bad faith registration and use, and is confusing because recipients of e-mails may reasonably believe that the e-mails are connected to or approved by a complainant.

4. Mimicking in this manner shows that a respondent was aware of a complainant and its business and rights and intentionally attempted to attract for commercial gain (a complainant’s customers) by creating confusion with a complainant’s trademark.

5. The Respondent has used a typosquatting version of the Complainant’s CALLERY trademark in a fraudulent e-mail scam directed at the Complainant’s customers by impersonating two of the Complainant’s employees.

6. This scam shows that the Respondent was aware of the Complainant and its business and rights and intentionally attempted to attract for commercial gain the Complainant’s customers, which is bad faith registration and use in violation of the Policy.

7. Constructive knowledge of a complainant’s long-standing trademark prior to registration of a disputed domain name can support a finding of bad faith, especially when a complainant and respondent are both in the United States.

8. Not only did the Respondent have constructive knowledge of the Complainant’s CALLERY mark, because both parties are in the United States, but also the Respondent had actual knowledge of the Complainant’s CALLERY mark, because the Respondent directly targeted the Complainant’s customers using the names of two of the Complainant’s employees.

9. The Respondent is using the Domain Name for commercial gain, because the e-mail scam has already unlawfully collected nearly USD 400,000 from the Complainant’s customers, establishing a bad faith registration.

The Complainant has requested transfer of the Domain Name.

B. Respondent

The Respondent did not submit a response to the Complaint.

6. Discussion and Findings

A. The Effect of the Respondent’s Default

The Respondent has not responded to the Complaint. If a respondent does not submit a response, the panel decides the dispute based upon the complaint. Rules, paragraphs 5(f) and 14(a). The panel decides a complaint on the basis of the statements and documents submitted. Rules, paragraph 15(a).

Because the Complainant has the burden of proof under paragraph 4(a) of the Policy, the Respondent’s default, i.e., the Respondent’s failure to submit a response to the Complaint, does not mean that the Complainant necessarily prevails. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.3. Accordingly, notwithstanding the Respondent’s default, the Complainant must prove the following three elements to obtain the requested relief: (i) the Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith. Policy, paragraph 4(a).

However, in the absence of exceptional circumstances, the Respondent’s failure to respond to the Complaint requires that the Panel draw the inferences from this failure that it considers appropriate. Rules, paragraph 14(b). The Panel finds that no exceptional circumstances exist for the failure of the Respondent to submit a response. Accordingly, the Panel infers that the Respondent does not deny the facts alleged and the contentions urged by the Complainant based upon these facts, and will draw all reasonable inferences that are appropriate from the evidence and the facts found by the Panel. Id.; Facebook Inc. v. te5gfh gtfghbfh , WIPO Case No. D2018-2433; WestJet Airlines Ltd. v. WhoIsGuard Protected, WhoIsGuard, Inc. / Vladimir Axdalinescu, WIPO Case No. D2018-2424; RX America, L.L.C. v. Tony Rodolakis, WIPO Case No. D2005-1190.

Although the Panel may draw negative inferences from the Respondent’s default, the Complainant may not rely on conclusory allegations and must support its allegations with evidence to prove the three elements and prevail. WIPO Overview 3.0, section 4.3; PVH CORP. v. Super Privacy Service LTD c/o Dynadot, WIPO Case No. D2018-1013.

B. Elements of a Claim

The Complainant must prove the following three elements to obtain the requested relief: (i) the Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith. Policy, paragraph 4(a).

(i) Domain Name Identical or Confusingly Similar to the Complainant’s Trademark

To prove the first element, the Complainant must prove that (1) it has rights in a trademark and (2) the Domain Names are identical or confusingly similar to this trademark. Policy, paragraph 4(a)(i); PVH CORP. v. Super Privacy Service LTD c/o Dynadot, WIPO Case No. D2018-1013.

The Complainant alleges that it owned, through its predecessors, a registration in the United States for its trademark CALLERY, but that it inadvertently failed to file a Section 9 declaration and the registration was cancelled. Collectively, the United States Patent and Trademark Office (“USPTO”) records and the Canadian Intellectual Property Office assignment records show that the USPTO cancelled the U.S. registration on June 24, 2006, for failure to file a Section 8 declaration and the Complainant’s immediate predecessor did not assign a Canadian registration for the mark CALLERY to the Complainant until February 28, 2017, leading the Panel to find that a predecessor, not the Complainant, failed to file a Section 8 declaration.¹

The Complainant alleges that it has common law rights in the United States. The Complainant does not specifically allege when its use began or that its use has been continuous since its use began, including subsequent to the cancellation of its United States registration. The USPTO records show that the Complainant’s original predecessor claimed a first use and a first use in commerce on April 12, 1948. Instead, the Complainant alleges that it and its predecessors have owned “www.callery.com” since at least as early as May 1996, offering in support Annex C, a WhoIs record for its domain name <callery.com>, and Annex N, a screen shot of the home page of the web site at “www.callery.com.” Annex C does not support this allegation, because the WhoIs record shows that the registrant owns the domain name through a privacy service and does not identify the underlying registrant.

Annex N, the web site home page, shows the term “Callery” being used as a mark, but does not identify the Complainant, Callery, LLC, as the owner of the web site at “www.callery.com.”

Nevertheless, the Panel finds that the Complainant’s trademark registrations in Canada, China, Japan, the Republic of Korea, and Taiwan Province of China establish the Complainant’s rights in its CALLERY trademark. WIPO Overview 3.0, section 1.2.1.

The inclusion of the gTLD “.com” is disregarded in determining confusing similarity. WIPO Overview 3.0, section 1.11.

A domain name that consists of a common or obvious misspelling of a trademark, such as the transposition of two letters in a domain name, is considered by the jurisprudence under the Policy to be confusingly similar to the relevant mark for purposes of the first element. WIPO Overview 3.0, section 1.9; PVH CORP. v. Super Privacy Service LTD c/o Dynadot, WIPO Case No. D2018-1013.

Here, however, instead of the misspelling being obvious, because of the appearance of the letter “L” in lower case, the misspelling is not obvious at first glance.

In the view of this Panel, the misspelling of a mark in a domain name, which may be relevant to confusing similarity, should be addressed not only under the first element, but also under the second and third elements, particularly on the issue of intent. WIPO Overview 3.0, section 1.7.; cf. Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662 (under the first element, the issue is “whether the mark and domain name, when directly compared, have confusing similarity”).

A panel typically determines identity or confusing similarity with a side-by-side comparison of the domain name and the textual elements in the trademark, including an aural and phonetic comparison. WIPO Overview 3.0, section 1.7. Using this method, to the casual reader the Domain Name is identical to the trademark CALLERY, and, to any reader, the Domain Name is confusingly similar to the trademark, whether the Domain Name is used in a URL, an e-mail address, or in any other manner. The Panel, therefore, finds that the Domain Name, which is identical to the Complainant’s trademark CALLERY, except for the addition of a third letter “L,” is confusingly similar to the trademark.

Accordingly, the Panel concludes that the Complainant has proven the first element, namely, that the Domain Name is confusingly similar to a trademark in which it has rights.

(ii) Rights or Legitimate Interests in the Domain Name

The Policy provides a non-exclusive list of circumstances that, if a panel finds proved, demonstrates that a respondent has rights to, or legitimate interests in, a domain name for the purposes of paragraph 4(a)(ii) of the Policy:

(i) before any notice to the respondent of the dispute, its use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. Policy, paragraph 4(c).

The Complainant has alleged that the Respondent is using the Domain Name to divert consumers to the Respondent’s web site. However, the Complainant has also alleged that the Respondent’s web site “is blank” and “contains no content.” The Panel has visited the site several times in the course of considering and preparing this Decision. In fact, no web site is even functioning at “www.calllery.com,” so the Panel finds that the Respondent is not using the Domain Name to divert consumers to this site.

The Complainant has alleged that the contact information that the Respondent provided to the Registrar is false, allegedly because a Google search showed that the address was not a valid address in the city stated in the contact information. Improperly masking a registrant’s identity to avoid communication has been found relevant to a claim that illegal activity belies rights or legitimate interests in a domain name. WIPO Overview 3.0, section 2.13.2. However, the Complainant has failed to offer any evidence of this alleged search. The Complainant has certified that the information in the Complaint is complete and accurate. The Panel will accept that this allegation is accurate, but, because the information is not complete, the Panel will give it very slight weight. Rules, paragraph 10(d); WIPO Overview 3.0, section 4.7.

Further, the Complainant has argued that, if the Respondent were commonly known by “www.calllery.com,” it would not have provided false registration information or fraudulently posed as the Complainant’s representative. This proposition does not necessarily follow as a matter of logic. A domain name registrant who is commonly known by a name similar to a domain name might well register with false contact information if it intended to use the domain name for a web site with a nefarious purpose. This argument, however, is immaterial, because the Respondent has not claimed that it is commonly known by the Domain Name.

The Panel finds, on the basis of the Complainant’s trademark registrations, that the Complainant’s trademark rights precede the registration of the Domain Name. The Complainant has alleged that it has not authorized the Respondent to use its CALLERY trademark. Because the Respondent has not contested these allegations, and the Complainant has certified that the information in the Complaint is complete and accurate, the Panel accepts these allegations as proven for the purposes of the Policy. Rules, paragraph 14(b) and 10(d); WIPO Overview 3.0, section 4.3.

Moreover, the Respondent has not claimed that it is using the Domain Name in connection with a bona fide offering of goods or services or that it is making a noncommercial or fair use of the Domain Name. For the reasons set forth in this paragraph and the preceding paragraph, the Panel finds that the Complainant has shown, prima facie, the second element––that the Respondent lacks rights or legitimate interests in the Domain Name.

Where a complainant shows prima facie that a respondent lacks rights or legitimate interests, the burden of production on this second element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. WIPO Overview 3.0, section 2.1.

The Respondent here has not submitted any evidence to rebut the prima facie showing, having failed to respond to the Complaint.

If a respondent fails to come forward with relevant evidence to rebut the prima facie showing, a complainant is deemed to have proven that the respondent has no rights or legitimate interests in the domain name, satisfying the second element. Id.; LEGO Juris A/S v. Aamir Abdul Wahid, Spiro Line Media, WIPO Case No. D2019-0245; Sperre Mek. Verksted AS v. Perfect Privacy, LLC / The Allied Valve Spares Mfg. Co., WIPO Case No. D2018-2904; WestJet Airlines Ltd. v. WhoIsGuard Protected, WhoIsGuard, Inc. / Vladimir Axdalinescu, WIPO Case No. D2018-2424.

Accordingly, the Complainant has proven the second element, namely, that the Respondent lacks rights or legitimate interests in the Domain Name.

The Complainant has also alleged, in support of its contention that the Respondent lacks rights or legitimate interests in the Domain Name, typosquatting and that the Respondent registered and is using the Domain Name to facilitate impersonating its employees in a fraudulent e-mail scheme to mislead its customers to make payments to the Respondent. Because the Panel has already found that the Complainant has proven the second element, the Panel will defer a discussion of this alleged scheme to section 6(B)(iii) below. Cf. WIPO Overview 3.0, section 2.15.

(iii) Registered and Used in Bad Faith

The Policy provides that the following circumstance is “evidence of the registration and use of a domain name in bad faith: [...] (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor.” Policy, paragraph 4(b)(iii).

Because the scenarios enumerated in paragraph 4(b) of the Policy are illustrative and not exclusive, panels have applied the concept of a “competitor” beyond an ordinary business competitor, to include “a person who acts in opposition to another” for some means of commercial gain. WIPO Overview 3.0, section 3.1.3.

The Complainant has alleged that (1) the Respondent intentionally registered and is using the Domain Name to facilitate impersonating its employees in a fraudulent e-mail scheme that misleads its customers into making payments to the Respondent; (2) the Respondent’s typosquatting is central to this alleged scheme; (3) because a customer did not notice the additional letter “L” in the domain name portion of e-mail addresses from the Respondent impersonating the Complainant’s employees, the scheme has unlawfully collected nearly USD 400,000 from the Complainant’s customers; and (4) this demonstrates bad faith registration and use under the Policy.

The evidence that the Complainant has offered in support of these allegations is two e-mails, Annex E and Annex F, which show that they are from individuals whose names are the same as what the Complainant has identified as two of its employees, but with e-mail addresses using the Domain Name, to an individual whom the Complainant has identified as an employee of one of its customers. In the earlier e-mail, a first alleged impersonated Complainant employee responds to an e-mail from the alleged customer employee with “new” bank payment information. In the second e-mail, a second alleged impersonated Complainant employee confirms to the alleged customer employee that this bank remittance information is accurate.

Annex E and Annex F are incomplete as evidence of the alleged fraudulent e-mail scheme for several reasons. One, although the Complainant has alleged that the “Respondent’s use of the Domain Name is clearly fraudulent with intent to commercially gain from sending fake invoices to Complainant’s customers,” citing Annex E and Annex F, the two e-mails that allegedly impersonate the Complainant’s employees do not purport to send invoices, but merely to respond to inquiries regarding the payment of invoices. Two, Annex F appears to be incomplete, i.e., it does not appear to contain all of the initial e-mail (and any prior e-mails) in the exchange. Three, and most importantly, the Complainant has failed to offer any e-mail that would have initiated the first exchange. In other words, the Complainant has not offered an explanation of how the exchange began.

It is not conceivable that the Respondent intentionally acquired the Domain Name for a fraudulent e-mail scheme and then simply waited for a customer to send an e-mail to a Complainant employee with a typo in the domain name that also happened to involve a payment. It seems logical that the Respondent would have initiated a communication from an e-mail address using the Domain Name, so that a customer would respond to the impersonating e-mail. The Complainant even alleged “sending fake invoices to Complainant’s customers,” but has failed to offer an e-mail in which the Respondent has sent a fake invoice, with a fake invoice attached (perhaps comparing it to a legitimate invoice), or to offer a declaration attesting to and attaching a fake invoice and a legitimate invoice (redacted, if necessary, to protect proprietary information).

The Panel cannot determine whether the Complainant is attempting to show that the Respondent has used the scheme to send fake invoices that were paid to the Respondent or that the Respondent has used the scheme to divert payment to the Respondent of genuine invoices sent to customers by the Complainant.

This is somewhat troubling, because “[p]anels are generally not prepared however to accept merely conclusory or wholly unsupported allegations of illegal activity . . . even when the respondent is in default.” WIPO Overview, section 2.13.2. In the view of this Panel, the better practice, when alleging fraud, is to allege the fraud with particularity and completely, providing the available evidence. Cf. Beam Suntory Inc. v. Name Redacted, WIPO Case No. D2018-2861 (discussing need for evidence to support allegation of impersonation to perpetrate fraud through e-mails; issuing procedural order to provide additional evidence) ²; see, generally, WIPO Overview 3.0, sections 2.13.2 and 3.1.

The Panel acknowledges, however, that the Complainant’s allegations here are not completely unsupported.

On the remaining issue, typosquatting, the WIPO Overview 3.0 states the following consensus view:

A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element.

This stems from the fact that the domain name contains sufficiently recognizable aspects of the relevant mark. Under the second and third elements, panels will normally find that employing a misspelling in this way signals an intention on the part of the respondent (typically corroborated by infringing website content) to confuse users seeking or expecting the complainant.

WIPO Overview 3.0, section 1.9.

Here, instead of the misspelling being obvious, because the appearance of three consecutive characters of the letter “L” in lower case is difficult to distinguish from two consecutive characters of the letter “L” in lower case, the misspelling is not only not obvious, but more likely than not will be missed, even by a careful observer.

Although words with two consecutive “L” letters are fairly common in the English language, the Panel is unaware of any English words or names with three consecutive “L” letters. The Panel finds that these facts show that the Respondent was aware of the Complainant’s trademark CALLERY when it registered the Domain Name and that the Respondent chose the Domain Name deliberately. WIPO Overview 3.0, section 3.2.2.

Previous panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous trademark can create a presumption of bad faith registration. WIPO Overview 3.0, section 3.1.4; LEGO Juris A/S v. Aamir Abdul Wahid, Spiro Line Media, supra; Facebook Inc. v. te5gfh gtfghbfh, supra. Although the Complainant has not claimed that its trademark is famous, here more than a mere registration leading to a presumption is present––demonstrable evidence of bad faith in the form of impersonating e-mails exists. WIPO Overview 3.0, section 3.1.4. Additionally, the use of a domain name for per se illegitimate activity such as sending impersonating e-mails is manifestly considered bad faith. WIPO Overview 3.0, section 3.1.4.

Clear typosquatting is sufficient to support an inference of bad faith, shifting the burden to the Respondent to offer evidence rebutting the inference. PVH CORP. v. Super Privacy Service LTD c/o Dynadot, WIPO Case No. D2018-1013 (transposition of the letters “e” and “u” typosquatting supporting inference of bad faith and shifting the burden to respondent); Dr. Ing. H.c. F. Porsche AG v. Laksh Internet Solutions Private Limited / Privacy Protection, WIPO Case No. D2008-0691 (in considering <prosche.com>, reversal of the letters “o” and “r” represents the same).

The selection of the Domain Name, therefore, demands an explanation. The Respondent has not explained its selection of a highly unusual domain name that happens to be virtually identical to the Complainant’s trademark. This lack of an explanation coupled with an absence of rights or legitimate interests has been found by panels to be a factor tending to show bad faith. WIPO Overview 3.0, section 3.2.1. Additionally, the implausibility of any good faith use to which the Domain Name might be put supports a finding of bad faith registration and use. WIPO Overview 3.0, section 3.3. Because the Respondent has not offered an explanation for the misspelling of the Complainant’s trademark, and the Panel cannot conceive of one, the Panel finds that the typosquatting alone demonstrates bad faith use and that this bad faith existed at the time of the registration of the Domain Name. PVH CORP. v. Super Privacy Service LTD c/o Dynadot, WIPO Case No. D2018-1013.

This finding, together with the evidence that the Respondent sent e-mails impersonating the Complainant to customers of the Complainant, and that the Respondent used impersonating e-mails to mislead at least one customer of the Complainant to make one or more payments to the Respondent on one or more invoices – whether genuine or fake – compels the Panel to find that the Respondent intentionally chose the Domain Name to impersonate the Complainant, take unfair advantage of the Complainant’s CALLERY trademark, and disrupt the business of the Complainant. WIPO Overview 3.0, sections 2.13.1, 3.1, and 3.4.

In short, notwithstanding the lack of particularity and completeness of the e-mail evidence, the evidence demonstrates, and the Panel finds, that the Respondent deliberately registered the typosquatting Domain Name in bad faith to impersonate, and used it in bad faith to impersonate the Complainant’s employees, mislead its customers, and disrupt its business in violation of the Policy, paragraph 4(b)(iii). Beiersdorf AG v. PrivacyGuardian.org / Edward Peter Inc., WIPO Case No. D2019-0149; Beam Suntory Inc. v. Name Redacted, WIPO Case No. D2018-2861; Kraft Heinz Foods Company v. Thomas Bedford, Thomas Bedford Ltd, WIPO Case No. D2018-1922; Southwire Company, LLC v. Privacy Protect, LLC/ Jiang Gang, guanjiangfeng LLC, WIPO Case No. D2017-1545; see Rathbone Brothers Plc v. Privacy Department, IceNetworks Ltd., WIPO Case No. D2018-0371.

Additionally, it is common knowledge that owners of web sites customarily use e-mail addresses containing the domain name of a web site in electronic mail communications. The use of a confusingly similar domain name in e-mails that do not originate with a complainant presents a risk to the reputation of a complainant’s trademark and a complainant. See, e.g., Caliber Home Loans, Inc. v. Domains By Proxy, LLC / Patrick Scott, WIPO Case No. D2018-0524; The Coca-Cola Company v. Marcus Steiner, WIPO Case No. D2012-1804. Even if the Complainant had not provided any evidence that the Respondent engaged in this practice, the Respondent has not rebutted that it engages in this practice. Moreover, the risk of other deceptive or abusive e-mails, whether related to payments or not, is substantial given the finding that the Respondent has already engaged in the deceptive conduct of typosquatting. PVH CORP. v. Super Privacy Service LTD c/o Dynadot, WIPO Case No. D2018-1013. Accordingly, the Panel finds that the substantial risk of future deceptive e-mails associated with the domain name is another reasonable basis, in the circumstances of the typosquatting already found, from which to infer bad faith use and that this bad faith existed at the time of the registration of the Domain Name.

Accordingly, the Complainant has proven the third element, namely, that the Respondent registered and has used the Domain Name in bad faith.

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 Domain Name, <calllery.com>, be transferred to the Complainant.

A. Justin Ourso III
Sole Panelist
Date: June 12, 2019

¹ The United States Patent and Trademark Office records show that on March 29, 2019, two days after filing its Complaint to initiate this proceeding, the Complainant filed an application to register its CALLERY trademark. The application did not disclose that the Complainant had owned, through its predecessors, a registration that was cancelled because of the failure of a predecessor to file a Section 8 declaration.