Complainant is Blue Prism Limited, United Kingdom (“UK”), represented by Fieldfisher LLP, UK.
Respondent is Young Leeg, UK.
The disputed domain name <bluesprism.com> 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 July 26, 2019. On July 26, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 29, 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 Complainant on August 8, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on August 12, 2019 (the “Amended Complaint”).
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 Respondent of the Complaint, and the proceedings commenced on August 15, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 4, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 6, 2019.
The Center appointed David Perkins as the sole panelist in this matter on September 10, 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.
Complainant provides software services. Its Robotic Process Automation (RPA) is a software that can be programmed to execute business tasks via a software robot, or Digital Worker, that can execute and initiate systems-based tasks like a human. A Digital Worker is an autonomous software robot. Complainant’s website explains that connected-RPA is the unification of an intelligent RPA platform, advanced technologies, and a community that it claims empowers ‘...people to create remarkable automations and accomplish great things.’ The website further explains: “[a]s the pioneer of Robotic Process Automation, […] we bring you the connected-RPA Platform so you can give your operational leaders the ability to automate and perform repetitive tasks, freeing them up focus on more creative, meaningful work.”
Complainant was founded in 2001 and has traded under the BLUE PRISM name and trade mark since then. It has operations in the UK, the United States of America (the “United States”), the EMEA region and the APAC Region.
Appended to the Amended Complaint are particulars of the following registered trade marks.
|
Country of Trade Mark |
Registration No. |
Mark |
Classes of goods/ services |
Date of registration |
|
European Union |
009460081 |
BLUE PRISM |
9, 41, 42 |
Application: October 20, 2010 Registered: April 1, 2011 |
|
UK |
3,144,686 |
BLUE PRISM |
9, 35, 41, 42 |
Application: January 15, 2016 Registered: May 27, 2016 |
|
United States |
4,244,242 |
BLUE PRISM |
9, 41, 42 |
Application: February 1, 2011. Registered: November 20, 2012 |
The Amended Complaint states that the <blueprism.com> domain name was “acquired by Complainant and subsequently used since around the mid to late 2000s.”
Given the absence of a Response, what is known of Respondent is contained in the Amended Complaint and its exhibits.
The disputed domain name was created on June 19, 2019.
The Amended Complaint sets out the information provided by the Registrar of the contact details for the registrant of the disputed domain name, namely:
“Young Leeg
[email]
N/A
coventry town warckshire
conventry town
Coventry
United Kingdom WC2N 5DU
+44.78977287279”
Complainant claims that these details are incorrect. For example, Complainant points out that Coventry is a city, not a town. Coventry is in the county of Warwickshire, which is misspelt in the contact information provided by the Registrar, above. “Conventry” is a misspelling of “coventry”. The postcode is that for Trafalgar Square in London and the telephone number is false as it has too many digits for a UK mobile telephone number.
Complainant explains that on July 23, 2019 its representative informed the Registrar of the above inaccuracies in the contact details and that, from the Registrar’s reply on July 24 2019, it appears that the disputed domain name has been suspended. The Registrar informed the Complaint that the registrant of disputed domain name is an EU resident but that, under its GDPR privacy policy, it could not provide additional details without a court order or subpoena.
Complainant states that the disputed domain name does not appear to resolve to an active website. However, appended to the Amended Complaint are emails dated July 19 and 20, 2019, sent by “[…]@bluesprism.com”, purporting to emanate from certain employees of Complainant to fraudulently divert payments to a Bank in Austria.
Complainant asserts rights in the BLUE PRISM trade mark, the details of which are summarised above.
Complainant points to the fact that, but for the letter ‘s’ between ‘blue’ and ‘prism’, the disputed domain name is identical to its BLUE PRISM trade mark. Consequently, Complainant says, the disputed domain name is confusingly similar to that trade mark.
To illustrate Complainant’s claim that Respondent has no rights to or legitimate interests in the disputed domain name, the Complainant appends to the Amended Complaint Google search results for the words “bluesprism” and “blues prism”. In both instances, the search engine optimisation function reads “Did you mean: blue prism”, which, of course, refers to Complainant’s trade mark.
As a further indication that Respondent has no rights to or legitimate interests in the disputed domain name, Complainant appends the results of a Saegis trade mark search for “bluesprism”. That search covered trade mark applications and registrations in 192 territories worldwide. As at July 19, 2019 - the date of the search - no applications or registrations for “bluesprism” were identified.
Complainant also points to Respondent’s use of the disputed domain name in a fraudulent email scheme, which use Complainant describes as an attempt to divert to Respondent legitimate payments owed to Complainant by third parties. The Amended Complaint reads: “[i]n other words, Respondent sought and attempted to carry out a payment diversion fraud whereby third parties were instructed by the imposter Blue Prism employee to send payments to a different (and bogus) bank account [...]”
Complainant says that its BLUE PRISM trade mark is a unique syntactical juxtaposition which is not used in ordinary English language. It is, Complainant says, distinctive and is associated solely with itself. Consequently, Complainant says that Respondent’s registration and use of the disputed domain name is in bad faith.
Further, in the light of the use made by Respondent of the disputed domain name, Complainant claims that it has been registered and used in bad faith. Such use, Complainant says, amounts to criminal conduct.
Additionally, the false and/or deliberately fabricated details provided by Respondent to the Registrar are, Complainant says, a further indication of Respondent’s bad faith.
As noted above, no Response was submitted by Respondent.
The Policy paragraph 4(a) provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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 Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the respondent’s rights or legitimate interests in the disputed domain name in issue.
The Policy paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.
As stated, the circumstances set out in paragraph 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant the requirements of paragraphs 4(a)(ii) and (iii) of the Policy.
From the particulars of the registered trade marks, clearly Complainant has rights in the BLUE PRISM trade mark.
Equally clearly, since the disputed domain name incorporates that trade mark in its entirety with the addition of the letter “s” after “blue”, this is a classic case of typosquatting and, as such, the disputed domain name is confusingly similar to the BLUE PRISM trade mark. It is precisely within the type of confusing similarity identified in section 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Consequently, Complainant meets the requirements of paragraph 4(a)(i) of the Policy.
There is nothing in the material contained in the Amended Complaint or its exhibits to indicate that Respondent could demonstrate any of the circumstances set out in paragraph 4(c) of the Policy, or other circumstances, as constituting rights to or legitimate interests in the disputed domain name.
Further, in the Panel’s view, the use of the core element - “blue(s)prism” - of Complainant’s BLUE PRISM trade mark in an email address used in a fraudulent manner constitutes use of the disputed domain name for an illegal activity and, as such, cannot confer rights to or legitimate interests on a respondent. See, in this respect, section 2.13.1 of the WIPO Overview 3.0.
Accordingly, Complainant has established its case under paragraph 4(a)(ii) of the Policy.
The Panel finds that Respondent’s typosquatting, in and of itself, constitutes bad faith registration of the disputed domain name for the purposes of paragraph 4(a)(iii) of the Policy.
As noted above, the disputed domain name does not resolve to an active website. However, it is established from numerous decisions under the Policy that bad faith use of a domain name - identified in section 3.4 of the WIPO Overview 3.0 - can include sending deceptive emails, for example, to solicit payment of fraudulent invoices by complainant’s customers. As such, the non-use of a domain name does not prevent a finding of bad faith, as explained in section 3.3 of the WIPO Overview 3.0. In the circumstances, the Panel finds that Respondent’s use of the disputed domain name is in bad faith.
Consequently, the Amended Complaint satisfies the requirement of paragraph 4(a)(iii) of the Policy.
For all 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 <bluesprism.com>, be transferred to Complainant.
David Perkins
Sole Panelist
Date: September 25, 2019