WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The TJX Companies, Inc. and NBC Fourth Realty Corp. v. Heimann, Heimann Torsten

Case No. D2019-1922

1. The Parties

The Complainants are The TJX Companies, Inc. and NBC Fourth Realty Corp., United States of America (“United States”), represented by FairWinds Partners, LLC, United States.

The Respondent is Heimann, United Kingdom, Heimann Torsten, United Kingdom.

2. The Domain Names and Registrars

The disputed domain name <tjx-groupe.com> is registered with NETIM SARL (the “Registrar”).

The disputed domain name <tkmaxxgroup.com> 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 August 7, 2019. On August 8, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 9, 2019, the Registrar NETIM SARL and the Registrar PDR Ltd. d/b/a PublicDomainRegistry.com transmitted by email to the Center their verification responses disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 13, 2019 providing the registrant and contact information disclosed by the Registrars, and inviting the Complainant to submit an amendment to the Complaint or to file a separate complaint for each of the disputed domain names. The Complainant filed an amended Complaint on August 15, 2019. The Center sent an email regarding the consolidation for multiple Respondents on August 15, 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 August 16, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 5, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 6, 2019.

The Center appointed Marilena Comanescu as the sole panelist in this matter on September 11, 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 language of the proceeding is English.

4. Preliminary Procedural Issue. Consolidation of Multiple Disputed Domain Names and Complainants

According to the provisions of paragraph 10(e) of the Rules, the Panel has the power to decide the consolidation of multiple domain names disputes. Further, paragraph 3(c) of the UDRP Rules provides that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder.

In the present case, there are two disputed domain names, two Complainants and apparently one Respondent.

The two Complainants are commercially and legally connected to each other, being parent company and its subsidiary.

According to the evidence in the Complaint, the disputed domain names were used in a similar manner, to send phishing emails with very similar wording for fraudulent purposes, impersonating an employee of the Complainant.

The Respondent had the opportunity to comment on the consolidation request made by the Complainant but it chose to remain silent.

For the above, the Panel finds that the Complainants have a truly common grievance against the Respondent and it would be equitable and procedurally efficient to decide the consolidation of multiple disputed domain names and the Complainants in the present procedure. See also section 4.11.1 of theWIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

5. Factual Background

The Complainant The TJX Companies, Inc., based in the United States, is the corporate parent company of the off-price apparel and home fashions retailers located in the United States, Canada, Europe and Australia. According to Complaint and evidence submitted therein, the Complainant’s mark TJX was extensively used since at least 1987 as the umbrella brand in promoting its various retail stores such as T.J. Maxx, T.K. Maxx, Marshalls, HomeGoods, Homesense, Winners and Sierra. At the beginning of 2019, the Complainant had over USD 39 billion in revenues, more than 4,300 stores and about 270,000 employees.

The Complainant NBC Fourth Realty Corp., a subsidiary of the Complainant The TJX Companies, Inc., is the holder of the trademark T.K. MAXX which was used since 1994 in connection with off-price apparel and home fashions retailer in part of Europe and Australia. The Complainant NBC Fourth Realty Corp. operates over 500 T.K. MAXX stores in Europe and 35 in Australia.

The Complainants hold trademark registrations for TJX and T.K. MAXX marks worldwide such as:

- the United States Trademark TJX, registration number 2117444, filed on May 10, 1996 and registered on December 2, 1997, for services in IC 42;

- the European Union Trade Mark TJX, registration number 006762538, filed on March 4, 2008 and registered on February 20, 2009, for goods and services in IC 16, 35 and 36;

- the European Union Trade Mark T.K. MAXX, registration number 004064549, filed on October 1, 2004 and registered on September 17, 2008, for goods in IC 03, 25 and 28; and

- the European Union Trademark T.K. MAXX, registration number 008220964, filed on March 18, 2009 and registered on February 22, 2010, for goods in IC 03, 14, 16, 21, 25 and 28.

The Complainant holds and uses a number of Internet domain name registrations which wholly incorporate the TJX mark, such as <tjx.com>, <tjxeurope.com>, and <tjxeurope.com.au>, and the T.K. MAXX mark such as the following <TKMaxx.com>, <TKMaxx.at>, and <TKMaxx.ie>.

The disputed domain name <tjx-groupe.com> was registered on July 2, 2019 and the disputed domain name <tkmaxxgroup.com> was registered on May 17, 2018.

According to the evidence provided in the Complaint, the disputed domain names were used in connection with phishing emails to companies that manufacture or supply products of the type that would be carried in the Complainant’s stores, asking to set up banking, payment or other financial arrangements with the Respondent and specifically sought to impersonate an employee of the Complainant. No website content is displayed on the corresponding websites of the disputed domain names.

6. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain names are confusingly similar to its well-known trademarks TJX and T.K. MAXX, the Respondent has no rights or legitimate interests in the disputed domain names, and the Respondent registered and is using the disputed domain names in bad faith.

B. Respondent

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

7. Discussion and Findings

In view of the Respondent’s default, the discussion and findings will be based upon the contentions in the Complaint and any reasonable position that can be attributable to the Respondent. Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the following circumstances are met:

(i) the disputed domain names are 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 the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.

The Panel will further analyze the potential concurrence of the above circumstances.

A. Identical or Confusingly Similar

The Complainant holds rights in the TJX and T.K. MAXX trademarks.

The disputed domain name <tjx-groupe.com> incorporates the Complainant’s TJX trademark in its entirety with the addition of the word “groupe” and a hyphen at the end of the Second-Level Domain portion; and the disputed domain name <tkmaxxgroup.com> incorporates the Complainant’s T.K. MAXX without the spaces and dots and with the addition of the word “group”. However, such minor changes, additions and removals, do not prevent a finding of confusing similarity as the Complainant’s trademarks are clearly recognizable within the disputed domain names.

Numerous UDRP panels have considered that the addition of other terms (whether descriptive, pejorative, meaningless or otherwise) to trademarks in a domain name is not sufficient to escape a finding of confusing similarity. See section 1.8 of theWIPO Overview 3.0.

Further, it is well established in decisions under the UDRP that the generic Top-Level Domain (“gTLD”) (e.g., “.com”, “.info”, “.org”) may typically be disregarded for the purposes of consideration of confusing similarity between a trademark and a domain name.

Given the above, the Panel finds that the disputed domain names <tjx-groupe.com> and <tkmaxxgroup.com> are confusingly similar to the Complainant’s trademarks TJX and T.K. MAXX, pursuant to the Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

The Complainant asserts that the Respondent does not hold any trademark rights, license or authorization whatsoever to use the marks TJX and T.K. MAXX, that the Respondent is not commonly known by the disputed domain names and that the Respondent has not used the disputed domain names in connection with a legitimate noncommercial or fair use or a bona fide offering of goods and services.

Under the Policy, “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”. See section 2.1 of theWIPO Overview 3.0.

The Respondent has not replied to the Complainant’s contentions and has not come forward with relevant evidence to rebut the Complainant’s prima facie case.

There is nothing in the record suggesting that the Respondent has ever been commonly known by the disputed domain names.

To the contrary, the Respondent has used the disputed domain names in connection with email communications for fraudulent purposes in an attempt to obtain valuable customer information for its own fraudulent purposes. This is definitely not an activity falling under the circumstances listed by paragraph 4(c) of the UDRP as demonstrating the Respondent’s rights or legitimate interests in the disputed domain names, nor an activity from which rights or legitimate interests could arise.

Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names, pursuant to the Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

The Complainant holds registered trademark rights since 1997 for TJK and since 2008 for T.K. MAXX. As shown in the Complaint, the Complainant’s marks gained substantial goodwill and become well-known in their relevant markets due to extensive use and advertising.

The disputed domain name <tjx-groupe.com> was created in 2019 and the disputed domain name <tkmaxxgroup.com> was created in 2018 and they both incorporate the Complainant’s marks with an additional dictionary term – “groupe”, respectively “group”.

For the above, the Panel finds that the disputed domain names were registered in bad faith, knowing the Complainant and targeting its trademarks.

At the time of filing the Complaint, both disputed domain names did not resolve to an active website. According to the evidence provided in the Complaint and unrefuted by the Respondent, prior to the present proceeding, the Respondent was using the disputed domain names to send email communications for phishing and other fraudulent purposes in an attempt to obtain confidential information from third parties, impersonating an employee of the Complainant. This is a classic phishing scheme and establishes bad faith use and registration.

UDRP panels have consistently held that the use of a domain name other than to host a website may constitute bad faith. Such purposes include sending email, phishing, or identity theft. Many of such cases, as well as the present case, involve the respondent’s use of the disputed domain name to send deceptive emails to obtain sensitive or confidential information from complainant’s actual or prospective clients. See section3.4 of theWIPO Overview 3.0.

Furthermore, the Respondent registered the disputed domain names under a proxy service and refused to participate in the present proceeding in order to provide arguments in its favor. Having in view the other circumstances of this case, such facts constitute further evidence of bad faith behavior.

For all the above reasons, the Panel finds that the Respondent registered and is using the disputed domain names in bad faith, pursuant to the Policy, paragraph 4(a)(iii).

8. 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 names <tjx-groupe.com> and <tkmaxxgroup.com> be transferred to the Complainant.

Marilena Comanescu
Sole Panelist
Date: September 19, 2019