WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Dewberry Engineers Inc. v. Peggy Cumberledge, Island Service

Case No. D2020-0346

1. The Parties

The Complainant is Dewberry Engineers Inc., United States of America (“United States” or “U.S.”), represented by McCandlish Holton, PC, United States.

The Respondent is Peggy Cumberledge, Island Service, United States.

2. The Domain Name and Registrar

The disputed domain name <dewberrry.com> (“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 February 13, 2020. On February 14, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 21, 2020, 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. On February 26, 2020, the Center sent an email regarding the expiry of the Domain Name to the Registrar. On February 28, 2020, the Center sent an email regarding the expiry of the Domain Name to the Parties and the Registrar.

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 March 2, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 22, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 27, 2020.

The Center appointed Martin Schwimmer as the sole panelist in this matter on April 6, 2020. 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 an engineering, architecture, real estate services, and management firm, utilizing the trademark DEWBERRY (the “Mark”) for a variety of services since at least February 2003. It utilizes the domain name <dewberry.com>. The Respondent registered the Domain Name <dewberrry.com> on March 25, 2019. The Domain Name does not resolve to any active webpage.

5. Parties’ Contentions

A. Complainant

The Complainant has used the trademark DEWBERRY in relation to engineering, architecture, real estate services, and management services, since no later than February 2003. It utilizes the domain name <dewberry.com> to promote a wide array of services.

The Complainant owns U.S. trademark registrations including U.S. registration number 2991043 for the DEWBERRY word mark, and U.S. registration number 2991044 for DEWBERRY and design, both in relation to engineering, construction, and related services, both registered September 6, 2005, and alleging a date of first use of February 5, 2003.

The Respondent’s Domain Name <dewberrry.com> is identical to the Complainant’s Mark but for the insertion of an extra “r”.

The Respondent has made no bona fide use of the Domain Name. The Respondent does not appear to be known by the Domain Name. The Domain Name is not utilized in connection with a website.

The Respondent’s actions constitute bad faith typosquatting.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has submitted evidence of its ownership of the trademark DEWBERRY, including U.S. registration numbers 2991043 and 2991044, both registered September 6, 2005. Furthermore, use of its DEWBERRY trademark is depicted at the Complainant’s website at the domain name <dewberry.com>.

The insertion of the extra letter “r” in the Respondent’s Domain Name, does not create a visually or phonetically different string from that in “dewberry”. The Mark is clearly recognizable in the Domain Name. Moreover, “dewberrry” is not a word in English, and when entered as a search term in the Google search engine, the user is prompted with “did you mean: dewberry?”.

Accordingly, the Domain Name is confusingly similar to a trademark in which the Complainant has established rights according to paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant implies that the Respondent has received no authorization of any sort from the Complainant to use the DEWBERRY trademark or any variant thereof or include such marks in any domain name. The Respondent is not known by the name “Dewberry” or “Dewberrry”, nor does it carry on any legitimate business under or by reference to those names. There is no bona fide use of the Domain Name, which is virtually identical to the Complainant’s trademark, as it does not resolve to any active webpage.

The Panel notes that various ‘MX Record Lookup’ services indicate that the Domain Name has a MX Record. This means that, at a minimum, the Respondent configured the Domain Name so that email using addresses in the form “user”@dewberrry.com, could be received. As noted in Section 6A, the Mark and the Domain Name are confusingly similar. Accordingly, email sent from the Domain Name has the potential to deceive Internet users familiar with the Complainant’s Mark, and thus could not be viewed as a bona fide use of the Domain Name.

The Respondent has not filed any response asserting any rights or legitimate interests.

Therefore, the Panel holds that the Complainant has established an unrebutted, prima facie case that the Respondent does not have any rights or legitimate interests in the Domain Name, according to paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The evidence suggests that the Respondent has targeted the Complainant’s Mark, and that there is no conceivable good faith use of this Domain Name.

First, the string “dewberry” has no independent connotation other than as a confusingly similar variant of the Complainant’s Mark.

The Respondent has taken no public action to use the Domain Name, other than, as noted above, to configure it for email, which email has the potential to deceive. Utilizing the confusingly similar Domain Name for email purposes would constitute bad faith use.

Finally, the Panel notes that this Respondent has previously committed typosquatting. See, Morgan Stanley v peggy Cumberledge / island service, NAF FA2002001883009.

Considering the totality of these circumstances, as well as the Respondent’s failure to reply, leads the Panel to conclude that there is no imaginable good faith registration and use of this Domain Name, and that the registration of the Domain Name is a clear example of typosquatting, where the Respondent hopes in some way to make a profit or disrupt the business of the Complainant.

The registration and use of a domain name clearly intended to typosquat on a trademark reflects bad-faith on the part of the Respondent. See, e.g., Tommy Bahama Group, Inc. v. Registration Private Domains by Proxy, LLC/Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2019-0198. The Panel holds that the Domain Name was registered and used in bad faith, according to 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 Domain Name <dewberrry.com> be transferred to the Complainant.

Martin Schwimmer
Sole Panelist
Date: April 20, 2020