The Complainants are Triton Investco SARL (the “First Complainant”), , Luxembourg, and Triton Investment Management Limited (the “Second Complainant”), Jersey, represented by Demys Limited, United Kingdom.
The Respondent is Contact Privacy Inc. Customer 1245360383, Canada / STANZIONE, France.
The disputed domain name <triton-online.com> is registered with Google LLC (the “Registrar”).
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on February 28, 2020. On March 2, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 2, 2020, 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 Complainants on March 9, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint in English on March 10, 2020.
On March 9, 2020, the Center sent an email communication to the Parties in English and French regarding the language of the proceeding. On March 10, 2020, the Complainants requested that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
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 in English and French of the Complaint, and the proceedings commenced on April 1, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 21, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 22, 2020.
The Center appointed Torsten Bettinger as the sole panelist in this matter on May 1, 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.
According to settled practice of UDRP panels, it is possible for a single complaint to be brought by multiple complainants, where the multiple complainants truly have a common grievance against the respondent. It is so for instance where the multiple complainants have a common legal interest in a relevant right or rights that are allegedly affected by the respondent’s conduct.
In the present case, the Complainants form part of a single entity, as they are part of a larger corporate group, and are both sharing an interest in the trademark TRITON, either as trademark owner or as entities that include the mark in their trade names. The Complainants have therefore established that they have a common legal interest that may be affected by the Respondent’s conduct.
Accordingly, the Panel, having regard to all relevant circumstances, concludes that the consolidation of the Complainants’ grievances in one Complaint is consistent with the Policy and Rules and in accordance with previous relevant UDRP proceedings.
Paragraph 11(a) of the Rules provides “[u]nless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”.
The language of the Registration Agreement is French. Nevertheless, the Complainants filed its Complaint and amended Complaint in English, and requested that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
Considering the following, the Panel has decided that English be the language of the proceeding:
(i) the disputed domain name includes an English dictionary term - “online”;
(ii) the Respondent has not objected to the Complainant’s request that English be the language of the proceeding;
(iii) the Center notified the Respondent in English and French of the Complaint, and the Respondent has chosen not to participate in this proceeding;
(iv) the fact that French as the language of the proceeding would lead to unwarranted delays and costs for the Complainants.
In light of the above, the Panel will proceed to render its Decision in English.
The Complainants are two entities within a group of related legal entities named Triton. The First Complainant, Triton Investco SARL, is a limited company registered in Luxembourg. The Second Complainant, Triton Investment Management Limited, is a registered private company registered in Jersey. The Complainants invest capital in mid-market businesses within one of three sectors: industrials, business services and consumer / health.
The Complainants provided evidence of multiple trademark registrations for the mark TRITON including, inter alia, International Registration No. 1303536A (registered on May 10, 2006) and European Union Registration No. 008691016 (registered on October 16, 2012) and Germany Registration No. 302009067313 (registered on March 3, 2010).
According to the WhoIs extract, the disputed domain name was registered on August 30, 2019, and resolved to a website that copied the look and feel of the Complainants’ website. At the time of the Decision, the disputed domain name is inactive.
Triton corporate group of which the Complainants form part is an investment firm that was established in 1997and invests primarily in France, Germany, the Nordics, Benelux, Italy, Spain and the United Kingdom.
The Complainants set forth that they currently invest in companies in Europe with combined sales of around EUR 14 billion and around 72,500 employees. The Complainants have 12 offices worldwide, including inter alia, in Denmark, China, the United Kingdom and the United States of America. The Complainants’ group operates a website at the URL “www.triton-partners.com” since at least 1999 and the Second Complainant and other parts of the Complainants’ group uses its domain name for the sending and receipt of corporate email.
The Complainants have presented evidence that the Respondent used the disputed domain name to resolve to a website which copies the look and feel of the Complainants’ website and, furthermore used the Complainants’ name and address details on the “Contact us” section and within the website’s “terms and conditions” page.
With regard to the requirement of identity or confusing similarity between the trademark and the disputed domain name pursuant to paragraph 4(a)(i) of the Policy, the Complainants assert that:
- incorporation of the trademark TRITON in its entirety and that the inclusion of the word “online”, a common descriptive word frequently used in corporate domain names, does nothing to distinguish the disputed domain name from that of the trademark, but serves to further increase the likelihood of confusion;
- the use of the disputed domain name in an impersonation scam targeting the Complainants indicates that the Respondent itself considered that the disputed domain name was confusingly similar to the Complainants’ group’s name and marks such that it would be likely to render the Respondent’s fraudulent impersonation of the Complainants’ group successful and lead to a payment being made on the Respondent’s instructions;
- the Top-Level Domain(“TLD”) “.com” is wholly generic in that it is required only for technical reasons and should be disregarded for the purposes of comparison with the Complainants’ trademark.
With regard to the Respondent having no rights or legitimate interests in the disputed domain name, the Complainants submitted that:
- there is no evidence that the Respondent has been commonly known as Triton or Triton Online prior to or after the registration of the disputed domain name;
- the Respondent is not a licensee of the Complainants and has not received any permission or consent from the Complainants to use their name or marks;
- the Respondent has never traded as Triton or Triton Online and that there is no conceivable use to which the disputed domain name could be put now, or in the future, that would confer any rights or legitimate interests upon the Respondent;
- the disputed domain name has been used for an attempted business email compromise scam and that such use of the disputed domain name cannot confer any rights or legitimate interests upon the Respondent;
- the use of a domain name for this species of phishing can never give rise to rights or legitimate interests on the part of a respondent;
Finally, with regard to the disputed domain name having been registered and being used in bad faith, the Complainants argue that:
- the disputed domain name has been used in association with a business email compromise scam;
- the website to which the disputed domain name resolved copied the look and feel of the Complainants’ website and, furthermore, used the Complainants’ name and address details on the “Contact us” section and within the website’s “terms and conditions” page;
- the Respondent chose a domain name that was confusingly similar to the Complainants’ group’s name and marks in order to more successfully perpetrate the intended fraud;
- the Respondent took extra steps in order to obscure its identity by employing a privacy or proxy service and that the use of privacy or proxy service combined with phishing is indicative of bad faith.
The Respondent did not reply to the Complainants’ contentions.
The Complainants have demonstrated that the First Complainant owns registered multiple trademark registrations for the mark TRITON in Europe and various other countries prior to the registration of the disputed domain name on August 30, 2019.
It is well-established that the test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the trademark is used or other marketing and use factors usually considered in trademark infringement cases. (See section 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
In this case, the disputed domain name only differs from the Complainants’ trademark TRITON by the addition of the descriptive term “online” and a hyphen.
The addition of merely descriptive wording to a trademark in a domain name is insufficient to distinguish a domain name from a complainant’s trademark and in itself to avoid a finding of confusing similarity under the first element of the UDRP. (See, for instance, Facebook, Inc. v. Sleek Names, SL Names, VSAUDHA, WIPO Case No. D2015-0547 <bestfacebookstatus.com> et al., “The disputed domain names contain as a first and/or dominant element the Complainant’s famous trademark FACEBOOK, combined with a variety of descriptive terms, for example, ‘account’, ‘password’, ‘hacker’, ‘analytics’, ‘survey’ et cetera. The addition of these terms do not serve to distinguish the disputed domain names in any material way.”; see also, for instance, Dropbox, Inc. v. Mohd Shariq, Techinspire, WIPO Case No. D2016-1194 <dropbox-support.com> et al., “The domain name <dropbox-support-number.com> consists of the Complainant’s registered mark DROPBOX plus the generic words ‘support’ and ‘number’ separated by hyphens. The addition of these generic words and hyphens do not serve to distinguish the domain names from the Complainant’s DROPBOX marks and the Panel finds that the domain names are confusingly similar to a mark in which the Complainant has rights for the purpose of the Policy.”; see also section 1.8 of the WIPO Overview 3.0).
Equally, the hyphen between the mark TRITON and the descriptive word “online” does not serve to distinguish the disputed domain names in any material way from the Complainants’ mark.
Finally, it has been long established under the UDRP decisions that the specific generic TLD (“gTLD”) designation such as “.com”, “.net” or “.org” is typically not to be taken into account when assessing the issue of identity and confusing similarity, except in certain cases where the applicable gTLD suffix may itself form part of the relevant trademark (see section 1.11 of the WIPO Overview 3.0).
For the foregoing reasons the Panel concludes that the disputed domain name <triton-online.com> is confusingly similar to the Complainants’ trademark TRITON in which the Complainants have rights.
A respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:
“(i) before any notice to you [the Respondent] of the dispute, your 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) you [the Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [the Respondent] are 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.”
The Complainants asserted that the Complainants have not authorized the Respondent to use their trademark TRITON or the disputed domain name, and provided evidence that the disputed domain name has been used for an attempted business email compromise scam.
These assertions and evidence are sufficient to establish a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
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 disputed domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.
The Respondent chose not to contest the Complainants’ allegations and has failed to come forward with any evidence to refute the Complainant’s prima facie showing that the Respondent lacks rights or legitimate interests. The Panel therefore accepts these allegations as undisputed facts.
In light of the circumstances of this case, including the fact that the website to which the disputed domain name resolved copied the look and feel of the Complainants’ website and, furthermore used the Complainants’ name and address details on the “Contact us” section and within the website’s “terms and conditions” page, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name that therefore the Complainants have also satisfied the second element of the Policy set forth by paragraph 4(a)(ii).
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.
The First Complainant holds multiple trademark registrations for the mark TRITON including in the European Union and other countries that predate the date of the disputed domain name registration.
This and the fact that the website to which the disputed domain name resolved copied the look and feel of the Complainants’ website and used the Complainants’ name and address details on the “Contact us” section and within the website’s “terms and conditions” page, makes it inconceivable that that the Respondent coincidentally selected the disputed domain name without any knowledge of the Complainants and their trademark TRITON.
The Panel therefore concludes that the Respondent registered the disputed domain name in bad faith.
Based on the record in this proceeding there is also strong evidence that apart from using the disputed domain name for a website that copied the look and feel Complainants’ website and uses the Complainants’ name and address, the Respondent also used the disputed domain name in an impersonation scam targeting the Complainants and attempting to lead to a payment being made by one of the Complainants’ customers following the Respondent’s instructions.
Prior panels deciding under the Policy have consistently held that use of a domain name for phishing related activities is inherently in bad faith. (See Yahoo Holdings, Inc. v. Registration Private, Domains By Proxy, LLC / Technonics Solutions, WIPO Case No. D2017-1336 <yahoodomainsupport.com>, “Phishing is bad faith use under the Policy. The examples listed in paragraph 4(b) of the Policy are ‘without limitation’”. “Phishing’ is a form of Internet fraud that aims to steal valuable information such as credit cards, social security numbers, user ids, passwords, etc.”; see also Confédération Nationale du Crédit Mutuel v. Daniel Delcore, WIPO Case No. DLC2009-0001. The use of a disputed domain name in a phishing scheme “is in itself evidence that the disputed domain name was registered and is being used in bad faith”. BHP Billiton Innovation Pty Ltd v. Domains By Proxy LLC / Douglass Johnson, WIPO Case No. D2016-0364.)
The Panel therefore concludes that the Respondent’s registration and use is a clear-cut case of cybersquatting and that the Complainants have also satisfied their burden under paragraph 4(a)(iii) of the Policy.
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 <triton-online.com> be transferred to the Second Complainant, Triton Investment Management Limited.
Torsten Bettinger
Sole Panelist
Date: May 15, 2020