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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

BAE Systems Plc v. PrivacyGuardian.org / tropicalheightsafricalimited, tropica heightsafrica

Case No. D2021-0694

1. The Parties

The Complainant is BAE Systems Plc, United Kingdom, represented by CMS Cameron McKenna Nabarro Olswang LLP, United Kingdom.

The Respondent is PrivacyGuardian.org, United States of America / tropicalheightsafricalimited, tropica heightsafrica, Uganda.

2. The Domain Name and Registrar

The disputed domain name <baesystemplc.com> is registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 8, 2021. On March 8, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 8, 2021, 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 Complainant on March 12, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 17, 2021.

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 March 19, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 8, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 14, 2021.

The Center appointed Peter Burgstaller as the sole panelist in this matter on April 20, 2021. 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 offers under the trademark BAE and BAE SYSTEMS products and services covering the air, land and naval forces, as well as advanced electronics, aviation security, information technology, and support services. It has grown to one of the global leading defence, aerospace and security companies. (Annex 4 to the Complaint).

The Complainant is the owner of several trademark registrations, including the EUTM registrations for BAe (Reg. No. 989020, registered on February 2, 2000) and BAE SYSTEMS (Reg. No. 1358985, registered May 7, 2001) as well as the UK trademark registrations for BAe (Reg. No. 1540221, registered November 10. 1995) and BAE SYSTEMS (Reg. No. 2211375, registered February 23, 2001); moreover, the Complainant owns a US trademark registration for BAE SYSTEMS (Reg. No. 4113348, registered March 20, 2012 (Annex 5 to the Complaint).

The Complainant has used the BAE and BAE SYSTEMS mark as its business and company name, registered the domain name <baesystem.com> and has continuously hosted its website under this domain name (Annex 6 to the Complaint).

The disputed domain name <baesystemplc.com> was registered on December 10, 2020 (Annex 1b to the Complaint).

The Respondent used the Complainant’s company name together with the disputed domain name as email address and fraudulently purporting to be the Complainant’s procurement manager towards the Complainant’s suppliers to orchestrate a fraud (Annex 2 to the Complaint).

5. Parties’ Contentions

A. Complainant

The Complainant was founded in 1999 and is a globally-famous defence, aerospace and security company offering a wide range of products and services covering the air, land and naval forces, as well as advanced electronics, aviation security, information technology, and support services. Its products include best-in-class radio frequency communications and control systems for next-generation military and commercial aircraft, and specialist communications and intelligence solutions for national security and law enforcement agencies. In 2019, the Complainant employed 87,800 staff globally, with employment centres around the world.

The products and services of the Complainant have been marketed under the registered trademarks BAE and BAE SYSTEMS globally for many years; these marks form the core element of the Complainant’s company name BAE Systems Plc.

The Complainant has extensive rights in trademarks which incorporating BAE and BAE SYSTEMS; the global portfolio of registered trademarks that predate the registration of the disputed domain name includes e.g. the word marks BAE SYSTEMS and BAE in the United States, European Union and United Kingdom.

The disputed domain name is identical or at least confusingly similar to the Complainant’s famous BAE and BAE SYSTEMS trademarks; the Complainant moreover is the registrant of the domain name <baesystems.com> which resolves to the official website of the Complainant.

The Respondent has no rights or legitimate interests in respect of the disputed domain name; it is not affiliated with the Complainant in any way and has not been authorized by the Complainant to use or register the disputed domain name.

Finally, the Respondent has registered the disputed domain name on December 10, 2020 in bad faith and uses the disputed domain name in bad faith, since it is orchestrating a scam in which it has taken the details of the Complainant’s actual employee and is fraudulently purporting to be the Complainant’s Procurement Manager; the Respondent uses the email address, which incorporates the Complainant’s company name to contact the Complainant’s suppliers for a large quantity of chemicals.

B. Respondent

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

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove that

(i) the disputed domain name is 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 with respect to the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has rights in the registered trademarks, trade and company names BAE and BAE SYSTEMS. The disputed domain name is <baesystemplc.com>; it entirely contains the Complainant’s trademark BAE and almost entirely its trademark BAE SYSTEMS and its company name BAE Systems Plc – it only omits the letter “s” at the end of the trademark BAE SYSTEMS and adds the abbreviation of the Complainant’s company type, which is “plc”.

It has long been established under UDRP decisions that where the relevant trademark or company name is recognizable within the disputed domain name the mere addition of other terms such as the abbreviation of the company type (in this case “plc”) as well as the omission of letters (in this case the letter “s” at the end of the trademark BAE SYSTEMS) will not prevent a finding of confusing similarity under the first element of the Policy (see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

Moreover, suffixes such as a generic Top-Level Domain (“gTLD”) are viewed as a standard registration requirement and as such are disregarded under the first element identity or confusing similarity test (see section 1.11 of the WIPO Overview 3.0).

The Panel therefore finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, 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 the WIPO Overview 3.0).

In the present case the Respondent failed to submit a Response. Considering all of the evidence in the Complaint (especially with regard to the annexes presented by the Complainant) and the Complainant’s contentions that the Respondent has no rights or legitimate interests in the disputed domain name, that the Respondent has no connection or affiliation with the Complainant, and that the Respondent has not received any license or consent, express or implied, to use the Complainant’s trademarks BAE or BAE SYSTEMS in a domain name or in any other manner, the Panel concludes that the Complainant has made out an undisputed prima facie case so that the conditions set out in paragraph 4(a)(ii) of the Policy have been met by the Complainant.

UDRP panels moreover have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent (see section 2.13 of the WIPO Overview 3.0). In the present case the Complainant put forward evidence (Annex 2 to the Complaint) showing that the Respondent was fraudulently using the Complainant’s procurement manager’s identity together with the Complainant’s company name and the disputed domain name to orchestrate a scam. The Respondent has not objected this.

The Panel therefore finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

As stated in many decisions rendered under the Policy (e.g., Robert Ellenbogen v. Mike Pearson, WIPO Case No. D2000-0001), both conditions, registration and use in bad faith, must be demonstrated; consequently, the Complainant must show that:

- the disputed domain name was registered by the Respondent in bad faith, and
- the disputed domain name is being used by the Respondent in bad faith.

(a) The disputed domain name is confusingly similar with the trademarks BAE and BAE SYSTEMS as well as the Complainant’s company name in which the Complainant has rights; the trademark BAE is not descriptive.

The disputed domain name was registered on December 10, 2020 and the Complainant has registered trademark rights in the marks BAE and BAE SYSTMES since 1995 onwards and has been using these marks in business together with the domain name <baesystems.com>.

Because of the above mentioned activities of the Complainant with regard to the trademarks BAE and BAE SYSTEMS it is inconceivable that the Respondent has registered the disputed domain name without knowledge of the Complainant’s rights; this is especially supported by the fact that the trademark BAE SYSTEMS is distinctive.

Furthermore, noting registrant obligations under UDRP paragraph 2, panels have found that respondents who (deliberately) fail to search and/or screen registrations against available online databases would be responsible for any resulting abusive registrations under the concept of willful blindness; this concept has been applied irrespective of whether the registrant is a professional domainer (see section 3.2.3 of the WIPO Overview 3.0).

The Panel is therefore convinced that the disputed domain name was registered with full knowledge of the Complainant’s rights and as such in bad faith by the Respondent.

(b) UDRP panels have held that the use of a domain name for purposes other than to host a website may constitute bad faith as well. Such purposes include sending email, phishing or identity theft. Many such cases involve the respondent’s use of the domain name to send deceptive emails, e.g., to plan and orchestrate a scam by fraudulently using someone’s identity like in the present case (see section 3.4 of the WIPO Overview 3.0).

Following the evidence put forward by the Complainant, the Respondent used the disputed domain name as an email address and fraudulently purported to be the Complainant’s procurement manager for contacting the Complainant’s suppliers. The Respondent moreover flagrantly copied the Complainant’s actual website presence in order to cunningly mislead Internet users (“www.baesystems.com”). This fraudulent practice by the Respondent represents unquestionable bad faith use of the disputed domain name.

The evidence and documents produced and put forward by the Complainant together with the fact that the Respondent has failed to present any evidence of any good faith registration and use with regard to the disputed domain name make this case clear: the disputed domain name was registered and is being used by the Respondent with fraudulent intent and therefore in bad faith under 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 disputed domain name <baesystemplc.com> be transferred to the Complainant.

Peter Burgstaller
Sole Panelist
Date: May 1, 2021

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