WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Marlink S.A. v. Privacy Service Provided by Withheld for Privacy ehf / Barry Whyte

Case No. D2021-3878

1. The Parties

The Complainant is Marlink S.A., Belgium, represented by Inlex IP Expertise, France.

The Respondent is Privacy Service Provided by Withheld for Privacy ehf, Iceland / Barry Whyte, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <marllnk.com> (the “Disputed Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 19, 2021. On November 19, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 19, 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 November 23, 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 November 24, 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 November 29, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 19, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 28, 2021.

The Center appointed Nicholas Weston as the sole panelist in this matter on January 10, 2022. 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 a company incorporated in Belgium that operates a business in the field of telecommunications services, and particularly cybersecurity, in the maritime industry. It operates internationally through related companies, including Marlink SAS in France, MARLINK Inc. in the United States, and Marlink AS in the Netherlands. The Complainant holds a portfolio of registrations for the trademark MARLINK, including European Union trademark registration number 015462864, registered on September 16, 2016.

The Complainant owns the domain name <marlink.com>, registered on May 10, 1996 which resolves to its main website.

The Disputed Domain Name was registered on November 1, 2021 and resolves to an inactive webpage with an error message.

5. Parties’ Contentions

A. Complainant

The Complainant cites its International Trademark Registration No. 1309586 registered on July 13, 2016, and numerous other registrations around the world for the mark MARLINK, as prima facie evidence of ownership.

The Complainant submits that its rights in the mark MARLINK predate the Respondent’s registration of the Disputed Domain Name. It submits that the Disputed Domain Name is confusingly similar to its trademark, because the Disputed Domain Name incorporates in its entirety the MARLINK trademark and that the similarity is not removed by changing the letter “i” to the letter “l”, or the addition of the generic Top-Level Domain (“gTLD”) “.com”.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it resolves to an inactive webpage with an error message so the Respondent has no legitimate interest in or legitimate bona fide business purpose for using the Disputed Domain Name. The Complainant also states that there is no business or legal relationship between the Complainant and the Respondent, and that the Respondent is not known by the name “Marllnk”.

Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, contrary to the Policy and Rules and submits that the Respondent registered the Disputed Domain Name for the purpose of fraudulent phishing to impersonate the Complainant and that the risk of such conduct combined with the lack of any other reasonable explanation, the concealment of the Respondent’s identity and the passive holding constitutes bad faith use.

B. Respondent

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

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant has the burden of proving the following:

(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.

A. Identical or Confusingly Similar

The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark MARLINK in numerous jurisdictions. The requirements of the first element for purposes of the Policy may be satisfied by a trademark registered in any country (see WIPO Overview of WIPO Panel Views on Selected URDP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1).

Turning to whether the Disputed Domain Name is identical or confusingly similar to the MARLINK trademark, the Panel observes that the Disputed Domain Name comprises: (a) the Complainant’s trademark MARLINK; (b) with the letter “i” replaced with the letter “l”; (c) followed by the gTLD “.com”.

It is well-established that the gTLD used as technical part of a domain name may be disregarded (see Hoffmann-La Roche Inc. v. Andrew Miller, WIPO Case No. D2008-1345). The relevant comparison to be made is with the second-level portion of the Disputed Domain Name, specifically: “marllnk”.

It is also well established that where, on a side-by-side comparison of the Disputed Domain Name and the textual components of the relevant trademark (to assess whether the mark is recognizable within the Disputed Domain Name) if at least a dominant feature of the relevant mark is recognizable in the Disputed Domain Name, then the Disputed Domain Name will normally be considered confusingly similar to that mark for purposes of UDRP standing (see: WIPO Overview of WIPO Panel Views on Selected URDP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7).

In the absence of a reply, and in line with previous UDRP panel typosquatting decisions that have considered a domain name comprised of a trademark with two letters transposed or inverted, the Panel finds the Disputed Domain Name consists of an obvious and intentional misspelling of the Complainant’s trademark of the type that is considered by many previous panels to be confusingly similar to the relevant mark for purposes of the first element. (See: Marlink SAS v. Marianne Gerritsen, Vimexx, WIPO Case No. D2021-0320; WIPO Overview 3.0, section 1.9).

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

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists the ways that the Respondent may demonstrate rights or legitimate interests in the Disputed Domain Name. The Policy also places the burden on the Complainant to establish the absence of the Respondent’s rights or legitimate interests in the Disputed Domain Name. Because of the inherent difficulties in proving a negative, the consensus view is that the Complainant need only put forward a prima facie case that the Respondent lacks rights or legitimate interests. The burden of production then shifts to the Respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306; WIPO Overview 3.0, section 2.1).

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because (i) the Disputed Domain Name is parked; (ii) the Respondent has not acquired or owned any trademark or service mark rights in the name MARLINK, and has not been commonly known by the name “Marllnk”; and (iii) the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name.

Moreover, the composition of the Disputed Domain Name consists of an almost imperceptible misspelling of the Complainant’s trademark so the potential for phishing or fraud is high.

The passive holding of the Disputed Domain Name does not give rise to any rights or legitimate interests.

The Panel notes the evidence that the Disputed Domain Name in this proceeding resolves to a dormant webpage. The Panel is satisfied that the Complainant has put forward a prima facie case that the Respondent lacks rights or legitimate interests. In the absence of a Response by the Respondent, this Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

The Panel finds for the Complainant on the second element of the Policy.

C. Registered and Used in Bad Faith

The third element of the Policy that the Complainant must also demonstrate is that the Disputed Domain Name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both of these conjunctive requirements.

The Panel finds that the evidence in the case shows the Respondent registered and has used the Disputed Domain Name in bad faith.

On the issue of registration, taking into account the composition of the Disputed Domain Name, the Panel is satisfied that the Respondent is, or should have been, aware of the Complainant’s reputation and trademark MARLINK when it registered the Disputed Domain Name (see WIPO Overview 3.0, section 3.2.2).

This Panel finds that there is no reason for the Respondent to have registered the Disputed Domain Name other than to trade off the reputation and goodwill of the Complainant’s well-known trademark (see: Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403 (which held that the domain name in question was “so obviously connected with the Complainant and its products that its use by someone with no connection with the Complainant suggests opportunistic bad faith”).

On the issue of use, the Complainant’s evidence is that the Disputed Domain Name does not currently resolve to an active website. Previous UDRP panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. “While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the ‘passive holding’ doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put” (See WIPO Overview 3.0, section 3.3). This Panel notes that the evidence is that all four of these four factors are present in this proceeding. This Panel finds that the use of the Disputed Domain Name to resolve to a passive website is also evidence of bad faith.

The Panel has also established that a DNS “mail exchange” (MX) record has been activated¹ . This would allow email to be routed to a mail server, therefore the risk of fraud or phishing is high (see: Drägerwerk AG & Co. KGaA v. Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / BLACK ROSES, WIPO Case No. D2020-3167 (“Furthermore, the certificate and the MX record relating to the disputed domain name suggest that it is or was possibly used for email communication. Under these circumstances, the Panel considers it likely that the Respondent intended to use the disputed domain name as a support for a potential fraudulent email scheme, namely to impersonate the Complainant and extract personal or financial data from persons believing that the communication comes from the Complainant”). Seeking to obtain personal information, or sensitive financial information, of potential customers of the Complainant, would be an activity that falls into a category of conduct known as “phishing”. Numerous previous UDRP panels have held that the registration and the use of a disputed domain name in connection with a fraudulent “phishing” scheme constitutes bad faith under the Policy (see WIPO Overview 3.0, section 3.1.4).

In the absence of any evidence to the contrary, and compounded by the fact that no response has been filed, and that there appears to be no conceivable good faith use that could be made by the Respondent of the Disputed Domain Name, this Panel accepts the Complainant’s evidence and finds that the Respondent has taken the Complainant’s trademark MARLINK and incorporated a version of it with two letters transposed, in the Disputed Domain Name, without the Complainant’s consent or authorization, for the purpose of illegitimately capitalizing on the reputation of the Complainant’s trademark.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of 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, <marllnk.com> be transferred to the Complainant.

Nicholas Weston
Sole Panelist
Date: January 14, 2022

¹ According to WhoIs Domaintools, accessed January 11, 2022, at the following URL: “whois.domaintools.com/ marllnk.com”. It has been accepted by numerous UDRP panels that that a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.8).