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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Windrock Inc. v. WhoisGuard, Inc. / Aaron Scot

Case No. DCO2018-0016

1. The Parties

Complainant is Windrock Inc. of Knoxville, Tennessee, United States of America (“United States”), represented by Morriss O’Bryant Compagni Cannon, PLLC, United States.

Respondent is WhoisGuard, Inc. of Panama / Aaron Scot of Williamsville, New York, United States.

2. The Domain Name and Registrar

The disputed domain name <windrock.co> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 31, 2018. On June 1, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 1, 2018, 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 Complainant on June 4, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on June 5, 2018.

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 Respondent of the Complaint, and the proceedings commenced on June 6, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 26, 2018. On June 24, 2018, the Center received a communication from Respondent, in response to which the Center sent an email inviting the Parties to explore settlement negotiations. The Parties were not able to reach a settlement.

The Center appointed Frederick M. Abbott as the sole panelist in this matter on July 6, 2018. 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

Complainant is the owner of registration for the service mark WINDROCK on the Principal Register of the United States Patent and Trademark Office (USPTO), registration number 1,945,192, registration dated January 2, 1996, in international class (IC) 42, covering “research and development services in the field of monitoring internal combustion engines and analyzing oil”. Complainant also is owner of registration for a word and design trademark incorporating the term WINDROCK on the Principal Register of the USPTO, registration number 1,916,182, registration dated September 5, 1995, in IC 9, covering “monitoring and diagnostic instrument for internal combustion engines”.

Complainant provides research and development services in the field of monitoring internal combustion engines and analyzing oil, and sells related monitoring instrument systems. Complainant operates a commercial website at “www.windrock.com” at which it makes use of its trademark and logo.

According to the Registrar’s verification, Respondent is registrant of the disputed domain name. According to that verification, Respondent registered the disputed domain name on March 7, 2018.

The disputed domain name has been used in at least one attempt to fraudulently obtain a substantial payment from a customer of Complainant. This attempt to defraud involved use of an email displaying the correct name and address of Complainant, Complainant’s correct website address, and displaying an email address in the signature line ending with Complainant’s standard email format (using the generic Top-Level Domain (“gTLD”) “.com”); but, originating from an email address incorporating the disputed domain name, [***]@windrock.co, for which a reply was requested. The party seeking to defraud the customer relied on the likelihood that the recipient of the email would fail to notice the difference between Complainant’s “.com” email address and the disputed domain name’s “.co” address when receiving and responding to fraudulent payment instructions.

The disputed domain name otherwise was used to direct Internet users to a nondescript site “under maintenance” webpage.

The registration agreement between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, one of which is the Center, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).

5. Parties’ Contentions

A. Complainant

Complainant alleges that it is the owner of the mark WINDROCK and that the disputed domain name is identical to its mark.

Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain name because: (1) Respondent is not an authorized dealer of Complainant, nor is it licensed to use Complainant’s trademark; (2) Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, and is not commonly known by the disputed domain name; (3) Respondent’s sole active use of the disputed domain name is in connection with a fraudulent scheme, and; (4) Respondent does not own trademark rights in the term “windrock”.

Complainant argues that Respondent registered and is using the disputed domain name in bad faith because the enumerated list of bad faith factors in paragraph 4(b) is illustrative, not exhaustive, and using Complainant’s trademark to further a fraudulent scheme constitutes bad faith registration and use.

Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.

B. Respondent

Respondent did not transmit a formal Response to Complainant’s contentions. However, by email dated June 24, 2018, Respondent Scot advised the Center that he was personally unaware of the use of the disputed domain name for fraudulent purposes, and that from time to time he assists third parties in registering domain names and hosting domains. Respondent Scot indicated that he approved immediate termination of the disputed domain name registration. In a subsequent email dated July 3, 2018, Respondent Scot indicated that the initial request for registration of the disputed domain name came from a third-party instant messaging account and that he was unable to determine the identity of the person who had requested the registration.

6. Discussion and Findings

It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of a proceeding that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).

The Center formally notified the Complaint to Respondent at the email and physical addresses provided in the record of registration. Email and express courier notification was successful, and Respondent responded by informal email to the Complaint. The Center took those steps prescribed by the Policy and the Rules to provide notice to Respondent, and those steps are presumed to satisfy notice requirements.

Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use and to obtain relief.

These elements are that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and

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

Each of the aforesaid three elements must be proved by a complainant to warrant relief.

A. Identical or Confusingly Similar

Complainant has provided evidence of ownershitradep of registration of the service mark WINDROCK on the Principal Register of the USPTO, and of use in commerce. See Factual Background, supra. Respondent has not challenged Complainant’s rights in the service mark. The Panel determines that Complainant has rights in the service mark WINDROCK.

The disputed domain name directly incorporates the service mark of Complainant, adding the country-code Top-Level Domain (“ccTLD”) “.co”. Under circumstances present here, use of the ccTLD does not distinguish the disputed domain name from Complainant’s service mark. The Panel determines that the disputed domain name is identical to Complainant’s service mark from the standpoint of the Policy.

The Panel determines that Complainant owns rights in a service mark, and that the disputed domain name is identical to that service mark.

B. Rights or Legitimate Interests

Complainant’s allegations to support Respondent’s lack of rights or legitimate interests in the disputed domain name are outlined above in section 5A, and the Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name.

The disputed domain name has not been used in connection with an active website. It has been used as part of an attempt to defraud at least one customer of Complainant. Such use does not establish rights or legitimate interests in the disputed domain name.

The Panel determines that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The Policy indicates that certain circumstances may, “in particular but without limitation”, be evidence of the registration and use of a domain name in bad faith. These include circumstances indicating that “by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [its] website or other on line location, by creating a likelihood of confusion with [Complainant’s] mark as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] website or location or of a product or service on [Respondent’s] website or location” (Policy, paragraph 4(b)(iv)).

The disputed domain name has been used as part of an email address intended to deceive and defraud at least one customer of Complainant. Respondent Scot denies direct involvement in the scheme to defraud. He admits that he registered the disputed domain name on behalf of an unknown third-party, and he remains the listed registrant of the disputed domain name. As the legal registrant of the disputed domain name, Respondent must be considered the responsible party for registration and use of the disputed domain name in so far as the Panel is required to make a determination as to whether registration and use is in bad faith. Respondent’s registration and use of the disputed domain name for commercial gain to create a likelihood that an email recipient would be confused as to the source of a product or service at an online location constitutes bad faith within the meaning of paragraph 4(b)(iv) of the Policy. The Panel determines that Respondent registered and is using the disputed domain name in bad faith within the meaning 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, <windrock.co>, be transferred to Complainant.

Frederick M. Abbott
Sole Panelist
Date: July 17, 2018

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