Bilfinger SE v. Ilo Chidera / Maxtyga Services
Claim Number: FA2202001985721
Complainant is Bilfinger SE (“Complainant”), represented by Henry B. Ward of Moore & Van Allen PLLC, North Carolina, USA. Respondent is Ilo Chidera / Maxtyga Services (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bilfingerinvestment.com>, registered with NameCheap, Inc..
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
The Honorable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 24, 2022; the Forum received payment on February 24, 2022.
On February 24, 2022, NameCheap, Inc. confirmed by e-mail to the Forum that the <bilfingerinvestment.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 25, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 17, 2022 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@bilfingerinvestment.com. Also on February 25, 2022, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On March 21, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honorable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant, Bilfinger SE, offers services in a variety of fields, including, but not limited to, business management, administration, and organization-consultancy services. Complainant asserts rights in the BILFINGER mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., reg. no. 4,030,450, registered September 27, 2011). See Compl. Ex. A, Tab 3. Respondent’s <bilfingerinvestment.com> domain name is confusingly similar to Complainant’s mark, containing the BILFINGER mark in its entirety, merely adding the generic term “investment” and the generic top-level domain (“gTLD”) “.com” to form the disputed domain name.
Respondent does not have rights or legitimate interests in the <bilfingerinvestment.com> domain name. Respondent is not licensed or authorized to use Complainant’s BILFINGER mark and is not commonly known by the disputed domain name. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to pass off as Complainant by displaying its mark, the address of Complainant’s subsidiary, and photographs of some of Complainant’s past and present employees on the disputed domain name’s resolving webpage. Complainant further asserts Respondent uses the disputed domain name to engage in a phishing scheme.
Respondent registered and uses the <bilfingerinvestment.com> domain name in bad faith. Respondent used a privacy service to register the disputed domain name. Respondent uses the disputed domain name to pass off as Complainant. Respondent uses the disputed domain name to engage in a phishing scheme.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a German company that provides services in a variety of fields, including, but not limited to, business management, administration, and organization-consultancy.
2. Complainant has established its rights in the BILFINGER mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., reg. no. 4,030,450, registered September 27, 2011).
3. Respondent registered the <bilfingerinvestment.com> domain name on December 31, 2021.
4. Respondent uses the disputed domain name to pass itself off as Complainant and to engage in a phishing scheme.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits it has rights in the BILFINGER mark based upon registration with the USPTO (e.g., reg. no. 4,030,450, registered September 27, 2011). See Compl. Ex. A, Tab 3. Registration of a mark with the USPTO is a valid showing of rights per Policy ¶ 4(a)(i). See Nintendo of America Inc. v. lin amy, FA 1818485 (Forum Dec. 24, 2018) ("Complainant’s ownership a USPTO trademark registration for the NINTENDO mark evidences Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Therefore, the Panel finds Complainant has established its rights in the BILFINGER mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s BILFINGER mark. Complainant contends that Respondent’s <bilfingerinvestment.com> domain name is confusingly similar to Complainant’s mark, containing the BILFINGER mark in its entirety, merely adding the generic term “investment” and the gTLD “.com” to form the disputed domain name. The addition of generic terms and a gTLD is insufficient to distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”). Thus, the Panel finds the disputed domain name is confusingly similar to the BILFINGER mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s BILFINGER mark and to use it in its domain name adding only the generic word “investment” to the mark;
(b) Respondent registered the <bilfingerinvestment.com> domain name on December 31, 2021;
(c) Respondent uses the disputed domain name to pass itself off as Complainant and to engage in a phishing scheme;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent does not have rights or legitimate interests in the <bilfingerinvestment.com> domain name because Respondent is not licensed or authorized to use Complainant’s BILFINGER mark and is not commonly known by the disputed domain name. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The WHOIS information for the disputed domain name lists the registrant as “Ilo Chidera / Maxtyga Services.” See Registrar Verification Email. Complainant submits that it has never authorized Respondent to use Complainant’s BILFINGER mark. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to pass itself off as Complainant by displaying its mark, the address of Complainant’s subsidiary, and photographs of some of Complainant’s past and present employees on the disputed domain name’s resolving webpage. An attempt to pass off as a complainant is not a bona fide offering of goods or services under Policy ¶¶ 4(c)(i) and (iii). See ShipChain, Inc. v. 谢东东 / 谢东东, FA 1785189 (Forum June 21, 2018) (“The resolving webpages between Complainant’s and Respondent’s websites are virtually the same. Respondent’s use of the disputed domain name does not confer rights and legitimate interests under Policy ¶¶ 4(c)(i) and (iii).”); see also Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business). Here, Complainant has attached screenshots of the disputed domain name’s resolving webpage, showing the aforementioned content used by Respondent in a brazen manner to pass itself off as Complainant. See Compl. Ex. B, Tab. 2. Therefore, the Panel finds that Respondent is not using the domain name in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii);
(g) Complainant submits that Respondent is not using the domain name in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use because Respondent uses the disputed domain name to engage in a phishing scheme. Use of a disputed domain name in furtherance of a phishing scheme is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Enterprise Holdings, Inc. v. I S / Internet Consulting Services Inc., FA 1785242 (Forum June 5, 2018) (“On its face, the use of a domain name that is confusingly similar to the mark of another in order to facilitate a phishing scheme cannot be described as either a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Here, Complainant has attached screenshots of the disputed domain name’s resolving webpage, including mentions of what the Panel concludes are fraudulent investment services. See Compl. Ex. B, Tab. 2. Therefore, the Panel finds Respondent is not using the domain name in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant contends that Respondent registered and uses the <bilfingerinvestment.com> domain name in bad faith because Respondent uses the disputed domain name to pass itself off as Complainant. Use of a disputed domain name to pass off as a complainant constitutes bad faith per Policy ¶¶ 4(b)(iii) and (iv). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business). Here, Complainant has attached screenshots of the disputed domain name’s resolving webpage, showing the aforementioned content used by Respondent to pass itself off as Complainant. See Compl. Ex. B, Tab. 2. Therefore, the Panel finds that Respondent registered and uses the domain name in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Secondly, Complainant further argues that Respondent has engaged in bad faith registration and use through Respondent’s use of a privacy service to register the disputed domain name. Use of a privacy service suggests registration in bad faith and may be used as evidence of bad faith in addition to other evidence under Policy ¶ 4(a)(iii). See Phoenix Niesley-Lindgren Watt v. Contact Privacy Inc., Customer 0150049249, FA 1800231 (Forum Sept. 6. 2018) (“In a commercial context, using a WHOIS privacy service raises the rebuttable presumption of bad faith registration and use of the disputed domain name. An honest merchant in the marketplace does not generally try to conceal the merchant’s identity. Good faith requires honesty in fact. Respondent did nothing to rebut this presumption of bad faith. Therefore, the Panel will find bad faith registration and use for this reason.”). The plain text of the WHOIS information lists the Respondent as “Redacted for Privacy.” See Compl. Ex. B, Tab 2. It was not until Registrar verification that Respondent’s identity became known. See Registrar Verification Email. Therefore, the Panel finds that Respondent registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii).
Thirdly, Complainant argues that Respondent registered and uses the domain name in bad faith because Respondent uses the disputed domain name to engage in a phishing scheme. Use of a disputed domain name in furtherance of a phishing scheme constitutes bad faith under Policy ¶ 4(a)(iii). See Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA1506001625750 (Forum July 17, 2015) (“Respondent uses the <klabzuba-oilgas.com> domain to engage in phishing, which means Respondent registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii).”). Here, Complainant has attached screenshots of the disputed domain name’s resolving webpage, including mentions of what the Panel concludes are fraudulent investment services. See Compl. Ex. B, Tab. 2. Therefore, the Panel finds that Respondent registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii).
Fourthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the BILFINGER mark and in view of the conduct that Respondent has engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bilfingerinvestment.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown QC
Panelist
Dated: March 23, 2022
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page