WIPO: UDRP deals with confusingly similar domain names, not email addresses

Background

The Complainant was VFS Global Services PLC, a British company providing services relating to the filing and processing of visa applications in numerous countries worldwide since 2001.  The Complainant owned various trade marks for VFS or VFS GLOBAL in numerous jurisdictions including India, New Zealand, Mexico and the United States of America. 

The Respondent was an individual based in the United States of America (according to the underlying WhoIs information).

The Domain Name was registered on 30 March 2022.  Although it did not resolve to an active website, the Respondent had been using the Domain Name to send emails, having created the email address: “[email protected]”.

A person acting on behalf of the Complainant had contacted the Respondent for information about visas in Canada using the email address and was directed to a website to make a payment of INR 15,500 for a visa. The landing page of this website presented itself as being a payment to one of the Complainant’s group companies.  However, the Complainant underlined that this website was not its website and nor was it authorised to take payments on the Complainant’s behalf.  The Respondent did not file any response.

In order to prevail, a complainant must demonstrate, on the balance of probabilities, that it has satisfied the requirements of paragraph 4(a) of the UDRP:

(i)         The domain name registered by the respondent is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; and

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

(iii)        The disputed domain name was registered and is being used in bad faith.

Likelihood of confusion

As far as the first limb is concerned, a complainant must first demonstrate that it has rights in a trade mark and, secondly, that the disputed domain name is identical or confusingly similar to such trade mark.

The Panel found that the Complainant had proved ownership of multiple trade marks in VFS and VFS GLOBAL.  However, with regard to confusing similarity, the Complainant contended that the Respondent’s email address, “[email protected]”, created confusion and made it appear as though the Domain Name may be related to the Complainant.  The Complainant also argued that the Respondent had used the Domain Name to create a fraudulent email address.

In this regard, although the Panel accepted that the email address was likely to create confusion with the Complainant’s trade marks, it stressed that the UDRP was concerned with “the abusive registration of domain names, not email addresses”.  The Panel noted that the Domain Name visasdept.com was required to be identical or at least confusingly similar to the Complainant’s trade marks, VFS or VFS GLOBAL, in order to establish the first requirement under the UDRP.  The Panel further observed that, disregarding the “.com” gTLD, the expression “visasdept” was not similar enough to the Complainant’s trade marks. 

The Panel underlined that the UDRP was limited to resolving disputes about the registration of abusive domain names and therefore found that the Complainant had failed to establish that the disputed Domain Name was confusingly similar to the Complainant’s trade mark rights.

As the Complainant had failed to demonstrate that it had satisfied the first requirement under the UDRP, the Panel denied the transfer of the disputed Domain Name “with very considerable reluctance” without examining the other requirements.

Comment

The present case underlines that the UDRP is limited to resolving disputes about abusive domain names and not email addresses per se. While an email address created for fraudulent purposes may be persuasive evidence to demonstrate that a respondent is targeting a complainant’s trade marks, the disputed domain name itself has to be identical or confusingly similar to such trade marks in order to obtain a transfer order under the UDRP.

Brand owners confronted with such a situation, where a confusing email address has been used for malicious activities, but the domain name used to create it is not confusingly similar to their trade marks, may consider bringing this to the attention of the relevant domain name registrar, taking care to attach conclusive evidence of criminality.  In certain circumstances, in particular when presented with clear proof of fraudulent behaviour, registrars may feel that it is appropriate to suspend the domain name at issue.  This will prevent it from being used, both to send emails and/or to point to a website.

The decision is available here.

Authored by the Anchovy News team.