Championx USA Inc. v Alejandro M

WIPO Case No. D2024-0951

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Championx USA Inc. v. Alejandro M

Case No. D2024-0951

1. The Parties

The Complainant is Championx USA Inc., United States of America, represented by TechLaw Ventures,

PLLC, United States of America (“United States”).

The Respondent is Alejandro M, Mexico.

2. The Domain Name and Registrar

The disputed domain name <championxcolombia.com> is registered with Neubox Internet S.A. de C.V. (the

“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 4, 2024. On March 5, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 6, 2024, 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 (Domain Admin Privacy Protect, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on March 7, 2024, 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 8, 2024.

On March 7, 2024, the Center informed the parties in Spanish and English, that the language of the registration agreement for the disputed domain name is Spanish. On March 8, 2024, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not submit any comment on the Complainant’s submission.

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”).

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In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the
Complaint, and the proceedings commenced on March 15, 2024. In accordance with the Rules, paragraph
5, the due date for Response was April 4, 2024. The Respondent did not submit any response. Accordingly,

the Center notified the Respondent’s default on April 9, 2024.

The Center appointed Gonçalo M. C. Da Cunha Ferreira as the sole panelist in this matter on April 17, compliance with the Rules, paragraph 7.

2024. The Panel finds that it was properly constituted. The Panel has submitted the Statement of
4. Factual Background

The Complainant is a global corporation leader in chemistry solutions and highly engineered equipment and technologies that help companies drill for and produce oil and gas and is listed on The Nasdaq Stock Market LLC under the ticker symbol CHX. ChampionX Corporation operates through a number of subsidiaries,

including Complainant, ChampionX USA.

The Complainant is the owner of inter alia the following trademark registration:

- United States Trademark Registration No. 7043666, registered on May 2, 2023

- International Trademark Registration 1650226A, registered on May 26, 2021

The Complainant also owns the domain name “championx.com”.

The disputed domain name was registered on February 27, 2024. The disputed domain name was used in connection with a fraudulent scheme.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

Notably, the Complainant contends that:

1.        the disputed domain name is clearly confusingly similar to Complainant’s CHAMPIONX trademark,

which is registered in Colombia.

2.        the disputed domain name is Complainant’s CHAMPIONX trademark with the geographic term

“Colombia” added thereto.

3.        the addition of a geographic term to a trademark in a domain name does not reduce the confusing

similarity.
4. the Respondent lacks any rights or legitimate interests in the CHAMPIONX mark as Respondent is not
an authorized dealer of goods or services in connection with which the mark is used, nor are licensed to use
such trademark.

5.        the Respondent is not making a legitimate noncommercial or fair use of the domain name, without

intent for commercial gain, nor is Respondent commonly known by this domain name.

6.        there is no evidence of the Respondent’s use of, or demonstrable preparations to use, the disputed

domain name or a name corresponding to the disputed domain name in connection with a bona fide offering
of goods or services.

7. the Respondent used the disputed domain name as an email address appearing on fake invoices that

appear to be from Complainant and were sent to a customer of Complainant’s as a part of a fraudulent
scheme.

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8.        the disputed domain name appears to be a country specific domain name that customers would

assume to be used by Complainant for its employees in Colombia.

9.        The Respondent lacks any rights or legitimate interests in the disputed domain name and has used

this disputed domain name as a part of a fraudulent scheme involving misrepresentation of identity.

10.      the Respondent registered and used the disputed domain name in bad faith.

B. Respondent

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

6. Discussion and Findings

Language of the Proceeding

The language of the Registration Agreement for the disputed domain name is Spanish. Pursuant to the Rules, paragraph 11(a), in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement.

The Complaint was filed in English. The Complainant requested that the language of the proceeding be English for several reasons, including the fact that the first identifying information provided by the Registrar was Privacy Protect, LLC, a limited liability company with a United States address. The Respondent utilized such services to provide this United States address as its publicly available identifying information, and a copy of the Privacy Protect, LLC’s Acceptable Usage Policy is in the English language and sets forth that Privacy Protect, LLC “a USA corporation, is in the business of provisioning domain name registrants/owners with WhoIs privacy services to protect their personal contact details”. For the Complainant this evidence that the Respondent entered into this agreement, which is in the English language, with Privacy Protect, LLC to use its services in connection with the registration of the disputed domain name.

The Respondent did not make any specific submissions with respect to the language of the proceeding.

In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.5.1).

Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English.

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

The entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

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Although the addition of the term “colombia” may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult 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 (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

Panels have held that the use of a domain name for illegal activity unauthorized account access or hacking, namely the use by the Respondent of the disputed domain name as an email address appearing on fake invoices that appear to be from Complainant and were sent to a customer of Complainant’s as a part of a fraudulent scheme, can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

In the present case, the Panel notes that the Respondent used the disputed domain name as an email
address appearing on fake invoices that appear to be from Complainant and were sent to a customer of

Complainant’s as a part of a fraudulent scheme.

Panels have held that the use of a domain name for illegal activity as the use by the Respondent of the and use of the disputed domain name constitutes bad faith under the Policy.

disputed domain name as an email address appearing on fake invoices that appear to be from Complainant
and were sent to a customer of Complainant’s as a part of a fraudulent constitutes bad faith.
The Panel finds that the Complainant has established the third element of the Policy.

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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 <championxcolombia.com> be transferred to the Complainant.

/Gonçalo M. C. Da Cunha Ferreira/
Gonçalo M. C. Da Cunha Ferreira
Sole Panelist
Date: May 1, 2024