Graphic Solutions Group, Inc. v Rob James

WIPO Case No. D2023-4336

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Graphic Solutions Group, Inc. v. Rob James

Case No. D2023-4336

1. The Parties

The Complainant is Graphic Solutions Group, Inc., United States of America, represented by Ray Law Firm,

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

The Respondent is Rob James, United States.

2. The Domain Name and Registrar

The disputed domain name <gogsgprint.com> is registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 18, 2023. On October 19, 2023, the Center transmitted by email to the Registrar a request for registrar verif ication in connection with the disputed domain name. On October 19, 2023, the Registrar transmitted by email to the Center its verif ication response disclosing registrant and contact information for the disputed domain name which dif fered f rom the named Respondent (PrivacyGuardian.org llc) and contact information in the

Complaint. The Center sent an email communication to the Complainant on October 20, 2023, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant f iled an amended Complaint on October 25, 2023.

The Center verif ied that the Complaint together with the amended Complaint satisf ied 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 notif ied the Respondent of the Complaint, and the proceedings commenced on November 1, 2023. In accordance with the Rules, paragraph 5, the due date for Response was November 21, 2023. The Respondent did not submit any response. Accordingly, the Center notif ied the Respondent’s default on December 1, 2023.

The Center appointed Nicolas Ulmer to serve as the sole panelist in this matter on December 11, 2023. The Panel f inds 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.

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4. Factual Background

The Complainant is a company based in the United States and involved in the sale and marketing of jet printers, scanners, and other of f ice equipment and materials.

The Complainant, is the owner of the United States service mark for GSG® word mark, Reg. No. 2,258,870 (registered on July 6, 1999,) and several other trademark registrations that include the term “GSG”. The Complainant’s website domain name is <gogsg.com>.

The disputed domain name was registered on October 11, 2023.

Little or nothing is known about the Respondent whom the initial Complaint did not identify due to a secrecy screen; the Respondent was subsequently identified by the Registrar in response to the request for verification as Rob James, apparently an individual residing in Wisconsin, United States. However, in the amended Complaint in this matter, the Complainant asserts that the address given for Rob James is a healthcare facility where no person with that name is employed; on information and belief, the Complainant submits that there is no Rob James at such address.

The disputed domain name does not currently resolve to an active site.

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.

In particular, the Complainant contends that its “GSG” service mark is distinctive, and has been continuously used by it since at least November 24, 1997, when it applied for the above-listed service mark, and that the disputed domain name is deliberately similar to and confusing with its service mark. The Complainant further maintains that the disputed domain name carries a risk of implied affiliation with the Complainant’s domain name.

As to the second and third elements of the Policy, the Complainant submits that the Respondent should be considered to have no rights or legitimate interests in the disputed domain name and that the disputed domain name has manifestly not been registered or used for any legitimate purpose. To the contrary, the Complainant submits arguments and evidence that the disputed domain name was used falsely to impersonate the Complainant by contacting its customers and consumers in a scheme to divert payments. Specifically, and centrally, the Complainant alleges and submits documentary proof that the Respondent, on the very day the disputed domain name was registered, began using the same to impersonate the Complainant, making use of the names of actual employees of the Complainant as purported signatories of the phoney emails concerning fund transfers.

The Complainant submits that “the Respondent has engaged in a pattern of deception and felonious conduct, for which the Complainant has provided more than sufficient evidence.”

The facts and arguments submitted by the Complainant are further discussed and evoked as appropriate in the findings below.

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6. Discussion and Findings
A. Identical or Confusingly Similar

The disputed domain name contains the entirety of the Complainant’s GSG service mark preceded by the word “go” and then followed by the word “print”. These words do not, on the facts of this case prevent the disputed domain name’s confusing similarity with the Complainant’s mark.

Furthermore, the evidence in this matter demonstrates that the Respondent did make specif ic use of the disputed domain name to take improper advantage of the disputed domain name being confusingly similar with the Complainant’s service mark. While this latter point goes mainly to bad faith registration and use, as discussed below, this is pertinent to the confusing similarity to be found here as it af f irms the Panel’s conclusion.

The Panel thus f inds the disputed domain name to be confusingly similar within the meaning of paragraph

4(a) (I) of the Policy

B. Rights or Legitimate Interests

The Complainant in a UDRP proceeding needs to establish at least a prima facie case showing that the Respondent has no rights or legitimate interests in respect of the disputed domain name. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. Once such a prima facie case is made, the burden of production shifts to the Respondent to prove that it has rights or legitimate interests in the disputed domain name. See also, Meizu Technology Co., Ltd v. “Osama bin laden”, WIPO Case No. DCO2014-0002; and H & M Hennes & Mauritz v. Simon Maufe, Akinsaya Odunayo Emmanuel and Nelson Rivaldo, WIPO Case No. D2014-0225.

In the present case, the Complainant has made clear that it has not licensed, authorised, or otherwise permitted the Respondent to use its mark in a domain name or in any other manner. Indeed, the Complainant has strongly asserted that, far from having legitimate interests or rights in the disputed domain name, the Respondent has used it for illegitimate and illegal purposes.

There is also no evidence before the Panel to suggest that the Respondent is commonly known by the disputed domain name or any other evidence or indicia suggesting that the Respondent has any rights in the disputed domain name.

The Respondent, having failed to answer the Complaint, did not rebut the Complainant’s prima facie case, and the Panel f inds that the Complainant has accordingly met its burden under Paragraph 4 (a) (ii) of the Policy.

C. Registration and Use in Bad Faith

The Respondent, almost immediately after the registration of the disputed domain name made use of it to impersonate the Complainant in an apparent scam directed at customers and potential customers of the Complainant. As pointed out above, the use of the word “print” in the disputed domain name is not

serendipitous and can here only be considered to be part of a plan to create confusion with the bad faith and for a bad faith purpose.

The bad faith use of the disputed domain name is here amply demonstrated by evidence of how it was used in phoney emails to third parties to encourage them to pay debts due to the Complainant under the directions of the Respondent. This evidence of bad faith use is further supported by affidavits from four of the

Complainant’s employees either named in the scam emails or with personal knowledge of them. The faith.

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The Complainant has, accordingly proved bad faith registration and use as required by 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 <gogsgprint.com> be transferred to the Complainant.

/Nicolas Ulmer/
Nicolas Ulmer
Sole Panelist
Date: December 21, 2023