Hilldun Corporation v Vincent PENARD

WIPO Case No. D2024-2798

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Hilldun Corporation v. Vincent PENARD

Case No. D2024-2798

1. The Parties

1.1 The Complainant is Hilldun Corporation, United States of America (“United States”), represented by Otterbourg P.C., United States.

1.2 The Respondent is Vincent PENARD, France.

2. The Domain Name and Registrar

2.1 The disputed domain name <hilidun.com> (the “Domain Name”) is registered with Wild West Domains, LLC (the “Registrar”).

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 9,

2024. At that time, publicly available WhoIs details for the Domain Name identified the registrant as Registrar transmitted by email to the Center its verification response disclosing the underlying registrant details in respect of Domain Name. The Center sent an email to the Complainant on July 11, 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 amendment to the Complaint on the same date.
“Registration Private, Domains By Proxy, LLC”. On July 10, 2024, the Center transmitted by email to the

3.2 The Center verified that the Complaint together with the amendment to the 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”).

3.3 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the

Complaint, and the proceedings commenced on July 12, 2024. In accordance with the Rules, paragraph 5, the due date for Response was August 1, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 2, 2024.

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3.4 The Center appointed Matthew S. Harris as the sole panelist in this matter on August 6, 2024. 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

4.1 The Complainant is a financing company based in New York, United States and has been active in the

apparel industry since 1958. It provides traditional factoring services (credit and collection) and advances
(loans) against accounts receivable, inventory, and orders.

4.2 The Complainant is also the owner of United States Registration No. 7,061,415 in class 36 registered

on May 23, 2023, and claiming a first use in commerce in 2012. The mark consists of the letter “H” above the word “HILLDUN”, all in stylised lettering. It also uses the domain name <hilldun.com> in respect of its business.

4.3 The Domain Name was registered on June 25, 2024. The Respondent has used the Domain Name to impersonate the Complainant and its employees. In this respect, from the date of registration of the Domain Name, it has been used as part of the email address of someone purporting to be an employee of the

Complainant requesting certain information from one of the Complainant’s customers in the United States.
The Complainant has confirmed that employee neither sent nor authorised the sending of these emails.

4.4 Details provided in the registration of the Domain Name, but otherwise unconfirmed, suggest that the Respondent is an individual based in France.

5. Parties’ Contentions

A. Complainant

5.1 The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the Domain Name.

5.2 The Complainant contends so far as trade mark rights are concerned, that in addition to the United States registered trade mark identified above, it is also the owner of common law trade mark rights in the term HILLDUN and claims that those rights were recognised in Hilldun Corporation v. Domain Administrator,

WIPO Case No. DCO2023-0042. It claims that the Domain Name is “virtually identical to Hilldun’s name”. It also asserts that the use made of the Domain Name involves impersonation and fraud and that this cannot confer rights or legitimate interests and that such use demonstrates registration and use of the Domain Name in bad faith.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

6.1 It is generally 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 trade mark and the Domain Name. WIPO Overview of WIPO Panel
Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

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6.2 The Panel finds the Complainant has shown rights in respect of a registered trade mark of which the

term “Hilldun” is a significant part. The Panel also finds that the term Hilldun”, and therefore that mark, is
recognisable within the Domain Name. The reason for this is that the Domain Name involves a combination
of the text “Hilidun” with the generic Top-Level Domain (“gTLD”) “.com”. The only difference between
“Hilldun” and “Hilidun” is that the letter “l” has been replaced by the letter “i”. That substitution is likely to go
unnoticed by many persons that encounter the Domain Name. The Panel is also satisfied, given the use that
has been made of the Domain Name, that the Respondent has registered and used the Domain Name in the
hope and expectation that it would not be so noticed. Accordingly, the Domain name is confusingly similar to
the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.9.

6.3 The Panel also accepts that it is likely that the Complainant also holds unregistered trade mark rights in the term “Hilldun”, in light of the fact that the Complainant has been in business since 1958 (presumably using this name, notwithstanding the claimed first use in commerce of the registered trade mark) and the

finding of the Panel in Hilldun Corporation v. Domain Administrator, WIPO Case No. DCO2023-0042. The
difficulty here is that notwithstanding the finding in that case, it is for the Complainant independently to
evidence those rights in the current proceedings (see WIPO Overview 3.0, section 1.3) and the evidence
filed in support of that contention in these proceedings is sparce. However, given the Panel’s conclusions in

respect of the Complainant’s registered trade mark, it is not necessary to consider this issue further.

6.4 Accordingly, the first element of the Policy has been established.

B. Rights or Legitimate Interests and Registered and Used in Bad Faith

6.5 It is usual for panels under the Policy to consider the issues of rights or legitimate interests and

registration and use in bad faith in turn. However, in this case it is more convenient to consider those issues

together. WIPO Overview 3.0, section 2.15.

6.6 The Panel accepts that the Domain Name has been deliberately registered in order to falsely

impersonate the Complainant and at least one of its employees, and that this is most likely to be for some of fraud.
form of financial gain. Exactly what is going on here and how this fraud operates is a little hard to follow. For
example, the Complainant in support of its allegations exhibits and appears to rely upon emails that have
dates that pre-date the registration of the Domain Name and which on their face appear to come from email
addresses that use the <hilldun.com> domain name. Presumably, they did not come from such email
addresses, but this is not addressed or explained. However, the Complainant has provided later emails that
are using the Domain Name, and which falsely purport to be coming from an employee of the Complainant.

These emails also seek personal information in order to address multiple payments of an invoice. The

6.7 There is obviously no right or legitimate interest in holding a domain name for the purpose of

WIPO Overview 3.0

furtherance of a fraud through impersonation (see section 2.13 of the ), and the fact that registration and use of a domain name.

a domain name is or has been used for such a purpose is evidence that no such right or legitimate interest
exists. Further, the registration and use of a domain name for such a purpose involves registration and use
in bad faith (see section 3.4 of the WIPO Overview 3.0). Arguably such activities fall with the scope of the
example circumstances evidencing bad faith registration set out in paragraph 4(b)(iv) of the Policy.

6.8 In the circumstances, the Panel finds that the second and third elements of the Policy have been

established.

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7. Decision

7.1 For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <hilidun.com> be transferred to the Complainant.

/Matthew S. Harris/
Matthew S. Harris
Sole Panelist
Date: August 7, 2024