JSP Limited v James Lee, Billi

WIPO Case No. DCO2024-0006

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

JSP Limited v. James Lee, Billi

Case No. DCO2024-0006

1. The Parties

The Complainant is JSP Limited, United Kingdom, represented by Wynne-Jones IP Limited, United Kingdom.

The Respondent is James Lee, Billi, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <jsp-uk.co> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 26, 2024.
On January 26, 2024, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On January 26, 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 (Unknown (details redacted for privacy)) and contact information
in the Complaint. The Center sent an email communication to the Complainant on January 30, 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 January 31,

2024.

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”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the
Complaint, and the proceedings commenced on February 2, 2024. In accordance with the Rules, paragraph
5, the due date for Response was February 22, 2024. The Respondent did not submit any response.

Accordingly, the Center notified the Respondent’s default on February 27, 2024.

The Center appointed Tobias Malte Müller as the sole panelist in this matter on March 5, 2024.
The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and

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Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the

Rules, paragraph 7.

4. Factual Background

According to the Complainant’s undisputed allegations, the Complainant is a private limited company located in the United Kingdom founded in 1964 with a current presence and distribution in over 100 countries. It is a manufacturer of personal protective equipment, battery pack for personal protective equipment etc.

The Complaint is based amongst others on International Trademark Registration No. 1272009 for JSP registered on August 7, 2015, for services in classes 35 and 39, and protection granted amongst others in the United States, where the Respondent appears to be located.

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

It does not resolve to any active page but is rather used for creating and using email addresses to engage in a complex phishing, impersonation and hacking scheme, and consequently for fraudulent purposes whereby the Respondent imitates the Complainant’s business and its employees. As an example, the Complainant

provided evidence of a fraudulent email sent on January 8, 2024, from an address ending with the disputed domain name “[...]@jsp-uk.co” to contact a supplier about the status of an existing order, whose details had been obtained as a result of a hack. The email exchange seems to be an attempt to impersonate one of the Complainant’s employees involved in legitimate correspondence between the Complainant and its supplier.

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 the disputed domain name is confusingly similar to the hyphen and the term “uk” commonly understood to be a descriptive abbreviation for the “United Kingdom”, as well as the addition of the “.co” country code top level domain (“ccTLD”) assigned to Colombia do not prevent a finding of confusing similarity.

The Complainant, secondly, submits that the Respondent has no rights or legitimate interests in the disputed domain name. In particular, the Complainant asserts that the disputed domain name does not resolve to any active page and is used for “email spoofing”, namely by creating and using email addresses for fraudulent

purposes whereby the Respondent imitates a legitimate source, i.e., the Complainant’s business and its
employees for commercial gain. Such use does not represent a bona fide offering of goods and services.

Thirdly, the Complainant contends that the Respondent registered and uses the disputed domain name in bad faith. In the Complainant’s view, its trademarks are well-known, so it shall be deemed that the registration of the disputed domain name has been done per se in bad faith. Furthermore, the Complainant provides evidence demonstrating that the Respondent is using the disputed domain name to engage in phishing, impersonation, and hacking.

B. Respondent

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

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6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and 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 the Complainant to prove each of the following three elements in order to obtain an order that the disputed domain name should be transferred or cancelled:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the

Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

The Panel is satisfied that the registrant of record for the disputed domain name is the Respondent and will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied.

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, i.e., International Trademark Registration No. 1272009 for JSP registered on August 7, 2015, for services in classes 35 and 39, and protection granted amongst others in the United States, where the Respondent

appears to be located; WIPO Overview 3.0, section 1.2.1.

While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a
trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the
domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing. In
the case at hand, the entirety of the mark JSP 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.

Although the addition of other terms, here “-uk”, may bear on assessment of the second and third elements, the Panel finds the addition of such elements 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

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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.

First, it results from the Complainant’s uncontested evidence that the disputed domain name is used for creating and using email addresses to engage in a complex phishing, impersonation, and hacking scheme, and consequently for fraudulent purposes whereby the Respondent imitates the Complainant’s business and its employees. As an example, the Complainant provided evidence of a fraudulent email sent on January 8, 2024, from an email address ending with the disputed domain name “[...]@jsp-uk.co” to contact a supplier about the status of an existing order, whose details had been obtained as a result of a hack. The email exchange seems to be an attempt to impersonate one of the existing Complainant’s employees involved in legitimate correspondence between the Complainant and its supplier. The Panel considers this email-activity to falsely purporting to be the Complainant who makes financial investment offers to consumers, and therefore to be illegal.

Panels have categorically held that the use of a domain name for such illegal activity, as described in the paragraph above, can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1. In any case, the Panel holds that such use cannot be qualified as a bona fide offering of goods or services in accordance with paragraph 4(c)(i) of the Policy, since such use capitalizes on the reputation and goodwill of the Complainant’s trademarks and is likely to mislead Internet users (see, e.g., TELUS Corporation v. Fortefusion Fortefusion, Wordcounts, WIPO Case No. D2021-0787).

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.

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

As explained above, it results from the Complainant’s documented allegations that the disputed domain name is used for creating and using email addresses to engage in a complex phishing, impersonation, and hacking scheme.

Panels have categorically held that the use of a domain name for such illegal activity, constitutes bad faith, and use of the disputed domain name constitutes bad faith under the Policy.

The finding of bad faith registration and use is supported by the following further circumstances resulting from the case file:

(i) the Respondent originally hiding its identity behind a privacy shield;
(ii) the Respondent’s failure to provide any evidence of actual or contemplated good faith use;
(iii) the implausibility of any good faith use to which the disputed domain name may be put; and.
(iv) the fact that the details disclosed for the Respondent by the Registrar were inaccurate, noting the mail
courier service’s inability to deliver the Center’s written communications to the address provided.

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The Panel finds that the Complainant has established the third element 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 <jsp-uk.co> be transferred to the Complainant.

/Tobias Malte Müller/
Tobias Malte Müller
Sole Panelist
Date: March 19, 2024