Keller Group plc v jinunbunru

WIPO Case No. D2024-3608

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Keller Group plc v. jinunbunru

Case No. D2024-3608

1. The Parties

The Complainant is Keller Group plc, United Kingdom, represented by Barker Brettell LLP, United Kingdom.

The Respondent is jinunbunru, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <keller-grp.com> (the “Disputed Domain Name”) is registered with

NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 5,

2024. On September 6, 2024, the Center transmitted by email to the Registrar a request for registrar

verification in connection with the Disputed Domain Name. On September 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 (not identified) and from the Respondent

identified by reference to Annex LCK1 to the Complaint (Redacted for Privacy), and contact information in

the Complaint. The Center sent an email communication to the Complainant on September 10, 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 September 11,

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 September 17, 2024. In accordance with the Rules,

paragraph 5, the due date for Response was October 7, 2024. The Respondent did not submit any

response. Accordingly, the Center notified the Respondent’s default on October 8, 2024.

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The Center appointed Nicholas Weston as the sole panelist in this matter on October 14, 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.

The language of the proceeding is the language of the registration agreement, English.

4. Factual Background

The Complainant is a United Kingdom company established in 1860 that operates a ground engineering

contractor business with operations in more than 40 countries. The Complainant holds registrations for the

trademark KELLER in various countries including United Kingdom Registration No. 3190599 for the mark

KELLER, registered on March 17, 2017 and European Union trademark registration number 1413014 for the

KELLER trademark, registered on July 18, 2017.

The Complainant owns the domain name <keller.com> which hosts a website operated by the Complainant.

The Disputed Domain Name was registered on July 4, 2024. The Disputed Domain Name redirects to the

Complainant’s website, and has been used to send emails purporting to be from an employee of the

Complainant.

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 cites a number of trademark registrations for the mark KELLER, in several

countries, as prima facie evidence of ownership.

The Complainant submits that it has produced evidence its rights in the mark KELLER predates the

Respondent’s registration of the Disputed Domain Name. The Complainant submits that the Disputed

Domain Name is confusingly similar to its trademark, for the reason that the Disputed Domain Name

incorporates in its entirety the KELLER trademark, and that the confusing similarity is not removed by the

letters “grp”, which it submits “is a common abbreviation of the word ‘group’, or the generic Top-Level

Domain (‘gTLD’) “.com”.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the

Disputed Domain Name because, “[t]he Respondent did not have the permission of the Complainant to

register the [Disputed Domain Name] which contains their registered trade mark” and none of the

circumstances set out in paragraph 4(c) of the Policy apply. The Complainant also contends that the

Disputed Domain Name was used to send “fraudulent” emails “directed to the Complainant’s suppliers

containing wetransfer links encouraging them to download suspicious and corrupt html files” and that such

use should not be considered as a bona fide offering of goods or services.

Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and

currently is, in bad faith, contrary to the Policy and the Rules having regard to the prior use and fame of the

Complainants’ trademarks, and, it submits, “the Respondent has used the domain as an instrument of fraud

to create an email address, [redacted], to impersonate an employee of the Complainant and disrupt its

business. It is our understanding that to create an email address ending in keller-grp.com, the user of that

email address would need to own the domain

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B. Respondent

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

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant has the burden of proving the following:

(i) that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which

the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

(iii) that the Disputed Domain Name has been registered and is being used in bad faith.

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 3.0, section 1.7.

Based on the available record, the Panel finds 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 Complainant has

produced sufficient evidence to demonstrate that it has registered trademark rights in the mark KELLER in

numerous countries.

Turning to whether the Disputed Domain Name is identical or confusingly similar to the KELLER trademark,

the Panel observes that the Disputed Domain Name is comprised of: (a) an exact reproduction of the

Complainant’s trademark KELLER; (b) followed by a hyphen; (c) followed by the letters “grp”; (d) followed

by the gTLD “.com”.

It is well established that the gTLD used as part of a domain name is generally disregarded under the first

element confusing similarity test. WIPO Overview 3.0, section 1.11.1. The relevant comparison to be made

is with the second-level portion of each of the Disputed Domain Name, specifically: “keller-grp”.

The Panel finds 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.

Although the addition of the hyphen and the letters “grp” 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 Disputed 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

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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 Disputed 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.

The Panel finds that the combined term “keller-grp” has no ordinary meaning other than in connection with

the Complainant. Furthermore, there is no indication that the Respondent was commonly known by the

terms “keller-grp” prior to registration of the Disputed Domain Name and the Complainant also contends that

it has not licensed, permitted, or authorized the Respondent to use the trademark KELLER. The Panel also

notes that the composition of the Disputed Domain Name carries a risk of implied affiliation

(see WIPO Overview 3.0, section 2.5.1).

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.

The Panel notes the evidence that the Disputed Domain Name redirects to the Complainant’s website and

was used to send email correspondence that attempted to distribute malware and correspond with a number

of the Complainant’s suppliers supports the Complainant’s submission that this does not represent a bona

fide offering of goods or services, or a legitimate noncommercial or fair use, given the substantial reputation

and goodwill of the Complainant’s mark or capacity to otherwise mislead Internet users.

Panels have held that the use of a Disputed Domain Name for illegal activity here, impersonation of the

Complainant, distributing malware for the purpose of phishing, impersonation and passing off, 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.

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.

In the present case, the Panel finds that the evidence in the case shows the Respondent registered and has

used the Disputed Domain Name in bad faith.

On the issue of registration, given the composition of the Disputed Domain Name, and the well-known

nature of the Complainant’s trademark, the Panel is satisfied that the Respondent targeted the

Complainant’s when it registered the Disputed Domain Name (see Keller Group plc v. Alan Cummins,

WIPO Case No. D2023-0775 (“The Complainant’s trademark has been registered and used for many

decades and is a renowned trademark”); Keller Group plc v. lawrenceanthony, lawrenceanthony, WIPO

Case No. D2023-4151 (“The Complainant’s KELLER mark has been recognised as being well known by

prior UDRP panels”).

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The Complainant’s mark is so widely known, the Panel is prepared to infer from its combination with the

hyphen and the term “grp”, a common abbreviation of the word “group”, that the Respondent knew, or should

have known, that its registration would be identical or confusingly similar to the Complainant’s trademark

(see WIPO Overview 3.0, section 3.2.2). In this case the Complainant’s mark was plainly targeted by the

Respondent.

On the issue of use, the Complainant’s evidence is that the Disputed Domain Name redirects to the

Complainant’s webpage and that it has been used to send emails with links designed to spread malware, or

for the purpose of phishing or for other unlawful activities.

Panels have held that the use of a domain name for illegal activity here, claimed distributing malware,

impersonation/passing off, or other types of fraud, constitutes bad faith. WIPO Overview 3.0, section 3.4.

Having reviewed the record, the Panel finds the Respondent’s registration and use of the Disputed Domain

Name constitutes bad faith under the Policy.

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 <keller-grp.com> be transferred to the Complainant.

/Nicholas Weston/

Nicholas Weston

Sole Panelist

Date: October 23, 2024