Simpson Strong-Tie Company Inc. v Name Redacted

WIPO Case No. D2024-1833

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Simpson Strong-Tie Company Inc. v. Name Redacted

Case No. D2024-1833

1. The Parties

Complainant is Simpson Strong-Tie Company Inc., United States of America (“United States”), represented by Shartsis Friese LLP, United States.

Respondent is Name Redacted[1].

[1] Respondent appears to have used the name of a Complainant’s employee when registering the disputed domain name. In light of the

2. The Domain Name and Registrar

The disputed domain name <strongtiellc.com> (the “Disputed Domain Name”) is registered with Hostinger

Operations, UAB (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 30, 2024. On May 1, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 2, 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 (Registrant of strongtiellc.com) and contact information in the Complaint. The Center sent an email communication to Complainant on May 3, 2024, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on May 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”).

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In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint,
and the proceedings commenced on May 13, 2024. In accordance with the Rules, paragraph 5, the due
date for Response was June 2, 2024. Respondent did not submit any response. Accordingly, the Center

notified Respondent’s default on June 4, 2024.

The Center appointed Colin T. O'Brien as the sole panelist in this matter on June 11, 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

Complainant is one of the largest suppliers of structural building products in the world. Since the 1980s, Complainant has used its house mark SIMPSON STRONG-TIE in connection with structural connectors, fasteners, power tools, epoxies, and related products and services. Complainant owns multiple trademark

registrations for SIMPSON STRONG-TIE, including:

United States Registration Number 801188 for STRONG-TIE, registered on January 4, 1966, in Classes 6 and 19.

United States Registration Number 3203436 for SIMPSON STRONG-TIE (design mark), registered on

January 30, 2007, in Classes 6 and 19.

Complainant’s primary website is located at “

On April 26, 2024, one of Complainant’s customers reported that they had been contacted via email by
someone impersonating actual employees of Complainant. The fraudulent email purported to come from
“[…]@strongtiellc.com”, who works in Complainant’s billing department, and references Complainant’s CFO.
The fraudulent email requests follow up on payments supposedly owed to Complainant. The footers use
Complainant’s employee’s name and title, with the SIMPSON STRONG-TIE house mark, and list

Complainant’s employee’s real email address, which is “[…]@strongtie.com”.

The Disputed Domain Name was registered on April 22, 2024.

5. Parties’ Contentions

A. Complainant

and Complainant’s primary brand, which are protected by multiple registered trademarks. The Disputed Domain Name itself shares the last two words in Complainant’s business name and many of Complainant’s federally registered marks. The Disputed Domain Name is nearly identical to Complainant’s primary website. The only difference is that it adds “LLC,” which is a descriptive term commonly understood to mean “Limited Liability Company”. The public and Complainant’s customers could easily understand the Disputed Domain	The Disputed Domain Name is confusingly similar to Complainant’s company name, Complainant’s website, house mark, the Disputed Domain Name is confusingly similar.
Respondent has ever used the STRONG-TIE name or has offered goods or services in connection with the Respondent has no rights or legitimate interests in the Disputed Domain Name. There is no evidence by the Disputed Domain Name.
Respondent is using the Disputed Domain Name to send fraudulent phishing emails to Complainant’s customers to trick them into making payments to Respondent. This conduct shows Respondent is

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intentionally mimicking Complainant and its employees in an attempt to secure payments or financial
information from Complainant’s customers.

The Disputed Domain Name is not the only improper domain name that Respondent is using to fraudulently pose as Complainant and Complainant’s employees in an attempt to solicit payments from Complainant’s customers. Earlier in April 2024, Complainant’s customers were similarly targeted by emails sent from the <strongtieinc.com> domain name.

The registrant revealed by the Registrar is listed as a Complainant’s employee, and uses Complainant’s actual address. This conduct shows Respondent is intentionally mimicking Complainant and its employees in an attempt to secure payments or financial information from Complainant’s customers.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has demonstrated it owns registered trademark rights in the STRONG-TIE mark. The
STRONG-TIE mark is clearly recognizable in the Disputed Domain Name, and the addition of the term “LLC”
does not prevent a finding of confusing similarity. See WIPO Overview of WIPO Panel Views on Selected

UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8.

Accordingly, the Disputed Domain Name is confusingly similar to a mark in which Complainant has rights.

B. Rights or Legitimate Interests

Complainant has presented a prima facie case that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name and has not been commonly known by the Disputed Domain Name. The fact that Respondent obtained the Disputed Domain Name 60 years after Complainant had begun using its STRONG-TIE mark indicates that Respondent sought to piggyback on the mark’s reputation for illegitimate purposes. Further, the nature of the Disputed Domain Name carries a risk of implied affiliation with Complainant, which is contrary to the fact and cannot be considered fair use. WIPO Overview 3.0, section 2.5.1.

After a complainant has made a prima facie case, the burden of production shifts to a respondent to present evidence demonstrating rights or legitimate interests in the domain name. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.

Here, Respondent has provided no evidence of any rights or legitimate interests in the Disputed Domain
Name.

In the absence of any evidence rebutting Complainant’s prima facie case indicating Respondent’s lack of rights or legitimate interests in respect of the Disputed Domain Name, the Panel finds that Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Disputed Domain Name was registered years after Complainant first used its STRONG-TIE mark. The
evidence provided by Complainant makes it clear that Respondent undoubtedly knew of Complainant’s
STRONG-TIE mark and knew that it had no rights or legitimate interests in the Disputed Domain Name.

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There is no benign reason for Respondent to have registered the Disputed Domain Name that is confusingly similar to Complainant’s mark.

Currently, the Disputed Domain Name does not resolve to an active website, but this is immaterial and does not prevent a finding of bad faith as Complainant has provided evidence that Respondent has sent an email to a customer attempting to impersonate Complainant to engage in some phishing attacks. See section 3.4 of the WIPO Overview 3.0.

The Panel finds that the only plausible basis for registering and using the Disputed Domain Name has been in bad faith.

Accordingly, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith.

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 <strongtiellc.com> be transferred to Complainant.

/Colin T. O'Brien/
Colin T. O'Brien
Sole Panelist
Date: June 25, 2024

potential identity theft, the Panel orders that Respondent’s name be redacted from this decision. The Panel has attached as Annex 1 to
this decision an instruction to the Registrar regarding transfer of the disputed domain name, which includes the name of Respondent.
The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated
Annex 1 to this decision should not be published due to the exceptional circumstances of this case. See Banco Bradesco S.A. v. FAST
12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788.