Solera Holdings, LLC v Alberto Carrie, Solera Incorporation

WIPO Case No. D2024-1048

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Solera Holdings, LLC v. Alberto Carrie, Solera Incorporation

Case No. D2024-1048

1. The Parties

The Complainant is Solera Holdings, LLC, United States of America, represented by Pranger Law PC,

United States of America.

The Respondent is Alberto Carrie, Solera Incorporation, United States of America.

2. The Domain Name and Registrar

The disputed domain name <soleraincorporation.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 10, 2024.

On March 11, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 11, 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 (Withheld for Privacy ehf) and contact information in the Complaint. The Center sent an email communication to the Complainant on March 12, 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 March 19, 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 March 19, 2024. In accordance with the Rules,

paragraph 5, the due date for Response was April 8, 2024. The Respondent did not submit any response.

Accordingly, the Center notified the Respondent’s default on April 15, 2024.

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The Center appointed Michael A. Albert as the sole panelist in this matter on April 18, 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 has extensive common law rights in the SOLERA mark and owns the domain name

<solera.com>, which Complainant has used since at least as early as 2015 with one or more of

Complainant’s SOLERA Marks. Complainant owns multiple trademark registrations and applications for the

SOLERA and SOLERA-formative marks (“Complainant’s SOLERA Marks”) in various classes of services for

insurance and finance, including those shown in the chart below:

Trademark	Jurisdiction	Registration Date	Registration No.
SOLERA	United States of	September 27, 2016	5050145
America
SOLERA	United States of	October 22, 2019	5891504
America
SOLERA AUTO	United States of	January 2, 2024	7263445
FINANCE	America
5. Parties’ Contentions
A. Complainant

Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

Notably, Complainant contends that Respondent is using the disputed domain name, which is identical or

confusingly similar to Complainant’s mark, to perpetrate a fraudulent and illegal phishing scheme targeting

individuals whom Respondent falsely leads to believe are being offered employment by Complainant.

Respondent has no rights or legitimate interests in, nor a bona fide use of, the disputed domain name. On information and belief, Respondent has never used the disputed domain name to host any content

created by the Respondent, but rather it has only ever resolved to a “parked” domain purportedly generated

using a third-party service called “Sedo Domain Parking”. Moreover, Respondent has used fraudulent

information seemingly impersonating Complainant for purposes of registration of the disputed domain name.

Respondent’s use of the disputed domain name to send emails in a fraudulent and illegal phishing scheme is

prima facie evidence of bad faith.

B. Respondent

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

6. Discussion and Findings

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

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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.

Through its trademark registrations, 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 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 another term here, namely “incorporation”, 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 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
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 Respondent lacks rights or legitimate interests in the disputed domain name. 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 domain name, it is clear that Respondent sought to impersonate Complainant through the contact details used for registration of the disputed domain name, which even included a physical address from which Complainant operates. Such impersonation was further reinforced in the use of the disputed domain name for a fraudulent email scheme whereby Respondent impersonated an employee of Complainant.

Panels have held that the use of a domain name for illegal activity, in this case, phishing, 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.

In the present case, the Panel notes that Respondent appears to be using the disputed domain name to impersonate an employee of Complainant in a phishing scheme. Respondent used an email address associated with the disputed domain name to impersonate an employee of Complainant and sent a

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fraudulent job offer to an individual. Respondent, having failed to respond at all, has not denied this

assertion.

Panels have held that the use of a domain name for illegal activity – here, phishing – constitutes bad faith.

WIPO Overview 3.0, section 3.4. The registration of a domain name in furtherance of phishing scams supports a finding of bad faith registration and use. See BHP Billiton Innovation Pty Ltd. v. Domains By

Proxy LLC /Douglass Johnson, WIPO Case No. D2016-0364 “[T]he use of an email address associated with

the disputed domain name, to send a phishing email for the purposes of dishonest activity is in itself

evidence that the disputed domain name was registered and is being used in bad faith.”.

Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain

name constitutes bad faith under the Policy. Accordingly, the Panel finds that 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 <soleraincorporation.com> be transferred to the Complainant.

/Michael A. Albert/

Michael A. Albert

Sole Panelist
Date: May 2, 2024