Wärtsilä Technology Oy Ab v ANCS Spares (Denmark), Wärtsilä

WIPO Case No. D2025-0041

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Wärtsilä Technology Oy Ab v. ANCS Spares (Denmark), Wärtsilä

Case No. D2025-0041

1. The Parties

The Complainant is Wärtsilä Technology Oy Ab, Finland, represented by SafeNames Ltd., United Kingdom.

The Respondent is ANCS Spares (Denmark), Wärtsilä, United States of America.

2. The Domain Name and Registrar

The disputed domain name <wartsilacom.com> is registered with Squarespace Domains II LLC (the

“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 7, 2025. On January 7, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 7, 2025, 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 (Redacted for Privacy) and contact information in the Complaint. The Center sent an email communication to the Complainant on January 8, 2025, 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 9, 2025.

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 January 10, 2025. In accordance with the Rules, paragraph
5, the due date for Response was January 30, 2025. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on January 31, 2025.

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The Center appointed Moonchul Chang as the sole panelist in this matter on February 6, 2025. 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

The Complainant is a Finnish corporation which was established in 1834 and currently operates in the field of smart technologies and complete lifecycle solutions for the marine and energy markets. As of 2023, the Complainant had net sales of EUR 6 billion with over 17,000 employees. The Complainant has a strong international presence with operations in over 280 locations across 79 countries.

The Complainant is the owner of WÄRTSILÄ or WARTSILA trademarks in a number of jurisdictions, including among followings:

- International Reg. No. 1005789 for WÄRTSILÄ (registered May 22, 2009);
- United States of America Reg. No. 2078313 for WÄRTSILÄ (registered July 15, 1997); and
- European Union Reg. No. 011765294 for WARTSILA (registered September 18, 2013).

In addition, the Complainant operates from its main domain name <wartsila.com> and owns more than 400 domain name registrations containing the WARTSILA mark distributed among generic Top-Level Domains (“gTLDs”) and country code Top-Level Domains (“ccTLDs”).

The disputed domain name was registered on November 14, 2024. The disputed domain name does not resolve to an active website. On November 20, 2024, multiple emails from “[…]@wartsilacom.com” were sent to a customer of the Complainant’s in an attempt to defraud them and requesting the customer to

“delete the old bank details on your system and pay all receivables into our new bank account details which

will be sent to you shortly.”

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.

The Complainant contends that: (a) the disputed domain name is confusingly similar to its trademark
WARTSILA as it entirely incorporates its trademark together with addition of the term “com”. The addition of
the term “com” does not prevent a finding of confusing similarity; (b) the Respondent has no rights or
legitimate interests in the disputed domain name. The Respondent is not offering any goods or services
from the disputed domain name and rather sent phishing emails to solicit payments from the phishing target
while using the Complainant’s official domain name and WARTSILA logo; and (c) the disputed domain name
was registered and is being used in bad faith. The Respondent targeted the Complainant when registering a
domain name identical to the Complainant’s mark with the addition of term “com”, so that the Respondent
could engage in fraudulent practices. The Respondent used the disputed domain name to make a

commercial gain by purporting to be the Complainant and deceiving the addressee of the phishing emails.

B. Respondent

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

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6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainants must demonstrate that the three elements enumerated in paragraph 4(a) of the Policy have been satisfied. These elements are that: (i) the disputed domain name is identical or confusingly similar to the Complainant’s trademark or service mark; 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.

A. Identical or Confusingly Similar

The disputed domain name includes the Complainant’s trademark WARTSILA in its entirety together with
addition of the term “com”. Where the Complainant owns registered trademarks, this prima facie satisfies the
threshold requirement of having trademark rights for purposes of standing to file a UDRP case. Section
1.2.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition,
(“WIPO Overview 3.0”). It is also well accepted that the first element functions primarily as a standing
requirement. The 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. Adding the term “com” does not prevent a finding of confusing similarity. WIPO Overview 3.0,
section 1.8. In addition, the gTLD “.com” is disregarded under the confusing similarity test.
WIPO Overview 3.0, section 1.11.1.

Accordingly, the Panel concludes that the Complainant has satisfied the first element under paragraph 4(a) of the Policy.

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 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.

The Panel finds the mark is recognizable 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 “com”, 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

Under paragraph 4(a)(ii) of the Policy, the overall burden of proof is on the Complainant. However, once the disputed domain name, the burden of production shifts to the Respondent. WIPO Overview 3.0, section 2.1.

First, the Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. On the other hand, the Respondent has not rebutted the Complainant’s contention 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. 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.

Secondly, the Complainant contends that the Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. In this

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case the Respondent has used the disputed domain name to send the phishing email to solicit payments
from the phishing target while using the Complainant’s official domain name and WARTSILA logo. Panels
have held that the use of a domain name for illegal activity such as phishing, impersonation and sending
deceptive emails can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0,

section 2.13.1.

Accordingly, the Panel concludes that the Complainant has satisfied the second element under paragraph

4(a) of the Policy in the present case.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires that the disputed domain name “has been registered and is being used in bad faith”. Thus, for the Complaint to succeed, a UDRP panel must be satisfied that a domain name has been registered and is being used in bad faith. These requirements are conjunctive; each must be proven or the Complaint fails. In addition, 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.

First, the Complainant obtained the registration of WARTSILA trademark earlier than the Respondent registered the disputed domain name. Having noted the composition of the disputed domain name which includes the Complainant’s trademark WARTSILA in its entirety with addition of the term “com”, it is highly likely that the Respondent has been aware of the WARTSILA mark. Thus, the Panel considers bad faith registration that the Respondent deliberately chose the disputed domain name to create a likelihood of confusion with the Complainant’s trademark so as to create a false association or affiliation with the Complainant. The registration of the disputed domain name in awareness of the WARTSILA mark and in the absence of rights or legitimate interests amounts under these circumstances to registration in bad faith.

Finally, as the above mentioned in 6.B, the Respondent has sent the phishing email to solicit payments from
the phishing target while using the Complainant’s official domain name and WARTSILA logo. The Panel
takes into account that previous panels have held that the use of a domain name for illegal activity, such as
applicable to this case phishing, impersonation and sending deceptive emails, constitutes bad faith.
WIPO Overview 3.0, section 3.4.

Accordingly, having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy and concludes that the Complainant has satisfied 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 <wartsilacom.com> be transferred to the Complainant.

/Moonchul Chang/
Moonchul Chang
Sole Panelist
Date: February 20, 2025