CCS Media Limited and CCS Media Holdings Limited v. VistaPrint Technologies Ltd
Case No. D2015-1888
1. The Parties
The Complainants are CCS Media Limited and CCS Media Holdings Limited of Chesterfield, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by Trowers & Hamlins, UK.
The Respondent is VistaPrint Technologies Ltd of Hamilton, Bermuda, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 22, 2015. The Center transmitted its request for registrar verification to the Registrar on October 23, 2015. The Registrar replied the same day, confirming that the Domain Name is registered with it, that the Respondent is the current registrant, that the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) applies, that the Domain Name is on Registrar Lock and will remain locked during this proceeding, and that the registration agreement is in English. The Registrar further stated that the Respondent acquired the Domain Name on July 13, 2015, and that the registration would expire on July 13, 2016, and provided the full contact details held in respect of the Domain Name on its WhoIs database.
The Center verified that the Complaint satisfied the formal requirements of the 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 paragraphs 2 and 4 of the Rules, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on November 3, 2015. In accordance with paragraph 5 of the Rules, the due date for Response was November 23, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 24, 2015.
The Center appointed Jonathan Turner as the sole panelist in this matter on December 1, 2015. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules. Having reviewed the file, the Panel is satisfied that the Complaint complied with applicable formal requirements, was duly notified to the Respondent, and has been submitted to a properly constituted Panel in accordance with the UDRP, the Rules and the Supplemental Rules.
4. Factual Background
The First Complainant is a subsidiary of the Second Complainant. The Complainants supply IT services, IT project services, and print and office supplies. The Second Complainant has traded for over 30 years under the name “CCS Media”. The Complainants (hereafter, collectively, “Complainant”) now employ over 250 people in 17 sales offices in different locations in the UK, with their head office in Chesterfield. Their turnover in calendar year 2014 was in excess of GBP 110 million. They expended approximately GBP 310,000 on marketing in 2014. They have won several awards, including the Cisco Rising Star award and the CRN Reseller of the Year award sponsored by Fujitsu. The business has had a website at “www.ccsmedia.com” since 1997.
On July 13, 2015, emails were sent purportedly by the Complainant’s Managing Director using an email address associated with the Domain Name to the Complainant’s payroll manager, requesting an immediate transfer of GBP 27,780 to a specified bank account for professional services (business development/consultancy)as indicated on an attached invoice. The Complainant’s email addresses follow the format “firstname.lastname@example.org”, and the email address associated with the Domain Name used the same format. Following an exchange of emails apparently to and from the email address using the Managing Director’s name, the Complainant’s payroll manager transferred GBP 27,780 to the specified account.
On July 15, 2015, further emails were sent purportedly by the Complainant’s Managing Director from the same email address asking the Complainant’s payroll manager to transfer GBP 40,800 for administrative expenses to another specified bank account, again as indicated on an attached invoice. Following an exchange of emails to and from this email address, the Complainant’s payroll manager transferred GBP 40,800 to the specified account.
Neither of these payments was due from the Complainant or authorized by its Managing Director.
The Respondent has been held to have registered and to have been using domain names in bad faith in 39 other decisions upholding complaints under the UDRP against it.
5. Parties’ Contentions
The Complainant contends that it has common law rights in the mark CCS MEDIA by virtue of its substantial trade and marketing under this name. The Complainant submits that the Domain Name is confusingly similar to this mark, pointing out that the only differences are the omission of a space and the misspelling of the word “media”.
The Complainant maintains that the Respondent has no rights or legitimate interests in the Domain Name. It points out that the Respondent is not commonly known by the name “CCS Meddia” or any similar name. It notes that the Domain Name has not been used in connection with any website and that the only use that appears to have been made of the Domain Name was to effect the frauds described above. Internet searches on the name “CCS Meddia” did not identify any business or activity of the Respondent. According to the Complainant’s researches, the Respondent supplies business stationery, promotional goods and services, including digital marketing, under the name “vistaprint”, and is the registrant of 564,518 domain names, which the Complainant infers are registered on the Respondent’s own behalf.
The Complainant alleges that the Domain Name was registered and is being used in bad faith. In support of this allegation the Complainant refers to the frauds described above and the fact that the Respondent has been held to have registered and used many other domain names in bad faith.
As stated above, the Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant must prove: (i) that the Domain Name is identical or confusingly similar to a mark in which it has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith. It is appropriate to consider each of these requirements in turn.
In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences as it considers appropriate from the Respondent’s default in failing to file a response. This includes the acceptance of plausible evidence of the Complainant which has not been disputed.
The Panel finds that the Complainant has common law rights in the mark CCS MEDIA by virtue of its substantial use of this mark over many years.
The Panel considers that the Domain Name is confusingly similar to this mark, from which it differs only in the omission of a space (which is normal in domain names since a space is an inadmissible character), the addition of the generic Top-Level Domain suffix, and the addition of an extra letter “d”, which is in the nature of a typographical error. These differences are insufficient to distinguish. This view is confirmed by the evidence that the Domain Name has in fact been used to deceive an employee of the Complainant as described above.
The first requirement of the UDRP is satisfied.
The Panel finds on the evidence that the Respondent has not used the Domain Name or any corresponding name for a bona fide offering of goods or services or for any legitimate noncommercial or fair use. On the contrary, the only use made by the Respondent of the Domain Name has been to effect two frauds on the Complainant by deceiving its employee to make substantial payments to accounts specified by the Respondent in the belief that the instructions to make the payments were from the Complainant’s Managing Director using his normal email address.
It is also evident that the Respondent is not commonly known by the Domain Name. On the evidence there is no other basis on which the Respondent could claim to have any rights or legitimate interests in respect of the Domain Name.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name and the second requirement of the UDRP is satisfied.
The Panel finds on the evidence that the Domain Name has been used to effect frauds on the Complainant as described above, by deceiving an employee of the Complainant into believing that emails sent from and to an email address using the Domain Name were sent from and to the Complainant’s Managing Director using his normal email address. The Panel infers that the Domain Name was registered by the Respondent with that intent. This is a plain case of bad faith registration and use. This conclusion is further supported by the findings of bad faith registration and use of domain names by the Respondent in many other decisions under the UDRP.
All three requirements of the UDRP are satisfied and it is appropriate to order that the Domain Name be transferred to the Complainant.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, , be transferred to the Complainant.
Date: December 12, 2015