Decision for dispute CAC-UDRP-104039

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain names.

The Complainant owns EU trademark SOFTBANK (Reg. No. 00207022) for the services in classes 35 and 36, registered since December 19, 2002. The Complainant also owns other registrations of SOFTBANK mark in the United States and Japan.

FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT

SoftBank Group Corp. (“SoftBank” or “Complainant”) is the owner of various registrations for the trademark “SOFTBANK” on a worldwide basis, including Japan, the United States and the European Union.

SoftBank is a Japanese multinational conglomerate holding company established in 1981. SoftBank is the parent company of a global portfolio of subsidiaries and affiliates, involved in investment activities, advanced telecommunications, internet services. SoftBank was ranked #27 in Forbes Global 2000 in 2021, #13 in Forbes Top 100 Digital Companies 2019 and #83 in Forbes Top Regarded Companies 2019. It is the second largest publicly traded company in Japan after Toyota. It maintains a strong internet presence through its primary website found at http://softbank.jp/. It also operates an additional website at https://www.softbank.com/. SoftBank company name and its brands, namely, “SoftBank”, are well recognized on a global scale.

The Complainant alleged that the disputed domain names are confusingly similar to its trademark SOFTBANK. The disputed domain names can be considered as capturing, in its entirety, Complainant’s SOFTBANK trademark and simply adding the generic terms “intl” (a common abbreviation for the descriptive term “international”) and “la” (the common abbreviation for the geographical term “Latin America”), respectively to the end of the trademark. The mere addition of these geographical terms to Complainant’s trademark does not negate the confusing similarity between the disputed domain names and the Complainant’s trademark. Therefore, the disputed domain names must be considered confusingly similar to Complainant’s trademark.

The Complainant provided that the Respondent is not commonly known by a disputed domain names. Respondent is not sponsored by or affiliated with Complainant in any way. Furthermore, Complainant has not licensed, authorized, or permitted Respondent to use Complainant’s trademarks in any manner, including in domain names. The Respondent's name “Fred Shile” does not resemble the disputed domain names in any manner. Respondent’s use of the disputed domain names does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent has used the disputed domain names to send e-mails, which have the appearance of coming from Complainant. More specifically, in the e-mails, sent from the domains “@softbankintl.com” and “@softbankla.com”, Respondent seeks to impersonate Complainant’s CEO and Complainant’s President to deceive Complainant’s customers, presumably for its own benefit.

The Complainant's trademark SOFTBANK is well known and the Complainant stated that is therefore reasonable to infer that the Respondent has registered the disputed domain names with full knowledge of the Complainant's trademark SOFTBANK.

The disputed domain names <softbankintl.com> and <softbankla.com> were used in connection with a phishing scam, therefore, it defies common sense to believe that Respondent coincidentally selected the precise domain without any knowledge of Complainant and its trademarks. As Respondent has registered and used the disputed domain names for purposes of launching a phishing attack, it is clear evidence of bad faith registration and use.

NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.

The Complainant has, to the satisfaction of the Panel, shown the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain names (within the meaning of paragraph 4(a)(ii) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the disputed domain names have been registered and are being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).

The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

1. The Panel agrees with the Complainant that the disputed domain names are confusingly similar to the Complainant's trademark SOFTBANK. The adding of "intl” or "la" (abbreviations of generic indications "international" and "Latin America") in the end of the word mark "SoftBank" is related to the Complainant's banking activities and, being combined with the Complainant's well known trademark SOFTBANK, does not set aside the confusing similarity between the disputed domain names and the Complainant's trademark.

2. The Panel acknowledges that the Complainant presented prima facie evidence that the Respondent is not sponsored by or affiliated with Complainant in any way. Furthermore, Complainant has not licensed, authorized, or permitted Respondent to use Complainant’s trademarks in any manner, including in domain names. The Respondent's name “Fred Shile” does not resemble the disputed domain names in any manner. Respondent’s use of the disputed domain names does not constitute a bona fide offering of goods or services or a legitimate non-commercial or fair use.

3. As no administratively compliant response has been provided to the Panel and the prima facie evidence was not challenged by the Respondent, the Panel concludes that the Respondent meant Complainant's trademark SOFTBANK when he registered the disputed domain names. The evidence in this case show that Respondent is using the disputed domain names to confuse unsuspecting internet users looking for Complainant’s services, and to mislead internet users as to the source of the domain name and website. Accordingly, the Panel finds that the disputed domain names were registered in bad faith.

4. Previous panels have concluded that evidence of prior Panel decisions in which domain names have been transferred away from the Respondent to complaining parties supports a finding that Respondent has engaged in a bad faith pattern of “cybersquatting” (eg. Arai Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO January 22, 2005). The Respondent "Fred Shile" has previously been identified in two cases, which involved infringing domains being used for phishing purposes: (1) Kaszek Management SA v. Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf / Fred Shile, D2021-1515 (WIPO, July 8, 2021); (2) Société des Produits Nestlé S.A. v. Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf / Fred Shile, D2021-1359 (WIPO, June 25, 2021). This is per se evidence of the pattern of cybersquatting in which Respondent is engaging.

5. As the Respondent has registered and used the disputed domain names for the purposes of launching phishing attack, the Panel concludes this as the clear evidence of bad faith registration and use. After first creating a strong likelihood of confusion by misappropriating the Complainant’s trademarks in the disputed domain names, Respondent has sent e-mails to Complainant’s clients, in which it purports to impersonate Complainant’s CEO and President. Respondent’s efforts to present himself as the Complainant in an attempt to solicit sensitive, financial information from unsuspecting people certainly constitute fraud, which must be considered bad faith registration and use of the disputed domain names (see WIPO Jurisprudential Overview 3.0 at 3.1.4).