The Complainant is GROUPAMA SA of Paris, France, represented by Cabinet Iteanu of Paris, France.
The Respondent is Privacy Protection of Kiev, Ukraine / DELTA-X Ltd. of Kiev, Ukraine / Thomty vaiya of Kiev, Ukraine. 2. The Domain Names and Registrar
The disputed domain names and (collectively referred to as “Domain Names”) are registered with OnlineNic, Inc. d/b/a China-C (the “First Registrar”) and Center of Ukrainian Internet Names (UKRNAMES) (the “Second Registrar”), respectively. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 16, 2014. On January 16, 2014, the Center transmitted by email to the Registrars a request for registrar verification in connection with the Domain Names. On January 17, 2014, the First Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. On January 21, 2014, the Second Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 28, 2014, providing the registrant and contact information for both Domain Names disclosed by the Registrars, and inviting the Complainant to do one of the following: 1) file a separate Complaint for one of the Domain Names, and file a short amendment to drop said separately-filed Domain Name(s) from the current Complaint; or 2) provide the Center with a brief amendment to the Complaint, adding the names of both Registrar-disclosed registrants as formal Respondents and demonstrating that both registrants are, in fact, the same entity.
On January 28, 2014, the Center transmitted the language of the proceedings document to the parties in both English and Russian with respect to the Domain Name .
On January 29, 2014, the Center received an informal email communication in English from DELTA-X Ltd. The Center acknowledged its receipt on January 30, 2014.
On February 3, 2014, the Complainant requested English to be the language of the proceedings. The Respondent did not submit its comments. On the same date, the Complainant filed an amended Complaint adding the names of both Registrar-disclosed registrants as formal Respondents and demonstrating that both registrants are, in fact, the same entity. The Center acknowledged the receipt of the latter on February 4, 2014.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 5, 2014. In the same email communication, the Center informed the parties that, given the provided submissions and circumstances of this case, it had decided to: 1) accept the Complaint as filed in English; 2) accept a Response in either English or Russian; 3) appoint a Panel familiar with both languages mentioned above, if available. On February 17, 2014, the Center received an informal email communication from the Second Registrar. The Center acknowledged its receipt on February 18, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was February 25, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 26, 2014.
The Center appointed Olga Zalomiy as the sole panelist in this matter on March 10, 2014. 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 French company “Groupama” that offers insurance services in various countries under the mark GROUPAMA. The Complainant owns several trademark registrations for GROUPAMA, such as the Community Trademark No. 001210863 for the word mark GROUPAMA, registered on June 27, 2000 and the Community Trademark No. 003543139 for the figurative mark GROUPAMA registered on May 25, 2005.
The Complainant is also the registered owner of three domain names that incorporate the GROUPAMA mark, including the domain names: , which was registered on June 13, 2012; , which was registered on June 13, 2012 and , which was registered on May 29, 1997.
The Respondent registered the Domain Name with the First Registrar on September 11, 2013 in the name of “Privacy Protection.” The Respondent registered the Domain Name with the Second Registrar on September 12, 2013 in the name of “Privacy Protection.” In the course of this proceeding the Registrars revealed that the Domain Name belonged to DELTA-X Ltd and the Domain Name was owned by Thomty vaiya with both registrants having the same post office box address in Kiev, Ukraine.
The Domain Names consist of: 1) the prefix “www-” ; 2) the word “groupama”, and 3) a generic Top-Level Domain (“gTLD”) “.com” and “.net.” The Domain Name directs to a website displaying a warning in the French (or English depending on consumer’s location) language that “www.” website is a reported unsafe website and “we recommend that you do not continue with this site.” The warning also states that “Internet Explorer has determined that this website is a phishing website which may disclose personal or financial information.” If one choses to proceed to the “www.” website or to the “www.”, he/she will encounter an identical web page displaying a warning in the Russian language stating that the websites are blocked by administrator. According to the January 29, 2014 letter from DELTA-X Ltd, the disclosed registrant of the Domain Name , who claims to be a reseller of both registrars, both Domain Names belong to the same owner, Thomty vaiya. The websites were “blocked for abuse prevention because same phone number was primary for another user record that was abused by it’s owner. Owner used his account for phishing.” 5. Parties’ Contentions A. Complainant
The Complainant alleges that it is the owner of the well-known trademark GROUPAMA. In the Complainant’s view, the Domain Names are identical and confusingly similar to its GROUPAMA trademark, and the addition of the prefix “www-” does not mitigate the confusion and will have no impact on the overall impression of the dominant part of the name GROUPAMA. The Complainant claims that the addition of the gTLD “.com” and “.net” to each of the Domain Names has no impact on the overall impression of the dominant portion of the Domain Names and is, therefore, irrelevant for the purpose of determining confusing similarity.
The Complainant claims that the Respondent has no rights or legitimate interests in the Domain Names. The Complainant claims that the Respondent is not using the Domain Names in connection with a bona fide offering of goods or services; it has not been commonly known by the Domain Names and cannot demonstrate any legitimate noncommercial or fair use of the Domain Names. Instead, in the Complainant’s view, the circumstances of the case demonstrate the Respondent’s intent to use the Domain Names fraudulently by misleading consumers.
Finally, the Complainant claims that the Domain Names were registered and are being used in bad faith. The Complainant claims that its GROUPAMA trademark has status as a well-known mark. The Complainant alleges that the Respondent knew about the Complainant’s trademarks at the time of the registration of the Domain Names.
The Complainant alleges that the Respondent registered and is using the Domain Names in bad faith. In the Complainant’s view, the fact that the Respondent used the privacy service to conceal its identity indicates bad faith of the Respondent. The Complainant claims that the Respondent used the Domain Names for typosquatting to deceive or mislead Internet users. The Complainant further alleges that the email address resa@ allegedly belonging to the Respondent, was reported as a scam email address that was used to send fraudulent emails with the intention to deceive the recipients as to identity of the sender. The Complainant claims that the Domain Name directs to a website displaying a warning in the French language that “www.” website is a reported phishing website and “we recommend that you leave this site.” According to the Complainant, the warning also states that “Internet Explorer has determined that this website is a phishing website which may disclose personal or financial information.” Further, if one choses to proceed to the “www.” website or to the “www.”, he will encounter an identical web page in the Russian language stating that the websites are blocked by administrator.
The Complainant requests that the Domain Names be transferred to the Complainant. B. Respondents
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Language of the proceeding
There are no issues as to the proper language of the proceeding in respect of the Domain Name . According to the verification response of the First Registrar, the proper language is English. However, in its verification response to the Center on January 21, 2014, the Second Registrar alleged that the registrant of the Domain Name is an individual named Thomty vaiya of Ukraine and that the language of the relevant registration agreement, and thus the default language of the present proceedings in respect of the Domain Name is Russian. According to paragraph 11(a) of the Rules: “Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
On January 28, 2014, the Center notified the parties in both Russian and English of the potential language issue, inviting the Complainant to either translate the Complaint or, if not submitted already, to submit a supported request (e.g., by reference to prior party communication, website language, or respondent identity) that the Complaint be accepted in language filed, and that such be the language of proceedings, and similarly providing the Respondent with an opportunity to comment on or object to any such language request that may be made by the Complainant. On February 3, 2014, the Complainant transmitted an email communication to the Center requesting the present proceedings be conducted in English because both Domain Names belonged to the Respondent who chose an English-speaking registrar as the registrar for one of its domain names. Hence, the Respondent understood English. The Respondent did not object to the Complainant’s request.
In light of the Panel’s findings that:
- the registrant of the Domain Name is the same as the registrant of the Domain Name (see Section 6.2 below);
- given that the language of the registration agreement for the Domain Name is English;
-and that the Registrant was advised in both Russian and English of its right to object to the language of the proceeding, but chose not to do so,
the Panel finds that the circumstances of the present case warrant the exercise of her discretion under paragraph 11(a) of the Rules to determine the language of these proceedings. The Panel determines that English is the language of the proceedings. 6.2. The Proper Respondent
According to the Registrars’ verification responses, the registrants of the Domain Names are not “Privacy Service,” the Respondent identified by the Complainant in the original Complaint. Based on the First Registrar verification response transmitted to the Center on January 17, 2014, the registrant of the Domain Name is DELTA-X Ltd with the business address in Kiev, Ukraine. According to the Second Registrar verification response transmitted to the Center on January 21, 2014, the registrant of the Domain Name is Thomty Vaiya residing at the same address in Kiev, Ukraine. The Complainant has requested that the case be consolidated and the matter be decided under a single Complaint.
If these Respondents were, in fact, separate persons, the UDRP would usually require the Complainant to initiate separate proceedings against each of them (absent a successful request for the consolidation of multiple disputes under paragraph 10(e) of the Rules). Neither the UDRP, nor the Rules otherwise makes explicit provision for proceedings against legally separate respondents to be combined. However, the mere fact of registrants being differently named has, in various previous cases, not prevented a finding that there is one proper respondent, in circumstances which indicate that the registrants may be regarded as the same person in effect (for example, see Société des Hôtels Meridien v. Spiral Matrix / Kentech Inc.,WIPO Case No. D2005-1196, and the cases cited.
The Complainant contends and the totality of evidence supports its contention that both registrants are, in fact, the same person, based on the following:
- both of the Domain Names were registered within a few hours difference on September 11 and September 12, 2013;
- both of the Domain Names have the same prefix "www-";
- both of the Domain Names are hosted with the same hosting provider, Ukraine Hosting, which is also the same “Privacy Provider” that is listed as the “registrant for the both Domain Names with the same administrative organization DELTA –X Ltd” and with the same registrant’s address in Kiev, Ukraine;
- in its communication of January 29, 2014, a DELTA-X Ltd representative revealed that the both Domain Names were registered by the same owner, Thomty Vaiya, under the same account.
The Respondents were informed in both Russian and English about the Complainant’s position that they were the same person, but chose not to contravene to those contentions. In light of the circumstances present in this case, it is more likely than not that both Respondents in this case are the same person. The Panel will refer to both listed Respondents collectively as the Respondent.
On February 17, 2014, the Second Registrar advised the Center that the owner of the Domain Name was ready to transfer it to the Complainant. Next day the Center advised the parties about a possibility of suspension of the case, so they can continue the settlement discussions. However, in its email of February 26, 2014 to the Center and to the Respondent, the Complainant rejected the possibility of a settlement because the Respondent offered to transfer to the Complainant only one of the Domain Names. In the Complainant’s view, the transfer offer was made with intent to confuse the Panel into believing that the owners of both Domain Names are different persons. The Complainant chose to proceed with the single case against both Respondents. Next day, despite the Complainant’s rejection, the Second Registrar sent another email requesting information necessary to transfer the Domain Name to the Complainant. There was no further correspondence between the parties.
Because the Panel came to a conclusion that both Respondents in this case are the same person and because the Complainant rejected the Respondent’s settlement offer, the Panel will proceed with deciding this case in a single proceeding. 6.3. Preliminary discussion
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the UDRP, these Rules and any rules and principles of law that it deems applicable.”
In case of respondent’s default, “the respondent’s default does not automatically result in a decision in favor of the complainant.”1 The complainant must establish “each of the three elements required by paragraph 4(a) of the UDRP.”2 Thus, to succeed on its claim, the Complainant must prove that: 1) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; 2) the Respondent has no “rights or legitimate interests in respect of the domain name”; and 3) the domain name “has been registered and is being used in bad faith.” Paragraph 4(a) of the UDRP.
“Although a panel may draw appropriate inferences from a respondent’s default (e.g., to regard factual allegations which are not inherently implausible as being true), paragraph 4 of the UDRP requires the complainant to support its assertions with actual evidence in order to succeed in a UDRP proceeding.”3 A. Identical or Confusingly Similar
To satisfy the first UDRP element, a domain name must be “identical or confusingly similar” to a trademark, in which a complainant has rights. Under paragraph 1.1 of the WIPO Overview, 2.0, if a complainant owns a registered trademark, then it satisfies the threshold requirement of having trademark rights. Here, the Complainant has provided evidence of ownership of several trademark registrations for GROUPAMA, such as the Community Trademark No. 001210863 for the word mark GROUPAMA, registered on June 27, 2000 and the Community Trademark No. 003543139 for the figurative mark GROUPAMA registered on May 25, 2005. The Panel, therefore, finds that the Complainant established its rights in the GROUPAMA mark.
The test for confusing similarity should be a comparison between the mark and the domain name, which involves a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name.4 Based on the comparison of the GROUPAMA trademark and the Domain Names, the Panel finds them confusingly similar, because the Domain Names incorporate the Complainant’s trademark in its entirety.5 It is a consensus among UDRP panelists that addition of merely generic or descriptive wording to complainant’s trademark, where the mark constitutes the dominant part of the domain name, is insufficient to avoid finding of confusing similarity.6 The Complainant’s mark in this case clearly constitutes the dominant part of the Domain Names, and the prefix “www-” does not create new or different marks. Finally, it is well established that the addition of the gTLD “.com” or .“net” should be disregarded under the confusing similarity test, as it is a technical requirement of registration.7
Therefore, the Panel finds that the Complainant has proven that the Domain Names are identical to the trademark GROUPAMA in which the Complainant has rights in accordance with paragraph 4(a)(i) of the UDRP. B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests in the Domain Names.8 Panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent.”9 Therefore, to satisfy this requirement, the Complainant must make out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Names.10
Paragraph 4(c) of the UDRP provides an open list of circumstances which demonstrates rights or legitimate interests of a respondent in a domain name. The Complainant alleges that none of such circumstances exist here. The Panel finds that the Complainant presented a prima facie showing that the Respondent lacks rights or legitimate interests in the Domain Names for three reasons. First, the Respondent did not use the Domain Names in connection with a bona fide offering of goods. Second, the Respondent uses the Domain Names for phishing scheme. Third, the Respondent has not been commonly known by the Domain Names.
Printouts from the Respondent’s websites submitted by the Complainant, and the letter from the reseller of domain names DELTA-X Ltd. reveal that it is more likely than not that the Respondent uses the “www.” and “www.” websites for a phishing scheme and that the websites were blocked for abuse. This is not a bona fide use of the Domain Names. The name of the Respondent does not suggest that the Respondent has been commonly known by the GROUPAMA name.
The Panel finds that the Complainant established a prima facie case that the Respondent has no rights or legitimate interests in the Domain Name in accordance with paragraph 4(a)(ii) of the UDRP, which the Respondent has not rebutted. C. Registered and Used in Bad Faith
The third element of paragraph 4(a) of the UDRP requires “a positive finding that both the registration and use were in bad faith.”11
The Complainant claims that the GROUPAMA mark is a well-known mark, so the Respondent knew about its existence and registered the Domain Names in bad faith. However, the Complainant provided no evidence to support that the GROUPAMA mark is well-known.
The Panel, however, finds that it is more likely than not that the Domain Names were registered in bad faith, albeit for a different reason. “Although use of a privacy or proxy registration service is not in and of itself an indication of bad faith, the manner in which such service is used can in certain circumstances constitute a factor indicating bad faith. For example, registrant’s use of a privacy service in combination with provision of incomplete contact information to such service or a continued concealment of the “true” or “underlying” registrant … may be evidence of bad faith.”12 Based on the evidence in the record, it is more likely than not that the Respondent registered the Domain Names in bad faith. The name Thomty vaiya, who is, according to the January 29, 2014 email of DELTA-X Ltd, the proper owner of the Domain Names, is more likely than not a made-up name. It appears to be neither Ukrainian, nor Russian. In addition, according to the same email of DELTA-X, Ltd, the Respondent’s [accounts] were “blocked for abuse prevention because same phone number was primary for another user record that was abused by it’s [sic] owner. Owner used his account for phishing.” Therefore, the manner in which the Respondent used the privacy service indicates registration in bad faith.
The Complainant’s claims that the Domain Name was used in bad faith, because the email address resa@ allegedly belonging to the Respondent was reported on a French Facebook page as a scam email address that was used to send fraudulent emails with the intention to deceive the recipients as to identity of the sender. However, the Panel does not find this argument to be a conclusive one.
The totality of evidence, however, shows that it is more likely than not that the Respondent used the Domain Names in bad faith. The Domain Name directed to the website that Internet Explorer determined to be a phishing website that was blocked by it administrator for abuse prevention. The website “www.” was also was blocked by their administrator for abuse prevention.
Therefore, the Panel finds that the Domain Names were registered and are being used in bad faith within the meaning of paragraph 4(b)(iv) of the UDRP. As a result, the Panel finds that the Complainant established the third element of paragraph 4(a) of the UDRP. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the UDRP and 15 of the Rules, the Panel orders that the Domain Names and be transferred to the Complainant.
Olga Zalomiy
Sole Panelist
Date: March 23, 2014
1 See, Paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
2 Id.
3 Paragraph 4.6 of the WIPO Overview, 2.0.
4 Paragraph 1.2 of the WIPO Overview 2.0.
5 See, Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) v. Arthur Wrangle,WIPO Case No. D2005-1105.
6 See, Paragraph 1.9 of the WIPO Overview, 2.0.
7 See, Paragraph 1.2 of the WIPO Overview, 2.0.
8 Paragraph 4(a)(ii) of the UDRP.
9 Paragraph 2.1 of the WIPO Overview, 2.0.
10 See, Paragraph 2.1 of the WIPO Overview, 2.0.
11 Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd,WIPO Case No. D2010-0470.
12 Paragraph 3.9 of the WIPO Overview, 2.0.
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