The Complainant is Groupama SA of Paris, France, represented by Cabinet Iteanu & Associés, France.
The Respondent is Giovanni Laporta, of Bedforshire, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”). 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 28, 2014. On July 28, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 30, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 August 4, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was August 24, 2014. The Response was filed with the Center on August 24, 2014.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on August 28, 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.
The Complainant filed a supplemental filing on August 29, 2014. The Respondent filed also a supplemental filing on August 29, 2014. On September 8, 2014, the Complainant filed a second supplemental filing with additional observations. On September 8, 2014, the Respondent filed a second supplemental filing with additional observations. 4. Factual Background
The Complainant is a French company “Groupama” that offers insurance services in various countries under the trademark 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.
At the time of filing the complaint the disputed domain name resolved to a registrar-provided parking page displaying pay-per-click (“PPC”) advertising links.
The disputed domain name was registered by Respondent on June 17, 2014. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to trademarks in which the Complainant has rights because the word “Groupama” is the only distinctive element in the domain name and mark, with “www” being a common prefix for host names used for identifying Internet websites and “.email” being merely the generic Top-Level-Domain (“gTLD”) suffix.
The Complainant submits that, in this case the use of the “.email” gTLD increases the likelihood of confusion, and asserts that the disputed domain name implies a high risk of confusion as an Internet user may think that the disputed domain name directly refers to the Complainant’s business and is being used for communicating by email with its customers, given that the dominant element of the disputed domain name is identical to the trademarks registered by the Complainant.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has not authorized the Respondent to use its trademark. The Respondent is not using the disputed domain name for a website of its own, but as a parking page displaying PPC links. These links related to products and services competing with those of the Complainant.
The Complainant contends that the Respondent is using the disputed domain name to divert traffic intended for the Complainant’s website to its own for the purpose of earning click-through revenue from Internet users searching for the Complainant’s website.
The Complainant also submits that the Respondent cannot demonstrate any use of the disputed domain name in connection with a bona fide offering of goods or services, that the Respondent has not been commonly known by the domain name and cannot demonstrate any legitimate noncommercial or fair use of the disputed domain name.
The Complainant lastly contends that the disputed domain name was registered, and is being used, by the Respondent in bad faith.
The Complainant states that the word “groupama” has no meaning in English language or any other language. The trademark GROUPAMA is well known world-wide, particularly in Europe, where the Complainant has registered numerous trademarks and is exploiting them.
The Complainant asserts that the use of the disputed domain name by the Respondent involves an intentional attempt to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website or of the insurance services advertised by the website.
The Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent makes the following submissions.
The Respondent states that he is developing a new email business model on top of the “.email” gTLD. According to the Respondent, this service will include emotive emailing, vanity emails, and a verified sending/receipt email service. For that purpose, Respondent registered some domain names with the intention of developing this new service model on the “.email” gTLD platform focused on vanity emails, emotive emails and email sending verification, receipt verification, email routing, and email security.
According to the Respondent, it registered over 4,000 “.email” domain names, including generic terms, but also a number of company/brand names on the “.email” gTLD. The Respondent states that he has verified that he would not infringe the exact match trademark with each Trademark Clearinghouse notice provided at registration.
At the time of registration of “brand .email” domain names, Respondent’s idea was to use each “brand .email” as a non-public email server which would capture and segment the data for verifying the sending and, potentially, receipt of emails sent to particular companies for customers using his service.
According to the Response, the “brand .email” service would be invisible to any Internet user using it and could be used to capture meta information around the sending of the email such as the time stamp, IP address information, routing information, et cetera. The Respondent states that by registering a “brand .email” domain name and setting up an email server for each brand, the Respondent would be able to accomplish “a number of verified email administrative and technical goals in ways that would be invisible to consumers or any other third parties, but make it easy to verify that an email was sent to that company”.
The Respondent states that the mere registration of a domain name itself, when it incorporates the brand name, is not enough to establish cybersquatting. According to the Respondent, he is not using the disputed domain name in any way to make it possible to find violation of the UDRP. The Respondent asserts that he is not using the disputed domain name to intentionality mislead consumers. The Respondent states that there has not been any factual evidence of any kind to contradict his position.
The Respondent argues that he still has months of programming to do before making his service available to consumers, and from this the Respondent concludes that this UDRP must be denied on the basis that it is premature.
Identical or confusingly similar to trademark or service mark in which the Complainant has rights:
The Respondent asserts that while the Complainant appears to have trademark rights, the Respondent is not using the disputed domain name in any way to suggest an association, sponsorship or common ownership with the trademark owner, making it impossible for there to be a violation of such rights.
According to the Response, under the Respondent’s business model, no consumer would know that the Respondent owns the subject domain name, and is using it to run a back-end email server to capture send/receipt data. Therefore the Respondent argues that its back-end, non-public facing use of a trademark “.email” domain name is not a trademark use.
The Respondent’s intent at the time of registration and current intent as to “[trademark].email” domain names, will only be used in the back-end, non-public, process of verifying, documenting, archiving and routing emails.
The Respondent has rights or legitimate interests in respect of the domain name that is subject to the Complaint:
The Respondent claims that he registered the domain name for a legitimate business purpose and claims to have demonstrated preparations to use the disputed domain name in connection with a bona fide offering of goods and services, that being certified email using “brand .email” domain names purely for back-end administrative and technical data tracking purposes.
The Respondent states that he is not using the domain name as a consumer-facing brand or as an active website.
The Respondent asserts that he uses the disputed domain name in connection with a bona fide offering of goods and services, namely in connection with certified email limiting the use of the disputed domain name to a back-end email server.
The domain name was not registered and used with a bad faith intent to profit:
The Respondent states that the Complainant’s allegations that the Respondent registered and used the disputed domain name with bad faith intent to profit are not enough to establish the bad faith element under the UDRP.
The Respondent asserts that the bad faith element requires the Respondent to have registered the disputed domain name with bad faith intent to profit from the trademark owner by, for instance, selling it at a profit to the trademark owner or divert customers by using the domain name as a trademark to suggest common affiliation or source. According to the Respondent, those elements are not present in this case.
Since the Respondent’s business model and back end code are still being developed, both this Complainant and prior UDRP panels are left to sheer speculation.
The Respondent states that this is not a case of “passive holding” which in some extenuating circumstances can establish “bad faith use” even if the disputed domain name has not yet been used at all.
The Respondent states that in this case, the “.email” Registry only made “.email” domain names available for registration some months ago. According to the Respondent, it will take months or longer for the Respondent to code and roll-out his email delivery/receipt certification service.
The Respondent states that there is no evidence that the disputed domain name was registered for the purpose of selling it to the brand owner, renting it or otherwise transferring it to the Complainant for profit.
The Respondent states that he has not registered the disputed domain name in order to prevent the owner of the trademark from using the domain name. The Respondent states that his intent is clear, and that he had no intent of preventing the owner of the trademark from registering its brand across the “.email” gTLD or the 1,000 plus other new gTLDs coming into existence.
The Respondent states that he did not intentionally attempt to attract, for commercial gain, Internet users to Respondent’s website or other inline location using the subject domain name by creating a likelihood of confusion with the Complainant’s mark. As noted, the Respondent is not using the disputed domain name in any public facing way, as the disputed domain name does not resolve to an active website. It is impossible for consumers to be diverted or mislead as to sponsorship by the Complainant of the disputed domain name. 6. Discussion and Findings
The Panel must decide a complaint on the basis of the statements in documents submitted and in accordance with the Policy, the Rules and the Supplementary Rules. The Complainant has the onus of proving three elements:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
The Complainant filed a supplemental filing on August 29, 2014. The Respondent filed also a supplemental filing on August 29, 2014. On September 8, 2014, the Complainant filed a second supplemental filing with additional observations. On September 8, 2014, the Respondent filed a second supplemental filing with additional observations.
The Policy envisages prompt and efficient resolution of domain name disputes. Accordingly, the Rules and the Supplemental Rules only contemplate the filing of a complaint and a response, with strict time and word limits. There is no explicit provision for additional filings, except for further statements or documents provided in response to a request from a panel. Paragraph 10 of the Rules provides that the panel is to conduct proceedings “with due expedition” and gives the panel the power to “determine the admissibility, relevance, materiality and weight of the evidence”. Generally, UDRP panels will only accept supplementary filings in “exceptional” circumstances.
The party submitting its filing would normally need to show its relevance to the case and why it was unable to provide that information in the Complaint or Response. It is the Panel’s view that in this case there are no “exceptional” circumstances that justify accepting all these supplemental filings.
The Panel does not consider that the Complainant’s supplemental filings were justified since no proper reason was advanced and therefore declines to accept them. The Respondent’s supplemental filings will be treated similarly.
Finally, in reaching its Decision the Panel has taken note of the numerous decisions involving the Respondent. A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the trademark GROUPAMA.
The disputed domain name incorporates the Complainant’s trademark GROUPAMA and the addition of the “.email” gTLD does not preclude confusion.
The Respondent states that under its “business model, no consumer would know that Respondent owns the subject domain name, and is using it to run a back end email server to capture send/receipt data […] its back-end, non-public facing use of a domain name is not a trademark use”.
The consensus view is that the first element of the UDRP serves essentially as a standing requirement. The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. Therefore, the content of a website is not in principle relevant in determining this element of the Policy (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2).
The Complainant has thus succeeded in establishing the first element required by the Policy. B. Rights or Legitimate Interests
The Panel must decide whether the Respondent has any rights or legitimate interests in respect of the disputed domain name. In doing so, regard may be had to circumstances which might demonstrate rights or legitimate interests to the disputed domain name as follows paragraph 4(c) of the Policy:
(i) before notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent, as an individual, business, or other organization, has been commonly known by the domain name, even if it acquired no trademark or service mark rights; or
(iii) the Respondent, making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
In addition, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name (see WIPO Overview 2.0, paragraph 2.1).
The essence of this matter lies in the contention of the Respondent that he is entitled to register the disputed domain name notwithstanding the fact that it includes the Complainant’s GROUPAMA trademark, because he intends to establish a purportedly legitimate service described in section 5.B of this Decision.
In relation to paragraph 4(c)(i), the Panel concludes that the disputed domain name has not been used in connection with a bona fide offering of goods or services.
In this Panel’s view, the Respondent has not articulated nor evidenced why it is necessary for him to fully incorporate the Complainant’s trademark in order to operate his intended service. Prior UDRP panels ruling on challenges to other “.email” domain names acquired by same Respondent have made similar observations (e.g., NVIDIA Corporation v. Giovanni Laporta, Yoyo.Email Ltd.,WIPO Case No. D2014-0770; and Statoil ASA v. Giovanni Laporta, Yoyo.Email Ltd.,WIPO Case No. D2014-0637).
In this Panel’s view, the Respondent has failed to rebut the Complainant’s prima facie case. The main weakness in the Respondent’s argument is that nothing the Respondent has put before the Panel either explains or justifies why the Respondent actually has to register and own the disputed domain name for purpose of a certified email service. The Panel concludes that the Respondent has not established beyond bald assertion, how and why he needs to own the disputed domain name for the purpose of establishing his intended service.
This Panel also agrees with the previous UDRP “.email” decisions that found that it is not legitimate for the Respondent to seek to put itself in a position where trademark owners like the Complainant are induced to sign up for the Respondent’s service (which is planned somehow to make money) because the Respondent holds a domain name entirely incorporating that owner’s distinctive trademark.
Further, in relation to paragraph 4(c)(ii), there is no evidence that the Respondent has been commonly known by the disputed domain name as an individual, business or other organization. In fact, it would be hard for the Respondent to be known by the disputed domain name, since the Respondent acknowledges that his proposed business plan has not been put in place yet and he has registered approximately 4,000 domain names in the “.email” domain system.
In light of the abovementioned circumstances, the Panel finds that the Complainant satisfies paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel is satisfied that the disputed domain name was registered and is being used in bad faith. The following non-exclusive list of circumstances, if found by the Panel to be present, shall be evidence of registration in bad faith, paragraph 4(b) of the Policy:
(i) circumstances indicating that the respondent has registered the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor for valuable consideration in excess of the respondent’s out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in domain name in a corresponding domain name, provided the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product of service on your website or location.
With respect to bad faith at the time of registration, the Respondent stated that he “[…] registered also a number of company/brand names on the .email gTLD.” In addition the Respondent affirms that “at the time of registration of brand. email domain names” Respondent’s intention “was to use each as a non-public email server which would easily capture and segment the data for verifying the sending and, potentially, receipt of emails sent to particular companies for customers using his service”. Finally the Respondent states that “[…] it is important to note that Respondent has neither put up a website on the subject domain name, never intends to point the domain name at any URL website, nor used the domain name in any way to directly profit from the brand owner. Respondent has not ‘used’ the subject domain name in any way at this time, and certainly has not used the domains in bad faith”.
The Panel concludes that the Respondent had knowledge at the time of registration that some of the “.email” domain names being registered were trademarks and selected those domain names for registration because they were trademarks.
It is undisputed that the Respondent, through the Trademark Clearinghouse instituted by ICANN, had or can be expected to have had prior knowledge of Complainant’s trademarks at the time the disputed domain name was registered.
The Panel notes that several other UDRP panels have found that the Respondent obtained other “.email” domain names in furtherance of his purported “business model” in bad faith (see, e.g.,Government Employees Insurance Company v. G La Porta, / Yoyo.Email Ltd.,WIPO Case No. D2014-0805; Starwood Hotels & Resorts Worldwide, Inc., Sheraton LLC, Sheraton International IP, LLC v. Giovanni Laporta / ,WIPO Case No. D2014-0686; L’Oréal SA v. Y, Giovanni Laporta,WIPO Case No. D2014-1172).
The Panel notes that the disputed domain name resolves to a parking page displaying PPC links that are related to insurance and banking services which amount to this panel to bad faith use as per paragraph 4(b)(iv) of the Policy.
The Panel agrees with the earlier UDRP panels – the Respondent has not successfully refuted the Complainant’s showing of bad faith registration and use.
Further, the Respondent has been found to have registered and used “.email” domain names in bad faith in other cases under the Policy, which suggests a pattern of such conduct on the part of Respondent (see Starwood Hotels & Resorts Worldwide, Inc., Sheraton LLC, Sheraton International IP, LLC v. Giovanni Laporta / ,WIPO Case No. D2014-0686; Statoil ASA v. Giovanni Laporta, Yoyo.Email Ltd., supra, and Mejeriforeningen Danish Dairy Board v. Domain Manager, Y,WIPO Case No. D2014-0770; NVIDIA Corporation v. Giovanni Laporta, Y Ltd.,WIPO Case No. D2014-1172; The Royal Bank of Scotland Group plc, National Westminster Bank plc, and Coutts & Co. v. Domain Manager / / Giovanni Laporta,WIPO Case No. D2014-0825; Arla Foods amba v. G. La Porta / ,WIPO Case No. D2014-0855).
This apparent pattern of such conduct suggests that the Respondent may also have registered the disputed domain name in order to prevent the Complainant, as owner of the trademark, from reflecting the mark in a domain name within paragraph 4(b)(ii) of the Policy.
Accordingly, the Panel concludes that the Respondent has registered and is using the disputed domain name in bad faith, as that term is defined in 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 be transferred to the Complainant.
Pablo A. Palazzi
Sole Panelist
Date: September 15, 2014
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