The Complainant is Unofi Gestion d’Actifs of Paris, France, represented by Hoche Societé d’Avocats, France.
The Respondent is Domain Admin, Whois Privacy Corp, of New Providence, Bahamas. 2. The Domain Name and Registrar
The disputed domain name is registered with Internet Domain Service BS Corp (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 6, 2016. On April 6, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 7, 2016, 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on April 12, 2016 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 April 12, 2016.
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 April 18, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 8, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 9, 2016.
The Center appointed David Stone as the sole panelist in this matter on May 24, 2016. 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 Unofi Gestion d’Actifs. The Complainant owns French Trademark registration number 063446381, registered on August 17, 2006, for NOTAPIERRE.
The Complainant uses its NOTAPIERRE trademark as the name of a Real Estate Investment Trust (“REIT”) that it manages.
The disputed domain name was registered on May 26, 2013. The Respondent’s website associated with the disputed domain name lists several links related to “SCPI” investments (“SCPI” is the French language equivalent of “REIT”).
The Respondent does not have any commercial relationship with the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant submits that the disputed domain name is highly similar to the Complainant’s NOTAPIERRE trademark. The Complainant submits that the addition of “scpi-” to the NOTAPIERRE trademark does not prevent the disputed domain name from being confusingly similar to that mark. The Complainant further submits that the association of a generic abbreviation “SCPI” to the NOTAPIERRE trademark increases the likelihood of confusion, as this word refers to the Complainant’s commercial activity.
The Complainant submits that the Respondent lacks rights or legitimate interests in the disputed domain name. The name of the Respondent is not composed of the disputed domain name nor is the Respondent commonly known under that name. To the best of the knowledge of the Complainant, the Respondent does not use the disputed domain name as a business name and has no rights, including trademark rights, in the sign NOTAPIERRE.
The Complainant further submits that the NOTAPIERRE trademark has acquired a high reputation among the relevant public in France due to the Complainant’s constant use and promotion of NOTAPIERRE as a commercial name over 27 years. It is implausible, it says, that the Respondent was unaware of the activities of the Complainant and of the existence of the NOTAPIERRE trademark. NOTAPIERRE has no specific meaning and is thus not a common, generic or descriptive word. There is no legitimate use of the disputed domain name and it could deceive Internet users into believing that the sites to which it resolves are the Complainant’s sites. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) the disputed 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 interest 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 Complainant has shown that it owns a French registered trademark for NOTAPIERRE. It is also noted that this trademark pre-dates the registration of the disputed domain name.
The disputed domain name incorporates the NOTAPIERRE trademark in its entirety, with the only addition being the generic abbreviation “SCPI”, which itself relates to the Complainant’s commercial activities. The disputed domain name and the NOTAPIERRE trademark are clearly confusingly similar.
The Panel therefore finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out the criteria which determine whether a domain name proprietor has rights or legitimate interests in a domain name, namely if it has a:
(i) prior bona fide offering of goods or services;
(ii) common association with the disputed domain name; or
(iii) legitimate noncommercial use.
The Respondent does not appear to run any business activity in connection with the disputed domain name. Rather, the website to which the disputed domain name relates lists sponsored links and offers the disputed domain name for sale. It can be seen that the disputed domain name is not used by the Respondent in connection with a bona fide offering of goods and services. There does not appear to be any connection between the disputed domain name and the name or business of the Respondent, nor does the Respondent have any relationship with the Complainant.
The Complainant has established a presumptive case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not replied to the Complaint and thus has not presented any other evidence or elements to justify any rights or legitimate interest in connection with the disputed domain name.
There is no indication that any of the circumstances described in paragraph 4(c)(i) – (iii) of the Policy could apply to the present matter. Therefore, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out the non-exhaustive criteria for bad faith registration and use of a domain name. Bad faith constitutes the intention to register and use a domain name in order to:
(i) sell, rent, or transfer the disputed domain name to the trademark owner (or a competitor thereof) for a profit;
(ii) prevent the trademark owner from registering its trademark in a domain name;
(iii) disrupt the business of a competitor; or
(iv) divert Internet traffic for commercial gain.
The disputed domain name resolves to a parking webpage with sponsored links, including those relating to the Complainant’s commercial activities. The Panel accepts the Complainant’s submission that the Respondent is exploiting the reputation of the Complainant’s trademark in order to attract Internet users to a website not related to the Complainant.
Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith under paragraph 4(a)(iii) 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, , be transferred to the Complainant.
David Stone
Sole Panelist
Date: June 7, 2016
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