The Complainant is Ingenico Group of Paris, France, represented by Markplus International, France.
The Respondent is Domains By Proxy, LLC of Scottsdale, Arizona, United States of America (“US”) / Brian Comire of Nashua, New Hampshire, US. 2. The Domain Name and Registrar
The disputed domain name is registered with Wild West Domains, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 22, 2016. On August 23, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 23, 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 August 26, 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 August 29, 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 August 30, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 19, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 20, 2016.
The Center appointed Syed Naqiz Shahabuddin as the sole panelist in this matter on October 5, 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 identifies itself in the Complaint as “a worldwide leader in payment solutions”. Supporting material appended in Annex 4 (“Evidence of Notoriety”) to the Complaint demonstrates that the Complainant is a French company founded in 1980, headquartered in Paris. The Complainant’s business includes providing secure electronic transaction solutions, manufacturing Point-of-Sale payment terminals, and complete payment solutions.
On July 30, 2008, the Complainant registered the trademark INGENICO in France bearing registration number 3591756 in classes 9, 16, 35, 36, 37, 38 and 42 in accordance with the Nice classifications. On January 3, 2014, the Complainant registered the International Trademark (stylized) INGENICO, bearing registration number 1210578 in the same classes.
Since December 17, 1998, the Complainant has been the registrant of the domain name .
The disputed domain name, , was registered by the Respondent on July 21, 2016. As at August 30, 2016, the disputed domain name is not connected to an active website. 5. Parties’ Contentions A. Complainant
The Complainant seeks relief in the form of transfer of the disputed domain name to the Complainant in accordance with Paragraph 4(i) of the Policy, on the following grounds:
Firstly, the replacement of the letter “O” with the numeral “0” in the disputed domain name makes it confusingly similar and quasi-identical to the Complainant’s mark.
Secondly, the Complainant expresses doubt that the Respondent could have any rights or legitimate interests in the disputed domain name, given that the mark INGENICO is not a common name for an individual or another company. The Complainant subscribes to the consensus view which states that, so long as a prima facie case showing the Respondent lacks rights or legitimate interests in the domain name is established, the burden of production shifts to the Respondent.
Thirdly, notwithstanding that the disputed domain name does not resolve to an active website, the Complainant argues that this does not preclude a finding of bad faith in the registration and use of the disputed domain name, due to the likelihood of confusion between the disputed domain name and the Complainant’s trademark, and thus creating the potential for abuse. The Complainant invites the Panel to examine other circumstances which may support its contention that the Respondent acted in bad faith, such as the renown of the mark, the lack of a response to the Complaint, and efforts by the Respondent to conceal its identity. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Given that the Respondent did not file a response, this Panel will decide on the basis of the Complainant’s undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and will draw appropriate inferences in accordance with paragraph 14(b) of the Rules.
The Complainant must demonstrate, and has the burden to prove, that each limb of the three part test in paragraph 4(a) of the Policy has been satisfied, in order to prevail. These are addressed in turn. A. Identical or Confusingly Similar
Based on the record filed, the Panel finds that the Complainant has duly proven it has rights to the INGENICO mark, and that the disputed domain name is quasi-identical to that mark.
The Panel finds that the replacement of the letter “O” in the disputed domain name with the numeral “0” makes the disputed domain name virtually identical to the Complainant’s trademark (without considering the generic Top-Level Domain (“gTLD”) “.com” as this may be disregarded when assessing identity or confusing similarity). In determining what constitutes confusing similarity, Paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) emphasizes the overall impression created by the domain name, and the distinguishing value (if any) of any terms, letters or numbers used.
Applying these tests, this Panel finds that the overall impression of the disputed domain name mimics the Complainant’s mark almost verbatim, and there is clearly no significant distinguishing value between “O” and “0” in the context of a domain name.
The Panel in Haas Food Equipment GmbH v. Usman ABD, Usmandel,WIPO Case No. D2015-0285 faced an identical issue, between disputed domain name and the Complainant’s MONDOMIX trademark, and concluded, as does this Panel, that the use of a zero to replace an “O” in this manner makes the disputed domain name “virtually identical” with the Complainant’s mark.
Accordingly, the Panel finds that the Complainant has met the requirements of paragraph 4(a)(i) of the UDRP. B. Rights or Legitimate Interests
On the question of whether the Respondent had any rights or legitimate interests in the disputed domain name, an affirmative answer would require information proprietary or within the knowledge of the Respondent. Since the Respondent has elected not to respond to the Complaint, this Panel refers to the consensus view in paragraph 2.1 of the WIPO Overview 2.0 which states that while the overall burden of proof rests with the complainant, 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. Therefore 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. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.
The Panel is satisfied that the Complainant has established a prima facie case against the Respondent having considered the elements in the consensus view. These include, among other things, the status and fame of the Complainant’s trademark, whether the Respondent has registered other domain names containing dictionary words or phrases, whether the domain name is used in connection with a purpose relating to its generic or descriptive meaning, and whether the domain name could likely have been used by the Respondent for a legitimate purpose. See Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393 and St Andrews Links Ltd v. Refresh Design,WIPO Case No. D2009-0601.
Based on the facts in this record, and noting that the disputed domain name does not appear to have been used by the Respondent in connection with an active website or otherwise, the Respondent has not adduced evidence of any rights or legitimate interests in the disputed domain name to rebut the Complainant's prima facie showing to the contrary, and therefore fails to establish any rights or legitimate interests in the disputed domain name.
Accordingly, the Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(ii) of the UDRP. C. Registered and Used in Bad Faith
The Complainant concedes that the disputed domain name does not resolve to any active website, and that there is no evidence to show that the disputed domain name was put up for sale by the Respondent, or otherwise used by the Respondent to perpetrate a fraud or for any illegal purpose. However, the Complainant refers to paragraph 3.2 of the WIPO Overview 2.0 which states that with comparative reference to the circumstances set out in paragraph 4(b) of the UDRP deemed to establish bad faith registration and use, panels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith.
Notwithstanding that, from the record, it appears that the disputed domain name is held passively by the Respondent, a finding of bad faith is not precluded. Bad faith may be present if the complainant has a well-known trademark, and the fact that no response to the complaint was filed. The Complaint further suggests that there may be an attempt by the Respondent to conceal its identity. The Panel must examine the totality of the circumstances to determine whether the “cumulative” factors support a finding of bad faith by the Respondent. See Intel Corporation v. The Pentium Group,WIPO Case No. D2009-0273.
On the facts, the Panel is satisfied that the Complainant has rights to a well-known trade mark. The evidence in Annex 4 to the Complaint, which include citations from The Wall Street Journal and publications of a similar stature, indicate that the trademark INGENICO is reasonably well-known. The Respondent did not file a response to the Complaint, and the Panel notes that the Respondent has used a privacy service, making it more difficult in trying to establish the identity of, and contact with, the named Respondent.
The disputed domain name was registered years after the Complainant registered its domain name, with which it is confusingly similar or identical, and thus only after a period of time during which the Complainant had accumulated business goodwill. Considered as a whole, the circumstances surrounding the Respondent’s registration and passive holding of the disputed domain name is not indicative of, and does not support, a finding of the use of the disputed domain name in good faith.
Therefore, the Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(iii) of the UDRP. 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.
Syed Naqiz Shahabuddin bin Syed Abdul Jabbar
Sole Panelist
Date: October 19, 2016
Full & Egal Universal Law Academy