The Complainant is Groupe Industriel Marcel Dassault of Paris, France, represented by Dreyfus & associés, France.
The Respondent is Robaire Godbout of British Columbia, Canada, self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with AlpNames Limited (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 20, 2017. On July 20, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 21, 2017, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 3, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 23, 2017. The Respondent sent email communications on August 4, 5 and 9, 2017. On August 22, 2017, the Respondent sent an email communication and requested an extension of the due date to file a Response. Upon consideration of the stated reasons, the Center granted an extension until August 29, 2017. The Respondent sent further communications on August 28 and 29, 2017.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on September 11, 2017. 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 traces its origins back to 1914 when one Marcel Bloch developed a new propeller for the French Army. Since then, the Complainant's corporate group has grown to employ some 11,745 people with a commercial presence in 83 countries. Its aeronautics division has delivered 8,000 aircraft since 1945. It provides spacecraft design and ground telemetry services. It has business activities in the design and sale of computer-aided design software and other software products. A subsidiary in the group, Figaro Group, is a multimedia publisher. The Complainant also runs a management and development of property assets subsidiary, Immobiliere Dassault, a winery at Chateau Dassault and a range of other activities.
The Complainant has registered a number of trademarks around the world, including:
- French trademark DASSAULT GROUPE No. registered on July 29, 2005 for a range of services in classes 35, 36, and 42;
- European Union trade mark ("EUTM") DASSAULT No. 004837886 registered on January 31, 2007 covering goods and services in classes 9, 12, 16, 35, 36, 37, 38, 39, 41, 42; and
- EUTM GROUPE DASSAULT and device No. 004831186 registered on February 1, 2007 covering services in classes 35, 36, 42.
The Complainant has registered a number of domain names including:
- registered on March 6, 2000;
- registered on March 15, 2000; and
- registered on April 9, 2002.
The Respondent registered the disputed domain name on February 14, 2017.
From around the time of its registration, the disputed domain name resolved to a website headed "D – the best online brand". It then has a body of text explaining the desirability for large companies to project a global brand, not a regional brand. Following this marketing material were a number of pages setting out text and images related to the Complainant under the heading "About the Dassault Aerospace company".
On May 20, 2017, the Respondent wrote to the Complainant's legal representatives inviting the Complainant to consider acquiring the disputed domain name.
The message also stated that the Respondent had:
"invested in several 'group' names to track (in blog) these global companies. Dassault.Group is one of the names I acquired. I will make transfer easy and swift."
This message attracted a negative response, and the Respondent redesigned his website to remove the content relating to the Complainant's business. Instead, there were links to materials espousing the benefits of "personal branding" and links to the Facebook pages of various people who apparently have the surname "Dassault".
It appears that the Respondent has registered over 600 domain names although, according to some of his submissions, he is in the process of reducing his domain investing activities in favour of developing retail sites. 5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable. A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant's trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of the registered trademarks referred to in section 4 above.
The second stage of this inquiry requires a visual and aural comparison of the disputed domain name to the proven trademarks: WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.7. Questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
The disputed domain name differs from the Complainant's EUTM No. 004837886 only by the addition of the Top-Level Domain ("TLD"), ".group". Disregarding the TLD, the disputed domain name is identical to the Complainant's DASSAULT trademark and confusingly similar to the DASSAULT GROUPE and GROUPE DASSAULT trademarks. Taking the TLD into account, it is almost identical to French trademark No. 3373279, which has an additional "e" and omits the ".". The disputed domain name is also at the least confusingly similar to the Complainant's EUTM No. 004837886 and EUTM No. 004831186. B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances may be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent's] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] 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 [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head, and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., section 2.1 of the WIPO Overview 3.0.
It is not in dispute between the parties that the Complainant has not authorised the Respondent to use the disputed domain name and the Respondent is not in any way affiliated with the Complainant. The disputed domain name is plainly not derived from the Respondent's name or any name by which he claims to be commonly known. It is also noteworthy that the Complainant registered the trademarks on which it relies at least ten years before the Respondent registered the disputed domain name. Moreover, the Complainant has been using its trademark around the world for many years before the registration of its trademarks.
In these circumstances, the Complainant has established a clear prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent's basic position is that he registered the disputed domain name some 18 months to two years after it became available for registration in the ".group" TLD. That was more than ample time for the Complainant to register the disputed domain name if it had been interested in it. He says:
"1- I purchased the name Dassault.Group because it was legally available and was unregistered ...and I could see an opportunity for a finders fee from an end-user.
"2- The name was not trademark-reserved. It was available for over 18 months on the open market. I bought it because maybe (plausibly) I was fed up with seeing this intriguing name (with many possibilities for practical use) ignored by everyone,(…) "
The reference to "many possibilities for practical use" invokes the Respondent's position that the name "Dassault" is a common surname and potentially available for use by or on behalf of anyone with that name. In this connection, the Respondent gives as an example of such lawful use a family named Dassault who might want to start a musical group and call themselves "Dassault Group".
Whether or not there is such a speculative family, that is not the Respondent, nor how he in fact used the disputed domain name.
The way the Respondent used the disputed domain name has been described above. After some text extolling the benefits for a company wishing to present itself as operating globally of registering in a Top‑Level Domain, the Respondent set up an extensive range of text and images about the Complainant and its business.
According to the Respondent, he did this to demonstrate to the Complainant how valuable the disputed domain name could be to it.
In a letter dated August 5, 2017 which the Respondent sent to the Complainant's legal representatives and the Center in response to the Complaint, the Respondent described himself as a "domainer / web-designer" who "simply did something obvious from an investing position". Having set out his argument that there were many different "Dassaults" who might find the disputed domain name valuable, the Respondent said:
"Again as a domainer/ web-designer I simply did something obvious from an investing position. Yes I'm certainly aware that a certain company could put value on the name but there is no bad faith done or implied. No coercion either because I am very reasonable and positive when it comes to the end-user."
and:
"I wish for you to consider how expensive your action is in light of the relatively small sum I'm asking for the name (which would pay for my registration cost and web-designing time) and how much this legal action will actually cost the parent company."
The Panel is unable to find this conduct qualifies as a good faith offering of goods or services under the Policy. Despite his claims, it is plain that the Respondent registered the disputed domain name because of its association with the Complainant. He sought to take advantage of that association by seeking a payment, as a "finder's fee", which was apparently considerably more than he paid for the registration but which he hoped would be sufficiently attractive to avoid litigation. As the Respondent said in his communication to the Complainant of May 20, 2017 inviting it to submit a bid:
"I have made a blog website on it (here) However Groupe Dassault is the obvious ideal owner of the name."
It was only after the Complainant's lawyers responded by objecting to his registration of the disputed domain name and threatening legal action, that the Respondent modified the content of his website to suggest it might be suitable for one or some other individual whose name was "Dassault".
Before leaving this second question under the Policy, the Respondent points out that there are numerous other new Top-Level Domains in which (according to the Respondent) the Complainant should also be registering its trademark if it be concerned to protect such a strategic asset.
The Policy, however, does not impose an obligation on a trademark owner to register its trademark (or some variant of it) on any domain, let alone each and every possible domain. There are so many TLDs, and, in many of those, second level domains, that it is unfeasible for a trademark owner to register its trademark (and the myriad variations and additions on its trademark) in each and every one. It is irrelevant under the Policy whether the trademark owner could have, or should have, registered its trademark (or some one or more among the almost infinite number of possibilities) in any particular domain. The question under the Policy is whether or not the person who did register it has rights or legitimate interests in doing so.
For the reasons set out above, the Panel considers that the Complainant has demonstrated the Respondent does not have rights or legitimate interests in the disputed domain name under the Policy. C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g., Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd,WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
It is clear on the record in this case that the Respondent was well aware of the Complainant and its trademark when he registered the disputed domain name. He registered the disputed domain name with the hope of earning a "finder's fee" of $5,000. 1 That amount is apparently considerably more than what the Respondent paid to register the disputed domain name as he states he purchased the disputed domain name as part of a ".group" sale which presented too good an opportunity to resist. As the Respondent explained in his email to the Center dated August 4, 2017:
"To sum up I hope that the Dreyfus firm "comes to its senses" and chooses to expediently purchase the name for the very modest price which I'm asking for it."
Having found that the Respondent does not have rights or legitimate interests under the Policy in the disputed domain name, the Respondent's conduct in registering the disputed domain name to generate a "finder's fee" constitutes registration and use in bad faith under the Policy. 6. 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.
Warwick A. Rothnie
Sole Panelist
Date: September 25, 2017
1 The website says "$5.000 (euro)", the email around "$5,000".
Full & Egal Universal Law Academy