The Complainant is ALLNET GmbH Computersysteme of Germering, Germany, represented by Isarpatent, Germany.
The Respondent is David Prats of Paris, France. 2. The Domain Name and Registrar
The disputed domain name is registered with Namebay (the “Registrar”). 3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 16, 2018. On April 16, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 17, 2018, 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.
Pursuant to the Complaint submitted in English and the registrar verification dated April 17, 2018 stating that French is the language of the registration agreement of the disputed domain name, on April 18, 2018, the Center sent a request in English and French for the Parties to submit their comments on the language of the proceeding. On April 19, 2018, the Complainant submitted its request for English to be the language of the proceeding. The Respondent did not submit any request regarding the language of the proceeding.
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 in English and French of the Complaint, and the proceedings commenced on April 25, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 15, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 16, 2018.
The Center appointed Geert Glas as the sole panelist in this matter on May 29, 2018. 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, Allnet GmbH Computersysteme, is the owner of several international, European and German trademarks consisting of the word “Allnet”.
The first international registration of the ALLNET trademark among the documents submitted to the Panel was filed on August 18, 1994, in class 09 for software and hardware for computers.
The Registrar’s WhoIs database shows that the domain name (the “Domain Name”) was first registered on February 3, 2018, and that it is registered by the Respondent. The Domain Name was used in order to create a “…@” email address, which the Complainant contends was used in connection with a fraudulent email scheme. 5. Parties’ Contentions A. Complainant
The following is a summary of the Complainant’s contentions.
The Complainant requests that the Domain Name be transferred to it on the following grounds:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights
The Complainant contends that the first part of the Domain Name, the “allnet” part, is identical to its numerous ALLNET trademarks.
The Complainant also contends that the Domain Name is identical to the company name of the Complainant, Allnet GmbH, and that “GmbH” is the German acronym for “Gesellschaft mit beschränkter Haftung”, which is the form of incorporation of the Complainant.
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name since the Respondent (i) is not commonly known by the Domain Name, (ii) has not been authorised by the Complainant to use the trademark ALLNET and (iii) has no affiliation or connection with the Complainant, its business, goods or services.
(iii) The Domain Name was registered and is being used in bad faith
The Complainant contends that the Respondent registered the Domain Name for the purpose of disrupting the Complainant’s business by misleading customers into thinking that the Domain Name had been registered by the Complainant.
The Complainant contends that the Respondent used the Domain Name in bad faith and with the intention to attract, for commercial gain, Internet users to the Respondent’s website or other online 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.
The Complainant contends that, the Respondent, using a “…@” email address, contacted a Taiwanese company presenting himself as the CEO of the Complainant. The Complainant contends that the Respondent then tried to order goods on credit from the Taiwanese company for a total amount of more than USD 30,000 and asked that the goods be delivered to an address in Guinea. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Language of the Proceeding
Pursuant to paragraph 11 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, i.e., French. However, a complainant may request that the proceedings be conducted in another language than the language subject to the panel’s authority to conduct the proceedings in a manner that it deems appropriate in the spirit of fairness and justice to both parties, taking into consideration matters such as command of the language, time and costs (See Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004).
In the present case, the Complainant contends that the proceedings can be conducted in English since the correspondence between the Respondent and the Taiwanese company he contacted demonstrates that the Respondent uses and understands the English language.
The Panel notes that the Domain Name was used in order to generate an email address incorporating the Domain Name and that emails in English were sent from the said email address. This circumstance and the fact that the Respondent failed to raise objections on the choice of language lead to the conclusion that the Respondent was capable of responding to the Complainant’s contentions in the English language (See, e.g., International Data Group, Inc. v. Lingjun,WIPO Case No. D2004-0398; Louise Rennison v. Milan Kovac,WIPO Case No. D2012-0211 and Z, Inc. v. Zufu aka Huahaotrade,WIPO Case No. D2008-1191).
For these reasons, the Panel finds that in the circumstances of this case, paragraph 11 of the Rules is best served by allowing the proceedings to be conducted in English. 6.2. Substantive Issues A. Identical or Confusingly Similar
The Complainant has demonstrated that it is the owner of numerous international, European and national ALLNET trademarks, which satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2).
The Domain Name incorporates the Complainant’s ALLNET trademark in its entirety and differs from the ALLNET trademark only in that the suffixes “gmbh” and “de”, separated by a hyphen, have been added.
Several UDRP panel decisions have stated that wholly incorporating a complainant’s registered trademark in a domain name may be sufficient to establish confusing similarity even when another term is added to the trademark (See, e.g., GA Modeline S.A v. Mark O’Flynn,WIPO Case No. D2000-1424; Viacom International Inc. v. Erwin Tan,WIPO Case No. D2001-1440; and eBay Inc. v. ebayMoving / Izik Apo,WIPO Case No. D2006-1307). Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements. See WIPO Overview 3.0, section 1.8.
Accordingly, the Panel finds that the first element under paragraph 4(a)(i) of the Policy has been established. B. Rights or Legitimate Interests
Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, the consensus view is that, once the complainant has made a prima facie case that the respondent lacks rights or legitimate interests, 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 Policy (See e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270; Dow Jones & Company, Inc., (First Complainant) and Dow Jones LP (Second Complainant) v. The Hephzibah Intro-Net Project Limited (Respondent),WIPO Case No. D2000-0704 and the WIPO Overview 3.0, section 2.1).
The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name.
Indeed, based on the evidence submitted by the Complainant, the Panel finds that there is no evidence that the Respondent (i) has made a legitimate noncommercial use of the Domain Name, (ii) has used the Domain Name in relation with a bona fide offering of goods and services or (iii) has been authorised by the Complainant to use the ALLNET trademark.
Given that the Respondent did not reply to the Complainant’s contentions and did not present any plausible explanation for his use of the Complainant’s mark, the Panel considers that the Complainant has satisfied its burden of proof under this element of the Policy.
Accordingly, the Panel finds that the second element under paragraph 4(a)(ii) of the Policy has been established. C. Registered and Used in Bad Faith
The Panel turns to the question of whether the Domain Name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy describes some circumstances which, if found to exist, will be evidence of the registration and use of the domain name in bad faith. They are presented in the alternative and consist of a not exhaustive list of indicia of bad faith:
(i) circumstances indicating that the respondent has registered or has acquired 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 of that complainant, for valuable consideration in excess of the respondent documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online 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 or service on the respondent’s website or location.
When assessing whether a domain name has been registered in bad faith, panels can take into account several circumstances including (i) the chosen top-level name, especially where corresponding to the complainant’s area of business activity, (ii) a clear absence of rights or legitimate interests coupled with no credible explanations for the respondent’s choice of the domain name and (iii) other indicia generally suggesting that the respondent has somehow targeted the complainant (See WIPO Overview 3.0, section 3.2.1).
In the present case, the Panel notes that the Respondent included the abbreviation for Germany “de” in the Domain Name which corresponds to the Complainant’s area of business. Moreover, the “gmbh” suffix that the Respondent elected to add to the ALLNET trademark in the Domain Name is the German acronym for “Gesellschaft mit beschränkter Haftung” and corresponds to the type of company which was chosen when incorporating the Complainant. As a result, the Domain Name consists of a combination of three elements which all correspond to the Complainant’s identity namely its ALLNET trademark, the abbreviation for Germany “de” and the Complainant’s corporate form “gmbh”.
For these reasons and given that the Respondent fails to provide any plausible explanation for the choice of the Domain Name, the Panel finds that is not likely that the Respondent did not know about the Complainant’s rights in the ALLNET trademark at the time of registering the Domain Name.
Consequently, the Panel finds that the Respondent registered the Domain Name in bad faith.
It appears from the documents provided to the Panel that the Domain Name was used to generate an email address “…@” which was then used to mislead an employee from a Taiwanese company into thinking that he was dealing with the Complainant’s CEO and have him ship goods on credit to Guinea.
In light of these elements, the Panel finds that the Domain Name has been used to effect fraud on the Complainant, a circumstance that in itself is demonstrative of bad faith as already supported by several other panels (See, e.g., CCS Media Limited and CCS Media Holdings Limited v. VistaPrint Technologies Ltd,WIPO Case No. D2015-1888; GEA Group Aktiengesellschaft v. J. D.,WIPO Case No. D2014-0357; and Ameren Services Company v. Neil McGarry,WIPO Case No. D2014-2110).
Consequently, the Panel finds that the Respondent used the Domain Name in bad faith. 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 Domain Name be transferred to the Complainant.
Geert Glas
Sole Panelist
Date: June 12, 2018
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