The Complainant is Groupe Industriel Marcel Dassault of Paris, France, represented by Dreyfus & associés, France.
The Respondent is Detracross Ltd Detracross Ltd, Detracross Ltd of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”). 2. The Domain Name and Registrar
The disputed domain name is registered with TLDS L.L.C. d/b/a SRSPlus (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 5, 2018. On July 5, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 5, 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.
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 July 10, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 30, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 31, 2018.
The Center appointed Rodrigo Azevedo as the sole panelist in this matter on August 6, 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 is a is a France-based group of companies established in the first half of the 20th century with the creation of Dassault Aviation, a company that manufactures and sells combat aircrafts and business jets. Today, the Complainant keeps operating in the aviation and aeronautical business, but also in other fields such as business services, multimedia publishing and viticulture.
The Complainant is the owner of several trademarks composed by the term “dassault”, in particular the European Union Trade Mark DASSAULT No. 004837886, filed on January 16, 2006 and registered on January 31, 2007, and the French trademark GROUPE DASSAULT No. 3044653, filed on July 27, 2000. “Dassault” is also the main and distinctive element of the Complainant’s trade name.
The Complainant owns and operates other domain names incorporating its DASSAULT mark, including , registered on April 9, 2002.
The disputed domain name was registered by the Respondent on March 10, 2004.
According to the evidence of the Complainant, at the time of filing of the Complaint the disputed domain name did not resolve to an active website. The Panel accessed the disputed domain name on August 15, 2018, at which time the disputed domain name still did not resolve to any active website. 5. Parties’ Contentions A. Complainant
The Complainant makes the following contentions:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant and its DASSAULT trademarks enjoy a worldwide reputation since 1931. The Complainant owns numerous DASSAULT trademark registrations around the world, in particular the European Union Trade Mark DASSAULT No. 004837886, filed on January 16, 2006 and registered on January 31, 2007; and the French trademark GROUPE DASSAULT No. 3044653, filed on July 27, 2000. In addition, the Complainant operates several domain names reflecting its trademark, including , registered on April 9, 2002. The disputed domain name is confusingly similar to the trademark DASSAULT. Indeed, the disputed domain name reproduces the Complainant’s trademark in its entirety which previous UDRP panels have considered to be “well-known” or “famous”. In many prior UDRP decisions, Panels have considered that the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to a complainant’s registered mark. The mere adjunction of a generic Top-Level Domain (“gTLD”) such as “.info” is irrelevant as it is well established that the gTLD does not have any impact on the overall impression on the dominant portion of the disputed domain name and is therefore irrelevant in determining confusing similarity between the mark and the disputed domain name. However, even if the gTLD “.info” was to be taken into consideration, it should be noted that it can only be perceived as an element increasing the likelihood of confusion since Complainant owns many subsidiaries and affiliates and there are loads of information related to the “Groupe Dassault” on its website. Thus, Internet users are likely to wrongly identify the disputed domain name as being endorsed by Complainant. Accordingly, by registering the disputed domain name, the Respondent created a likelihood of confusion with the Complainant’s trademark. It is likely that the disputed domain name could mislead Internet users into thinking that it is, in some way, associated with the Complainant.
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not affiliated with the Complainant in any way and has not been authorised or licensed by the Complainant to use and register its trademark or to seek registration of any domain name incorporating the DASSAULT trademark. Moreover, the Respondent is not known by the name “dassault”. In previous decisions, UDRP panels found that in the absence of any license or permission from the Complainant to use such widely-known trademark, no actual or contemplated bona fide or legitimate use of the domain name could reasonably be claimed. Besides, the disputed domain name has resolved to an inactive page since the Complainant became aware of its registration, namely from May 19, 2017 to May 30, 2018. As such, the Respondent has not made any reasonable and demonstrable preparations to use the disputed domain name with a bona fide offering of goods or services. Consequently, the Respondent fails to show any intention of noncommercial or fair use of the disputed domain name. It is most likely to be believed that the Respondent has no rights legitimate interests in the disputed domain name. Additionally, the Respondent never answered to the Complainant’s cease and desist letter despite several reminders. UDRP panels have repeatedly stated that when respondents do not avail themselves of their rights to respond to the complainants, it can be assumed that the respondents have no right or legitimate interests in the domain name. As set out in section 4.17 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), panels have widely recognized that mere delay between the registration of a domain name and the filing of a complaint neither bars a complainant from filing a case under the UDRP, nor from potentially prevailing on the merits. Indeed, UDRP panels have recognized that the Policy contains no limitation period for making a claim and a delay in bringing a complaint does not provide a defense per se under the Policy. Furthermore, UDRP panels have noted that trademark owners cannot reasonably be expected to permanently monitor for every instance of potential trademark abuse, nor to instantaneously enforce each such instance they may become aware of. In fact, the Complainant discovered the registration of the disputed domain name recently and did not delay in filing this Complaint. The remedies under the Policy are similarly injunctive rather than compensatory in nature, and the focus is on avoiding confusion in the future as to the source of goods or services. UDRP panels have considered that it is by now well-established that trademark doctrines of laches or estoppel have not been incorporated into the Policy and that if the requirements of a valid complaint under the Policy are established, the Policy does not provide any defense of laches.
(iii) The disputed domain name was registered and is being used in bad faith. It is implausible that the Respondent was unaware of the Complainant when it registered the disputed domain name. Bad faith can be found where the Respondent knew or should have known of the Complainant’s trademark rights and, nevertheless registered the disputed domain name in which it had no rights or legitimate interests. Firstly, the Complainant is well known throughout the world including the United Kingdom – the home country of the Respondent. Given this fact, it is impossible that the Respondent had not this trademark in mind while registering the disputed domain name. Secondly, several UDRP panels have previously mentioned its worldwide reputation, making it unlikely that the Respondent was not aware of the Complainant’s proprietary rights in the trademark. Thirdly, as the composition of the disputed domain name entirely reproduces the Complainant’s trademark DASSAULT, it cannot be inferred that the Respondent was unaware of the Complainant when it registered the disputed domain name. In addition, from the association of the gTLD “.info” to the DASSAULT trademark, it can be inferred that the Respondent has used the said gTLD purposely to refer to a website owned by Dassault Group. Under paragraph 2 of the Policy, it is established that when someone registers a domain name, it represents and warrants to the registrar that, to its knowledge, the registration of the domain name will not infringe the rights of any third party. Therefore, it is a registrant’s duty to verify that the registration of the domain name would not infringe the rights of any third party before registering it. Moreover, a quick DASSAULT trademark search would have revealed to the Respondent the existence of the Complainant and its trademark. The Respondent’s failure to do so is a contributory factor to its bad faith. Supposing that the Respondent was not aware of the possibility of searching trademarks online before registering a domain name, a simple search via Google or any other search engine using the keyword “dassault” demonstrates that all first results relate to the Complainant’s field of activities or news. Given the current pervasiveness of the Internet and advancement in information technology, the reputation of brands and trademarks transcend national borders. Taking into account the worldwide reputation of the Complainant and its trademark, as well as the high level of notoriety of the Complainant, it is hard to believe that the Respondent was unaware of the existence of the Complainant and its trademark at the time of registration of the disputed domain name. Also, it would have been pertinent for the Respondent to provide an explanation of its choice of registering the disputed domain name, failing which the Panel draws the conclusion that the disputed domain name was registered in bad faith with intent to create an impression of an association with the Complainant and its products. However, the Respondent neither tried to defend its rights nor stated any valid arguments to justify the registration of the disputed domain name in response to the Complainant’s cease and desist letter. Nevertheless, the Respondent renewed the disputed domain name despite having been summoned by the Complainant to transfer the disputed domain name. Some elements may be put forward to support the finding that the Respondent also uses the disputed domain name in bad faith. Previous UDRP panels have considered that in the absence of any license or permission from the Complainant to use such widely-known trademark, no actual or contemplated bona fide or legitimate use of the disputed domain name could reasonably be claimed. The disputed domain name resolves to an inactive page. Nevertheless, this state of inactivity does not mean that the disputed domain name is used in good faith. Indeed, passive holding does not preclude a finding of bad faith. Previous UDRP panels have already considered that passive holding of a disputed domain name can satisfy the requirements of paragraph 4(a)(iii) of the Policy, and that in such cases the panel must give close attention to all the circumstances of the Respondent’s behavior. It is more likely than not that the Respondent’s primary motive in registering the disputed domain name was to capitalize on or otherwise take advantage of the Complainant’s trademark rights, through the creation of initial interest of confusion. Finally, it is likely that the Respondent registered the disputed domain name to prevent the Complainant from using its trademark in the disputed domain name. According to former UDRP panels, this type of conduct constitutes evidence of the Respondent’s bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, a complainant shall prove the following three 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 interests 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 Panel has no doubt that “dassault” is a term directly connected with the Complainant.
Annex 5 to the Complaint shows a French registration of the GROUPE DASSAULT trademark filed on July 27, 2000.
The term “dassault” – the distintictive part of the GROUPE DASSAULT trademark – is wholly encompassed within the disputed domain name.
The disputed domain name differs from the distinctive part of the Complainant’s trademark by the addition of the gTLD “.info”. However, it is well established that the addition of a gTLD suffix such as “.info” is typically irrelevant when determining whether a domain name is confusingly similar to a complainant’s trademark.
As a result, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark, and that the Complainant has satisfied the first element of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides some examples without limitation of how a respondent can demonstrate rights or legitimate interests in a domain name:
(i) before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name; or
(iii) the respondent is 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 at issue.
Based on the Respondent’s default and on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant has not licensed nor authorized the use of its trademark to the Respondent, and the Panel finds no indication that the Respondent is commonly known by the disputed domain name.
Considering that there is no active webpage linked to the disputed domain name and no response was provided to the present Complaint, the Panel finds that there is no evidence to demonstrate the Respondent’s intent to use or to make demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
Consequently, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name, and the Complainant has satisfied the second element of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or 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 documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent 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) 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 online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.
Previous UDRP panels have already recognized the well-known status of the DASSAULT trademark in the aeronautical and aviation business (see Immobilière Dassault SA, Groupe Industriel Marcel Dassault v. DuanZuoChun,WIPO Case No. D2011-2106; and Groupe Industriel Marcel Dassault, Dassault Aviation v. Mr. Minwoo Park,WIPO Case No. D2003-0989).
When the disputed domain name was registered by the Respondent (in 2004) the trademarks DASSAULT or GROUPE DASSAULT were already directly connected with the Complainant’s aircrafts and business jets.
The disputed domain name encompasses the distinctive term “dassault” together with the gTLD “.info”.
Therefore, the Panel concludes that it is unlikely that the Respondent was not aware of the Complainant’s trademark and that the adoption of the disputed domain name was a mere coincidence.
Indeed, there is no active website linked to the disputed domain name, but this is not enough to avoid the Panel’s findings that the disputed domain name is also being used in bad faith.
In the Panel’s view, the circumstances that the Respondent (a) adopted a well-known trademark to compose the disputed domain name; (b) do not use the disputed domain name; and (c) has not provided any justification for the registration of such third party trademark, even after receiving a cease and desist letter from the Complainant, certainly cannot be used in benefit of the Respondent in the present case.
Such circumstances, associated with (d) the lack of any plausible interpretation for the legitimate adoption of the term “” by the Respondent are enough in this Panel’s view to characterize bad faith registration and use in the present case.
Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith, and the Complainant has also satisfied the third element 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.
Rodrigo Azevedo
Sole Panelist
Date: August 20, 2018
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