The Complainant is Ingenico Group of Paris, France, represented by Markplus International, France.
The Respondent is Omri Shafran of Houston, Texas, United States of America (“USA”). 2. The Domain Names and Registrar
The disputed domain names , and are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 18, 2018. On September 18, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 18, 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 September 24, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 14, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 15, 2018.
The Center appointed Johan Sjöbeck as the sole panelist in this matter on October 23, 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 one of the leading companies in seamless payments providing end-to-end payment solutions to enable commerce across all channels: in-store, online and mobile. With over 35 years of payment industry experience and market leading payment solutions, the Complainant is a trusted payments partner for banks and retailers all over the world. The Complainant is present in 170 countries and has five offices in the USA, the country where the Respondent is located.
The Complainant has submitted evidence that it is the owner of the following trademark registrations:
INGENICO, international trademark (word) with registration number 1004927 registered on October 9, 2008 for goods and services in classes 9, 16, 35, 36, 37, 38 and 42; registered in the USA on January 18, 2011 under the registration number 3906865.
INGENICO, international trademark (figurative) with registration number 1210578 registered on January 3, 2014 for goods and services in classes 9, 35, 36, 37, 38 and 42; registered in the USA on July 14, 2015 under the registration number 4770850.
The disputed domain names , and were registered by the Respondent on September 11, 2018. On September 12, 2018, the Respondent contacted the Complainant by email offering to sell the disputed domain names to the Complainant for USD 25,000. The disputed domain names all resolve to registrar parking pages all displaying pay-per-click links. 5. Parties’ Contentions A. Complainant
The disputed domain name is confusingly similar to the Complainant’s trademark INGENICO. The disputed domain name reproduces the Complainant’s trademark in its entirety with the addition of the geographic term “USA”. Numerous UDRP decisions have established that adding a geographic term to a trademark does not influence the similarity between a trademark and a domain name.
The disputed domain names and reproduce the Complainant’s trademark INGENICO in its entirety with the addition of the generic English terms “credit card” and “credit card device” which increase the likelihood of confusion, since the Complainant is specialized in payment solutions. Therefore, Internet users are likely to believe that the disputed domain names are operated by the Complainant.
The Complainant has used the trademark INGENICO in connection with a wide variety of products and services around the world. Consequently, the public has learnt to perceive the goods and services offered under this mark as being those of the Complainant. Therefore, the public would reasonably assume that the disputed domain names would belong to the Complainant or at least assume that they are related to the Complainant.
The Respondent is not affiliated with the Complainant in any way, nor has the Respondent been authorized by the Complainant to use and register its trademark, or to seek registration of any domain name incorporating the trademark. Furthermore, the Respondent has no prior rights or legitimate interest in the disputed domain names. The registration of a number of INGENICO trademarks precede the registration of the disputed domain names by years.
It is implausible that the Respondent was unaware of the Complainant when he registered the disputed domain names. Given that the disputed domain names are confusingly similar to the INGENICO trademark and that the Complainant has been present in the USA for over 20 years, the Respondent cannot reasonably pretend that it was intending to develop a legitimate activity through the disputed domain names. Considering the composition of the disputed domain names reproducing the Complainant’s trademark INGENICO with the addition of the geographic term “USA” and the English generic terms “credit card” and “credit card device”, it is impossible that the Respondent did not have this trademark and company name in mind while registering the disputed domain names.
Furthermore, seven hours after having registered the disputed domain names, the Respondent contacted the Complainant and offered to sell them for USD 25,000. Therefore, it is impossible to believe that the registration of the disputed domain names was in good faith and/or that the Respondent was not aware of the prior rights of the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in the disputed domain names; and
(iii) that the disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
According to the submitted evidence, the Complainant is the owner of the registered trademark INGENICO. The disputed domain names , and incorporate the Complainant’s trademark INGENICO in its entirety with the addition of geographic and descriptive terms such as “usa”, “creditcard”, and “creditcarddevice”. The mere addition of the geographic and descriptive terms to the INGENICO trademark does little, if anything, to eliminate the confusing similarity between the Complainant’s trademark and the disputed domain names.
Having the above in mind, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademark and that the Complainant has proved the requirements under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests with respect to the disputed domain names. The Respondent may establish a right or legitimate interest in the disputed domain names by demonstrating any of the following non-exhaustive circumstances listed in paragraph 4(c) of the Policy:
(a) that it has made preparations to use the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services prior to any notice of the dispute; or
(b) that it is commonly known by the disputed domain names, even if it has not acquired any trademark rights; or
(c) that it is making a legitimate, noncommercial or fair use of the disputed domain names without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
The Complainant has not licensed or otherwise consented to the Respondent’s use of the trademark INGENICO in connection with any of the disputed domain names, which are confusingly similar to the Complainant’s trademark. There is no evidence in the case indicating that the Respondent has made preparations to use the disputed domain names in connection with a bona fide offering of goods or services prior to the dispute. On the contrary, the evidence demonstrates that the Respondent contacted the Complainant only seven hours after having registered the disputed domain names. The Respondent’s email, which was sent to ten different email addresses of the Complainant, contained the following message: “See the domains I have purchased. Please redeem my $25,000 credit and make sure that every person who search Ingenico will see these domain first in google. I will prepare the website soon”.
The Respondent has not submitted any evidence indicating that it is the owner of any trademark rights or that it is commonly known by the disputed domain name. Furthermore, there is no evidence in the case file indicating that 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.
Although given the opportunity, the Respondent has not rebutted the Complainant’s prima facie case. The Respondent has failed to invoke any circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy or otherwise, any rights or legitimate interests in respect of the disputed domain names. Thus, there is no evidence in the case that refutes the Complainant’s submissions, and the Panel concludes that the Complainant has also proved the requirement under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include without limitation:
(i) circumstances indicating the disputed domain names were registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registrations to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the disputed domain names; or
(ii) circumstances indicating that the disputed domain names were registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, provided there is a pattern of such conduct; or
(iii) circumstances indicating that the disputed domain names were registered primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the disputed domain names have intentionally been used in an attempted to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on that website or location.
Given the circumstances and the submitted evidence in the case, the Panel finds it unlikely that the Respondent did not have the Complainant in mind when registering the disputed domain names , and . The Respondent knew or should have known of the existence of the Complainant and its trademark INGENICO when registering the disputed domain names.
There is no evidence in the case record indicating that the disputed domain names have resolved to developed websites nor that the Respondent has made any legitimate use of the disputed domain names. As stated in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, and confirmed in subsequent UDRP decisions, “‘being used in bad faith’ is not limited only to positive action as inaction is within the concept.” Furthermore, as expressed in section 3.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), passive holding as such does not prevent a finding of bad faith.
The Respondent used the disputed domain names to target the Complainant. Given that the Complainant is providing payment solutions, it is likely that Internet users would perceive the combination of the Complainant’s trademark and the additions “usa”, “creditcard”, and “creditcarddevice” in the disputed domain names as referring to the Complainant. The circumstance that the Respondent contacted the Complainant immediately after having registered the disputed domain names and requested USD 25,000 demonstrates that the disputed domain names were registered or acquired primarily for the purpose of selling or otherwise transferring the disputed domain names to the owner of a trademark for valuable consideration in excess of the documented out-of-pocket costs directly related to the disputed domain names.
Based on the above, the evidence and the circumstances in this case, the Panel finds that the Respondent’s passive holding of the disputed domain names in combination with the request of USD 25,000 from the Complainant indicates bad faith.
There is no evidence in the case record that refutes the Complainant’s submissions.
The Panel concludes that the Complainant has proved the requirements under paragraph 4(a)(iii) of the Policy and that the disputed domain names have been registered and used 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 disputed domain names, , and be transferred to the Complainant.
Johan Sjöbeck
Sole Panelist
Date: November 5, 2018
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