Complainant is Monoprix SA, France, represented by Watrin Brault Associés, France.
Respondent is Registration Private, Domains By Proxy, LLC, United States of America / Name Redacted1 . 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 19, 2019. On September 19, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 20, 2019, 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 Complainant on September 24, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on September 27, 2019. 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 Respondent of the Complaint, and the proceedings commenced on October 9, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 29, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 30, 2019. The Center appointed Nathalie Dreyfus as the sole panelist in this matter on November 8, 2019. 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 Complainant is Monoprix SA, a joint-stock company registered in France. Complainant has trademark rights in the MONOPRIX sign and owns the French trademark MONOPRIX registration number No. 3658321, registered on June 18, 2009 in classes 9, 16, 29, 30, 35, 36, 37, 38, 39, 40, 41, 43, 44 and 45. The trademark has been used by Complainant in France for almost 50 years in connection with the distribution of food, cosmetics and textile products. Complainant is the holder of several domain names, including the domain name Respondent registered the disputed domain name Firstly, Complainant argues that the disputed domain name is identical to the trademark MONOPRIX, in which Complainant has rights and thus creates a risk of confusion. Complainant alleges that the MONOPRIX trademark is fully reproduced in the disputed domain name and is associated with the French term “magasins”, meaning “stores”, which is a descriptive term. It alleges that this creates a risk of confusion by suggesting that there is link between Complainant’s stores and the disputed domain name. Furthermore, Complainant states that Complainant’s trademark MONOPRIX is also reproduced in several emails and documents sent by Respondent from the email address “[…]@magasins-monoprix.com”. Secondly, Complainant alleges that Respondent has no rights or legitimate interests with respect to the disputed domain name. It argues that Respondent registered the disputed domain name 10 years after Complainant registered its trademark MONOPRIX. It also argues that Complainant has been well-known in France since the 1970s. Furthermore, Complainant considers that Respondent’s use of the disputed domain name constitutes fraud and infringement to its trademark MONOPRIX. It alleges that the disputed domain name has been registered in order to use the email server linked to it in order to send fraudulent email messages, and that Respondent committed identity theft by pretending to be one of Complainant’s employees. Respondent referred to Complainant’s official domain name in the fraudulent emails he sent from the “[…]@magasins-monoprix.com”, and that this unauthorized reproduction constitutes an infringement of the MONOPRIX trademark. Complainant also alleges that the MONOPRIX trademark has been reproduced in fake documents sent from the “[…]@magasins-monoprix.com” email address. In addition, Respondent used the identity of one of Complainant’s employees in the fraudulent emails, and also used Complainant’s headquarters address, thus committing identity theft. Complainant finally alleges that Respondent registered the disputed domain name for the sole purpose of committing infringement to try to defraud companies. Thirdly, Complainant states that Respondent registered and is using the disputed domain name in bad faith. Complainant considers that Respondent committed identity theft by creating the email address “[…]@magasins-monoprix.com” and by using the identity of one of Complainant’s employees to try to defraud other companies. Several emails were sent to three companies, using the identity of one of Complainant’s employees without authorization. Also, a fake Monoprix corporate seal was reproduced in some of these messages. Complainant alleges that Respondent thus took unfair advantage use of Complainant’s notoriety by its unauthorized use of Complainant’s identity. Finally, Complainant alleges that the disputed domain name has solely been registered in order to configure an email server in order to defraud other companies, since the disputed domain name leads to an “error 404” page and is thus inactive. It argues that the disputed domain name has been chosen to benefit from Complainant’s notoriety, as Respondent was aware of Complainant’s existence and Complainant’s trademark. Complainant states that Respondent is not making any commercial or fair use of the disputed domain name. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy provides that to obtain the transfer of the disputed domain name, Complainant must prove that each of the following three elements are present: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect to 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 provides that “[a] Panel shall decide a 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”. Paragraphs 10(b) and 10(d) also provide that “[i]n all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case” and that “[t]he Panel shall determine the admissibility, relevance, materiality and weight of the evidence”. Furthermore, paragraph 14(b) provides that “[i]f a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate”. Respondent did not reply to Complainant’s contentions. Respondent’s failure to respond, however, does not automatically result in a decision in favor of Complainant, although the Panel is entitled to draw appropriate inferences therefrom, in accordance with paragraph 14(b) of the Rules. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Taking the foregoing provisions into consideration the Panel finds as follows: A. Identical or Confusingly Similar Paragraph 4(a)(i) of the Policy requires the Panel to consider in the first place, whether Complainant has established relevant trademark rights. The Panel is also required to examine under paragraph 4(a)(i) of the Policy whether the disputed domain name is identical or confusingly similar to Complainant’s trademarks. This test involves “a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name”. See section 1.7 of the WIPO Overview 3.0. Panel finds that Complainant has duly shown trademark rights in the MONOPRIX sign. The disputed domain name The addition of the French term “magasins”, which means “store” does not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview 3.0. The Panel finds that the addition of the term “magasins” to Complainant’s registered trademark, separated by a mere hyphen, will not prevent a finding of confusing similarity. Furthermore, the addition of the generic Top-Level domain (“gTLD”) must be perceived as a technical element of the domain name and is not to be taken into consideration in the evaluation of the confusing. See Alabama One Call, Louisiana One Call System, Tennessee One-Call System, Inc. v. Windward Marketing Group, Inc.,WIPO Case No. D2009-1243: “the addition of the gTLD “.com”, which addition is not considered in evaluating identity or confusing similarity”. Therefore, the Panel finds that the disputed domain name is confusingly similar to the MONOPRIX trademark. Complainant has therefore satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Paragraph 4(a)(ii) of the Policy requires a complainant to demonstrate that a respondent has no rights or legitimate interests in the disputed domain name. Complainant is required to establish a prima facie case that Respondent does not have rights or legitimate interests in the disputed domain name. Once such prima facie case is made, the burden of production shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. If, however, Respondent fails to come forward with such relevant evidence, a Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See section 2.1 of the WIPO Overview 3.0. Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name. First, Complainant did not give any authorization or license to Respondent to make use of its trademark, nor to use its employee’s identity to send email through the email server that has been set up in link with the disputed domain name. It must also be taken into consideration that Complainant has rights over the MONOPRIX trademark and that it is using the term “Monoprix” as its corporate name since the early 1970s. Furthermore, previous cases under the Policy considered that “If the respondent fails to [demonstrate its rights or legitimate interests], the complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the Policy”. See MONOPRIX v. Domain Administrator, See PrivacyGuardian.org / Ashok Chand,WIPO Case No. D2018-2635. As Respondent did not respond to Complainant’s contentions, he did not prove his rights or his legitimate interests in the disputed domain name. Furthermore, Respondent used the MONOPRIX trademark and other elements referring to Complainant’s corporate identity without any authorization. Therefore, Panel considers that Respondent has no rights or legitimate interests in the disputed domain name. Complainant has therefore satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy requires Complainant to demonstrate that the disputed domain name was registered and is being used in bad faith. Firstly, Complainant argues that the disputed domain name was registered in bad faith. Complainant has been a very famous store in France for many years. Furthermore, by using the identity of one of Complainant’s employees, it shows that Respondent researched Complainant and one of its employees so that he can then use his identity in the fraudulent emails sent using the “[…]@magasins-monoprix.com” email address. Had Respondent not done some research, hewould not have been able to use the identity of one of Complainant’s employees in the email messages sent to various companies. Therefore, it appears evident that Respondent knew about Complainant’s existence when he registered the disputed domain name and that he precisely registered the disputed domain name in order to benefit from Complainant’s reputation. Respondent clearly registered the disputed domain name and set up the email server in bad faith. Panel finds that the disputed domain name was registered in bad faith. Secondly, Complainant argues that the disputed domain name is used in bad faith. Complainant has proven that Respondent sent fraudulent emails, using the MONOPRIX trademark, the identity of one of Complainant’s employees, as well as Complainant’s headquarter address, logo, and corporate seal, to make commercial offers to other companies, using a false identity. By sending such emails, Respondent clearly tried to defraud other companies. Respondent has registered the disputed domain name in bad faith in order to benefit from Complainant’s notoriety by sending fraudulent email messages through the email server linked to the disputed domain name. Furthermore, a previous UDRP panel found that “With respect to use in bad faith, the Panel notes that the disputed domain name has never resolved to an active website. Notwithstanding, the disputed domain name appears to be associated with an email server set up by the Respondent or under the Respondent’s responsibility. The presence of an email server linked with a domain name reproducing a well-known third party’s trademark generates a risk of illegitimate use of the disputed domain name by falsely impersonating the Complainant, thus misleading potential consumers as to the origin of the email address illegitimately associated with the disputed domain name” (See Carrefour v. Jason host LLC,WIPO Case No. D2019-1588). The fact that Respondent sent emails using a false identity is clear evidence of use in bad faith. Furthermore, the disputed domain name does not resolve to an active, and the disputed domain name was registered for the sole purpose of using the corresponding email server to send fraudulent messages impersonating one of Complainant’s employees. Panel finds that Respondent is using the disputed domain name in bad faith and is not making a legitimate non commercial or legitimate use of the disputed domain name. Complainant has therefore satisfied paragraph 4(a)(iii) 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 Nathalie Dreyfus 1 On the basis of the case file presented to the Panel, it seems that Respondent is not the true holder and registrant of the disputed domain name. In light of a potential identity theft, the Panel, therefore, has redacted Respondent’s name from this Decision. However, the Panel has attached as Annex 1 to this Decision an instruction to the Registrar regarding transfer of the disputed domain name, which includes the name of the registrant according to the Registrar’s WhoIs database. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding and has indicated that Annex 1 to this Decision shall not be published due to the exceptional circumstances of this case. See ASOS plc. v. Name Redacted,WIPO Case No. D2017-1520.
Sole Panelist
Date: November 22, 2019
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