The Complainant is Conservatoire National Des Arts et Metiers, France, represented by INSCRIPTA, France.
The Respondent is Registration Private, Domains By Proxy, LLC, United States of America / Chantale Rose, France. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 3, 2019. On December 3, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 4, 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 the Complainant on the same day, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on December 9, 2019. On December 10, 2019, the Respondent sent an email to the Center stating, in French, that it was ready to transfer the disputed domain name to the Complainant. On December 11, 2019, the Center informed the Parties of the possibility to suspend the procedure to implement a settlement agreement between them and invited the Complainant to submit a request for suspension by December 18, 2019, in the event where the Parties wish to explore settlement options. On December 17, 2019, the Complainant requested from the Center to let the procedure continue. The Center verified that the Complaint together with the amendment to 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 December 20, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 9, 2020. On December 23, 2019, the Center received an email communication in French from the Respondent merely indicating, in substance, that it was ready to pass on the disputed domain; however, the Respondent did not submit any formal response. Accordingly, the Center notified to the Parties that it was proceeding to the panel appointment stage on January 10, 2020. The Center appointed Fabrice Bircker as the sole panelist in this matter on January 23, 2020. 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 French Public Establishment supervised by the French Minister for Higher Education and which counts among the top higher education establishments in France. This education establishment has been created in 1794, offers 591 diplomas and certifications, counts more than 150 teaching centers in France and is also present in more than 50 countries worldwide. Due to this activity, the Complainant counted in 2018 more than 1,000,000 alumni. The Complainant is known as LE CNAM, the initials “cnam” standing for Conservatoire National des Arts et Métiers. The name and the activities of the Complainant are protected in many countries through several trademarks registrations, including: - French trademark LE CNAM No. 3754126, filed on July 16, 2010, registered on January 7, 2011, and covering among others services in class 41; - European Union trademark CNAM No. 012923405, filed on May 30, 2014, registered on October 30, 2014, and covering services of class 41; - International trademark CNAM No. 1225134 registered on June 6, 2014, protecting among others services of class 41 and covering inter alia Switzerland, China, Russia, India, Morocco, and Algeria. The Complainant is also the registrant of several domain names reflecting its trademarks registrations. In particular, it holds the domain name Very little is known about the Respondent except that it is located in France. The disputed domain name was registered on July 22, 2019. It does not resolve to an active website. However, Mail Exchange (“MX”) servers are associated with the disputed domain name. It results from the record of the case that, before initiating this procedure, the Complainant sent several cease and desist letters to the Respondent, but they all remained unanswered. 5. Parties’ Contentions A. Complainant The Complainant’s arguments can be summarized as follows: Identical or confusingly similar The Complainant contends that the disputed domain name is identical to its French trademark registration No. 3754126 for LE CNAM. It adds that the disputed domain name is also almost identical to its LE CNAM European Union and International trademarks, and also to its Rights or Legitimate Interests The Complainant notably puts forward that the Respondent’s failure to respond to the cease and desist letters can be seen as an indication that it has no rights or legitimate interests in respect of the disputed domain name. The Complainant also contends that the Respondent has no trademark rights corresponding to the disputed domain name because the trademark search it has performed reveals that the only trademark registrations corresponding to LE CNAM are those belonging to the Complainant. The Complainant also invokes the fact that the Respondent is not commonly known by the disputed domain name or by the name LE CNAM. Registration and Use in Bad Faith The Complainant contends that the disputed domain name was registered primarily for the purpose of disrupting its activities, notably because it is almost identical to its distinctive signs. It adds that considering its numerous prior trademarks and domain names and the fact that it is very well known, especially in the field of educational services, it is impossible that the Respondent could not have known that the registration of the disputed domain name and its possible use were infringing upon its earlier rights. The Complainant also puts forward that the use of a privacy service by the Respondent and the fact that the latter did not reply to the cease and desist letters constitute additional inference in favor of bad faith registration and use. The Complainant contends that the fact that the disputed domain name does not resolve to any active website can also constitute an evidence of bad faith use. The Complainant also underlines that the disputed domain name is almost identical to its domain name At last, the Complainant contends that the Respondent has probably registered the disputed domain name without using its true identity, because the French female first name Chantal is incorrectly written. B. Respondent The Respondent did not file a formal response to the Complaint. However, on December 10, 2019, that is to say after the filing of the Complainant, but before the commencement of the administrative proceeding, the Respondent sent the following email (in French) to the Center: “Bonjour, This email written with several grammatical and spelling mistakes can be translated in English as follows: “Hello, Then, on December 23, 2019, after the commencement of the administrative proceeding and during the deadline granted to the Complainant to file a Response, it sent another email communication to the Center. This email (also in French and with many grammatical and spelling mistakes) stated: “Comme je vous les dis je suis prêt à céder la domaine. Mais je ne comprends pas l’importance de vous transmettre ma CNI. This can be translated in English as follows: “As already indicated, I am ready to pass on the domain. But, I do not understand the importance to provide you with my CNI [CNI may mean in French ID card]. Paragraph 4(a) of the Policy provides that for obtaining the transfer or the cancellation of the disputed domain name, the Complainant must establish each of 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. However, in this procedure, the Respondent has expressly stated twice that it is ready to transfer the disputed domain name, which is the remedy requested by the Complainant. The question for the Panel is to determine whether it can order the transfer of the disputed domain name on the sole basis of the Respondent’s consent or whether it would be appropriate to proceed to a substantive decision on the merits. Indeed, 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”. This rule gives UDRP panels very broad powers to decide on the complaint (Rockwool International A/S v. Lin Chengxiong,WIPO Case No. D2012-0472). As analysed in The Cartoon Network LP, LLLP v. Mike Morgan,WIPO Case No. D2005-1132, UDRP panels can adopt at least three approaches when a respondent has unilaterally consented to transfer a disputed domain name to a complainant: - (i) to grant the relief requested by the Complainant on the basis of the Respondent’s consent without reviewing the facts supporting the claim (see Williams-Sonoma, Inc. v. EZ-Port,WIPO Case No. D2000‑0207; Slumberland France v. Chadia Acohuri,WIPO Case No. D2000-0195); - (ii) to find that consent to transfer means that the three elements of paragraph 4(a) are deemed to be satisfied, and so transfer should be ordered on this basis (Qosina Corporation v. Qosmedix Group,WIPO Case No. D2003-0620; Desotec N.V. v. Jacobi Carbons AB,WIPO Case No. D2000-1398); - (iii) to proceed to consider whether on the evidence the three elements of paragraph 4(a) are satisfied because the Respondent’s offer to transfer is not an admission of the Complainant’s right (Koninklijke Philips Electronics N.V. v. Manageware,WIPO Case No. D2001-0796) or because there is some reason to doubt the genuineness of the Respondent’s consent (Société Française du Radiotéléphone‑SFR v. Karen,WIPO Case No. D2004-0386; Eurobet UK Limited v. Grand Slam Co,WIPO Case No. D2003-0745). The current trend amongst the UDRP panels dealing with these three options is as follows: “Where parties to a UDRP proceeding have not been able to settle their dispute prior to the issuance of a panel decision using the ‘standard settlement process’ (…), but where the respondent has nevertheless given its consent on the record to the transfer (or cancellation) remedy sought by the complainant, many panels will order the requested remedy solely on the basis of such consent. In such cases, the panel gives effect to an understood party agreement as to the disposition of their case (whether by virtue of deemed admission, or on a no-fault basis). In some cases, despite such respondent consent, a panel may in its discretion still find it appropriate to proceed to a substantive decision on the merits. Scenarios in which a panel may find it appropriate to do so include (i) where the panel finds a broader interest in recording a substantive decision on the merits – notably recalling UDRP paragraph 4(b)(ii) discussing a pattern of bad faith conduct, (ii) where while consenting to the requested remedy the respondent has expressly disclaimed any bad faith, (iii) where the complainant has not agreed to accept such consent and has expressed a preference for a recorded decision, (iv) where there is ambiguity as to the scope of the respondent’s consent, or (v) where the panel wishes to be certain that the complainant has shown that it possesses relevant trademark rights” (section 4.10 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). In the present case, this Panel finds fully appropriate to give effect to the consent of transfer expressed by the Respondent and sees no reason to proceed to a substantive determination: - the Respondent’s consent to transfer the disputed domain name make no doubt and has even been repeated twice; - the Panel is of the view that the Respondent has also admitted (not only by consenting to the transfer of the disputed domain name, but also by acknowledging the gravity of its acts, and then by offering a financial compensation) that the Complainant’s position is well founded, that is to say that the three elements of paragraph 4(a) are satisfied. This means that the Respondent’s consent to transfer the disputed domain name does not prevent a public finding of bad faith; - after the first communication of the Respondent indicating that it was ready to transfer the disputed domain name, the Complainant has replied to the Center that the procedure has to continue. The Panel considers that this position is not an expression of a preference for a decision issued on the merits, but on the contrary understands it as an indication that the Panel can rule this dispute taking the most appropriate approach; - the transfer of the disputed domain obviously corresponds to the remedy sought by the Complainant; - given the record of the case, the rights of the Complainant on the invoked LE CNAM and CNAM prior, and even reputed, trademarks make no doubt. 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 Fabrice Bircker
Je vous confirme êtes prêt à céder le domaine au poursuivant.
En effet, je ne me suis pas rendu compte de la gravité de la création de ce domaine.
Bien à vous”
I confirm be ready to pass the domain on the complainant.
Indeed, I did not realize the gravity of the creation of this domain.
Yours faithfully”
Je suis prêt à payer le frais engagé par votre client à hauteur de 500€.
Bien à vous”.
I am ready to pay the costs incurred by your client up to EUR 500.
Yours faithfully.” 6. Discussion and Findings
Sole Panelist
Date: February 6, 2020
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