The Complainant is Cdiscount, France, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Contact Privacy Inc. Customer 0155775631, Canada / Jaouad Jermoune, cdiscount1, 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 5, 2019. On December 5, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 December 6, 2019, 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 amended Complaint on December 10, 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 the Respondent of the Complaint, and the proceedings commenced on December 12, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 1, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 2, 2020. The Center appointed Marie-Emmanuelle Haas as the sole panelist in this matter on January 15, 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 Cdiscount (the Complainant) is a French e-commerce website offering a wide range of products including high-tech, IT, household appliances, personal app, food, etc. It is a subsidiary of Cnova NV, which is the e-commerce Group of the Casino Group, a French retail company. The Complainant employs 1,500 employees, has about 16 million customers over the world, makes 85,000 sales per day on average, and has a business volume of EUR 2,741 million and a turnover of EUR 1,765 million. It maintains a strong Internet presence through its primary website “www.cdiscount.com” with an average of 58.34 million visits during the period of May 2019 to October 2019 according to Similarweb.com. Its primary website is also ranked by Aexa.com as 20th most popular site in France, and 940th in the world. The Complainant is the owner of many trademarks consisting or including the word “cdiscount” such as: - The word French trademark CDISCOUNT No. 3558719 registered on February 27, 2008, in classes 9, 35, 36, 37, 38, 39, 40, 41, and 43, and renewed on July 13, 2018. The disputed domain name was registered on September 22, 2019. The name of the underlying registrant was not disclosed on the WhoIs. The Registrar identified “M. Jaouad Jermoune,cdiscount1”, as the underlying registrant. First, the disputed domain name resolved to a website that copied Complainant’s website design, color scheme and logo. On October 12, 2019, the Complainant sent an email to the hosting provider asking to take down the website to which the disputed domain name resolved. The website was taken down on October 12, 2019. After this takedown, the Respondent started to use the disputed domain name to redirect Internet users to a third party e-commerce website found at “www.discountoujours.com”. This website contains an “About Us” page that copies the Complainant’s logo and the content of its primary website. 5. Parties’ Contentions A. Complainant The Complainant contends that the disputed domain name is identical or confusingly similar to the trademark registrations of the Complainant, since the disputed domain name reproduces the CDISCOUNT trademarks on which the Complainant has rights. The Complainant explains that this similarity is not affected by the generic Top-Level Domain (“gTLD”) extension “.com”, since it is a technical requirement of registration. The similarity is neither affected by the adjunction of the non-distinctive numeral “1” to the end of the CDISCOUNT trademark. It also explains that the Respondent‘s use of the disputed domain name contributes to the confusion by first resolving to a website that copied the Complainant’s website design, color scheme and logo and then by redirecting to a third party e-commerce website “www.discountoujours.com” that copies the logo and “About Us” of the Complainant’s webpage content. It suggests to Internet users that the disputed domain name is related to the Complainant’s trademark. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the name CDISCOUNT. According to the information issued from the trademark database of the National Institute of Industrial Property (“INPI”) and WIPO, the granting of registrations to the Complainant for the CDISCOUNT trademark is prima facie evidence of the Complainant’s ownership and exclusive right to use the CDISCOUNT trademark. The Complainant submits that the Respondent is not sponsored or affiliated with the Complainant nor authorized or licensed by the Complainant to use its CDISCOUNT trademarks. It contends that the Respondent is not commonly known by the disputed domain name, which evinces a lack of rights or legitimate interests. In addition, the Respondent registered the disputed domain name using a privacy service to hide its real name, which past UDRP panels have also found to equate to a lack of legitimate interest. See Jackson National Life Insurance Company v. Private WhoIs www.jacksonnationallife.com N4892,WIPO Case No. D2011-1855. According to the Complainant, no CDISCOUNT1 trademark has been registered by the Respondent, and it has not been using it in any other way that would give it any legitimate interests or rights in this name. Therefore, it considers that the Respondent has no trademark rights in respect of the name CDISCOUNT. The Complainant asserts that the Respondent’s goal was to mislead Internet users to its website, that was reproducing the CDISCOUNT logo and trademark, and which purely consisted of a replica of the Complainant’s website. The redirection of the disputed domain name to a third party’s website “www.discountoujours.com” that competes with the Complainant’s business and that copies its “About Us” page is not a bona fide and legitimate noncommercial use. The Complainant contends that the disputed domain name was registered in bad faith, considering its strong international reputation and its well-known CDISCOUNT trademark. It considers that by registering a domain name containing the CDISCOUNT trademark in its entirety with the addition of the numeral “1”, the Respondent created a confusion with the Complainant’s website, and as such demonstrated a knowledge of and familiarity with the Complainant’s brand and business. Further, given the facts that the Respondent has been using the disputed domain name in order to pass itself off as the Complainant, it serves as evidence of the Respondent’s awareness of the Complainant’s business, and therefore “it’s not possible to conceive of a plausible situation in which the Respondent would have been unaware of this fact at the time of registration” according to the prior UDRP decision Telstra Corp. Ltd v. Nuclear Marshmallows,WIPO Case No. D2000-0003. Therefore it is obvious that the use of this disputed domain name could only be in bad faith. Moreover, the Complainant affirms that the Respondent’s use of the disputed domain name constitutes a disruption of the Complainant’s business because it misleads the consumers for commercial gain, and therefore unfairly competes with the business of the Complainant. At last, the Respondent registered the disputed domain name under a privacy service, which past UDRP panels have also found as serving as further evidence of bad faith registration and use, notably in Dr. Ing. H.C.F. Porsche AG v. Domain by Proxy, Inc. and Sabatino Andreoni,WIPO Case No. D2003-0230. The Complainant requests the transfer of the disputed domain name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant has submitted evidence of its prior registered CDISCOUNT trademarks which are protected in France and in other countries. The Complainant’s CDISCOUNT trademarks are well-known in France and internationally for e-commerce services. The disputed domain name entirely incorporates the Complainant’s CDISCOUNT well-known trademark. The gTLD “.com” is a standard registration requirement, and may be disregarded when determining identity or confusing similarity under the first element. The adjunction of the numeral “1” does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s CDISCOUNT trademarks. Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s CDISCOUNT trademark. The condition of paragraph 4(a)(i) of the Policy has therefore been satisfied. B. Rights or Legitimate Interests Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the disputed domain name by demonstrating any of the following: (i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or (ii) the Respondent has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or (iii) 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 or service mark at issue. The Respondent did not respond to the Complaint. Consequently, it did not provide any evidence or allege any circumstance to establish that it has rights or legitimate interests in the disputed domain name. Prior to its takedown that occurred on October 12, 2019, the disputed domain name resolved to a website that copied the Complainant’s website design, color scheme and logo. After its takedown, as evidenced by screenshots dated November 13, 2019, it was redirecting to the website “www.discountoujours.com” reproducing the Complainant’s logo and “About Us” page. This use is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. Resolving to such a webpage aims at confusing Internet users and is tarnishing the CDISCOUNT well-known trademarks. In the circumstances of this case, the Panel finds that the Complainant has established a prima facie case of the Respondent’s lack of rights or legitimate interests in relation to the disputed domain name, which the Respondent has not rebutted. The condition of paragraph 4(a)(ii) of the Policy has therefore been satisfied. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy sets out examples of circumstances that will be considered by a Panel to be evidence of bad faith registration and use of a domain name. It provides that: “For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: (i) circumstances indicating that the respondent has registered or the respondent 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’s documented out-of-pocket costs directly related to the domain name; or (ii) 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) 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 your website or other on-line 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.” Given the well-known character of the CDISCOUNT trademark in France, the fact that the Respondent is domiciled in France, that the disputed domain name incorporates the well-known CDISCOUNT trademark, and the fact that the website at the disputed domain name clearly copied the Complainant’s website, the Panel finds that the Respondent was well aware of the Complainant’s rights in the CDISCOUNT trademark when it registered the disputed domain name. Therefore, the Panel finds that the disputed domain name was registered in bad faith. Given the foregoing, the Panel determines that, according to paragraph 4(b)(iv) of the Policy, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s trademark 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. The imitation of the Complainant’s web design, color scheme, logos and “About Us” page at the website that the disputed domain name resolve to, seeks to target the CDISCOUNT trademark and confirms the Panel’s latter finding. Therefore, the Panel finds that the disputed domain name was used in bad faith. For all the above reasons, the Panel is of the opinion that the Complaint satisfies the requirement of paragraph 4(a)(iii) that the disputed domain name was registered and is being used in bad faith by the Respondent. 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 Marie-Emmanuelle Haas
- The word French trademark CDISCOUNT No. 4098840 registered on June 18, 2014, in classes 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, 17, 18, 19, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 34, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, and 45.
- The semi-figurative French trademark CDISCOUNT No. 4100806 registered on June 25, 2014, in classes 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, 17, 18, 19, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 34, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, and 45.
- The word International trademark CDISCOUNT No. 1225231 registered on June 20, 2014, in classes 7, 8, 9, 11, 14, 18, 20, 21, 25, 28, 35, and 38.
The Respondent is not known under the disputed domain name and has not been licensed or authorized to use the well-known CDISCOUNT trademark or to register the disputed domain name.
Sole Panelist
Date: January 28, 2020
Full & Egal Universal Law Academy