The Complainant is Keolis, France, represented by Ordipat, France.
The Respondent is Frederic Cliche, Canada. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 15, 2020. On January 15, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On January 16, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 17, 2020 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 January 21, 2020. 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 January 29, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 18, 2020. The Respondent submitted several email communications to the Center, on January 17 and 21, 2020 and February 2 and 8, 2020. The Respondent confirmed on February 12, 2020 that his email communication of February 8, 2020 was his last response to the file. The Center notified the Commencement of the Panel Appointment on February 13, 2020. The Center appointed W. Scott Blackmer as the sole panelist in this matter on February 19, 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 private French-Canadian public transport company formed in 2001. It is headquartered in Paris, France and 70% owned by SNCF, the French state-owned railway company. The Complainant operates networks of buses, subways, trams, rental bikes, sea shuttles, parking lots, trolleys, and airport services around the world, including France, Canada, the United Kingdom, the United States of America, Sweden, Germany, Belgium, China, India, and Australia. It employed 65,000 people in 2018 (28,000 of them outside of France) and generated revenues of nearly EUR 6 billion. The Complainant has operated a website at “www.keolis.com” since November 2000 and uses more than 40 other domain names that include the string “keolis”, including a Canadian website at “www.keolis.ca”. The record includes media articles demonstrating that the Complainant is one of the largest and best-known global players in the field of “shared mobility”, bidding on large urban transport projects around the world and operating public transit systems from Shanghai to Las Vegas. The Complainant holds numerous registered trademarks, including the word mark KEOLIS, French Trademark Number 3094284 (April 9, 2001), International Trademark Number 773714 (registered October 3, 2001), and Canadian Trademark Number 1117807 (registered January 16, 2004). The Registrar reports that all twelve Domain Names were registered by the Respondent, an individual listing a postal address in Canada, on June 20, 2019. In his email to the Center dated January 17, 2020, the Respondent said that he is in the real estate business in Canada and purchased the Domain Names because he liked the name “keolis” and the Domain Names were available. He purchased them through his web hosting company, Weebly. The Respondent said he did not wish to cause harm and had never used or redirected the Domain Names, and he reported that they were ready to be transferred to the Complainant when they were procured through the Sedo.com auction site. The Respondent attached to this email his response to a July 22, 2019 email from Ebrand Services, acting for the Complainant, where he similarly explained that he purchased the twelve Domain Names through Weebly in good faith. The Respondent said in that email that he happened on this combination of letters by coincidence and liked it (“je suis arriver [sic] sur keolis que j'aimais bien, c'est un hasard”). He told the representative at that time that the Domain Names redirected to a blank page with the Weebly logo and directed her to the Sedo website, where the Domain Names could be purchased at auction, adding twelve more domain names for the enterprise. Since then, the hosting of the Domain Names was apparently changed to Sedo, as shown in the Registrar’s verification reply to the Center. The Complainant attaches screen shots of the websites to which the Domain Names resolved in December 2019, which are similar to those associated with the Domain Names at the time of this Decision. All twelve Domain Names resolved to similar Sedo landing pages headed with the Domain Name and displaying third-party, pay-per-click (“PPC”) advertising links, as well as an invitation to “Buy this domain!” for an asking price initially of USD 5,000 (or more recently USD 500). The advertising links predominantly concern transportation services, advertised in French or English, depending on the location of the user and the browser employed. Typically, the following notice is displayed at the bottom of the page: “This webpage was generated by the domain owner using Sedo Domain Parking. Disclaimer: Sedo maintains no relationship with third party advertisers. Reference to any specific service or trade mark is not controlled by Sedo nor does it constitute or imply its association, endorsement or recommendation.” 5. Parties’ Contentions A. Complainant The Complainant contends that the Domain Names are all identical to its registered KEOLIS mark, disregarding the generic Top-Level Domains (“gTLDs”) that are required for registration in the domain name system. The Complainant denies authorizing the Respondent to use its mark and notes a lack of evidence that the Respondent has ever been known by a corresponding name or done business under such a name. The Complainant observes that its mark is a “distinctive and made-up word”, concluding that there is a high risk of implied affiliation with the Complainant. The Complainant infers the likelihood that the Respondent was aware of its distinctive mark and acquired twelve Domain Names, initially offering them publicly for USD 5,000 apiece, in an attempt to induce an offer from the Complainant to purchase them for an amount far in excess of the Respondent’s out-of-pocket costs (estimated at USD 15 per Domain Name). B. Respondent The Respondent did not submit a formal Response. His January 17, 2020 email to the Center did not challenge the Complainant’s trademark but pointed out that the Complainant is a transport company and the Respondent is in the real estate industry. The Respondent contends that he registered the Domain Names in good faith because he liked the string “keolis” and did not use it for a website. In later communications, the Respondent asked to be reimbursed about USD 25 for each Domain Name and USD 200 for his time spent on this dispute. He offered also to simply let the registrations lapse in five months. 6. Discussion and Findings Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following: (i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) the respondent has no rights or legitimate interests in respect of the domain name; and (iii) the domain name has been registered and is being used in bad faith. Under paragraph 15(a) of the Rules, “[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”. 6.1 Preliminary Matter: Consolidation The Complainant recommends consolidating the proceeding with respect to all twelve Domain Names, because they involve the same parties and the same second-level string. The Respondent, in his communications with the Center, has not objected. The Panel agrees that consolidation is in the best interest of equity and efficiency and proceeds on that basis. See Rules, para. 3(c); WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview 3.0”), section 4.11.1. 6.2 Substantive Issues A. Identical or Confusingly Similar The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the domain name”. See WIPO Overview 3.0, section 1.7. Here, every one of the twelve Domain Names is identical at the second level with the Complainant’s word mark KEOLIS. The generic Top-Level Domain (“gTLD”) “is viewed as a standard registration requirement” and as such is normally disregarded under the first element of the Complaint. Id., section 1.11.2. The Panel finds, therefore, that the Domain Name is identical to the Complainant’s registered KEOLIS mark, satisfying the first element of the Complaint. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the 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 Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or (ii) that the Respondent has been commonly known by the 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 Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. Since a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1. The Complainant has demonstrated trademark rights and a lack of permission to use the Complainant’s mark in the Domain Names. The Respondent has not advanced rights or legitimate interests, and none are apparent from a perusal of the record and the PPC landing pages associated with the Domain Names. The Respondent has merely expressed a liking for the string and offered to sell the Domain Names to the Complainant. This may be considered in connection with the arguments on bad faith, but it does not reflect rights or legitimate interests as contemplated by the Policy, paragraph 4(c). Accordingly, the Panel concludes that the Complainant prevails on the second element of the Complaint. C. Registered and Used in Bad Faith The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following (in which “you” refers to the registrant of the domain name): “(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or … “(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.” The Respondent does not admit prior knowledge of the Complainant’s mark, but it is likely. The Complainant’s mark is not a dictionary term. In his emails, the Respondent claims that he created the string comprising the second element of the Domain Names by chance and did not mean to infringe on a trademark, but he does not actually deny prior awareness of the Complainant, and he did not submit a certified Response. The Panel considers it probable that the Respondent was aware of the Complainant, as he is in the real estate business and resides in a city close to Montréal, where the Complainant’s principal operations in Canada are centered, organized as “Keolis Canada”, with a website in French and English at “www.keolis.ca”. The Complainant operates city and school buses, light rail, intercity coaches, and airport services in the Montréal region, under a variety of brands and co-brands, but the company appears periodically in local media. In any event, as the Complainant has more than 40 corresponding domain names, including those using “keolis” in popular gTLDs such as “.com”, “.org”, “net”, and “.biz”, as well as “.ca” in the Respondent’s home jurisdiction, it is unlikely that the Respondent would fail to become aware of the Complainant when making the effort to register no less than twelve “keolis” domain names on a single day. The Respondent offers no credible reason for registering the twelve Domain Names and promptly offering them for sale at auction. He suggests no business plan or other motive for registering no fewer than twelve domain names based on a coined string that just happens to coincide with the trademark of a global company. It is true that the Complainant’s representative initiated contact with the Respondent, rather than the other way around. But the Complainant, the trademark owner, was also the most obvious likely purchaser. The amounts advertised were clearly far in excess of “out-of-pocket costs”. The Respondent’s conduct can readily be characterized as consistent with the example of bad faith found in the Policy, paragraph 4(b)(i). Moreover, the Domain Names had the potential from the outset to mislead Internet users as to source or affiliation, and once the Respondent switched the hosting to Sedo and allowed the Domain Names to be used for PPC advertising, the use clearly fell within the example of bad faith described in the Policy, paragraph 4(b)(iv). Reviewing the Respondent’s communications, it seems that the Respondent does not appreciate the risks associated with trying to monetize domain names identical or similar to trademarks in which others have invested substantial resources and reputation. As described above, this is deemed bad faith under the UDRP, regardless whether the trademark holder could have blocked registrations of certain strings during the Sunrise period of a new gTLD. Moreover, there is no independent legal obligation on the registrar to determine which strings should thereafter be made available for registration. The fact that a string is available does not mean that it is necessarily “legal” or prudent to register the string, offer it for resale, and allow it to be used in the interim by any advertiser paying to be included in a network and matched to a string by a relevance algorithm. The ultimate responsibility, as reflected in both the registration agreement and the UDRP, is always on the registrant to make lawful use of the domain name and to avoid infringing the rights of others. The Panel concludes that the Complainant has established the third element of the Complaint, bad faith, within the meaning 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 Domain Names, W. Scott Blackmer
Sole Panelist
Date: March 4, 2020
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