Complainant is Ineo SA, France, represented by PwC Société d'Avocats, France.
Respondent is Proxy Protection LLC, Proxy Protection LLC, United States of America (“United States”) / Farid Saidi, United States.1 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 9, 2020. On March 9, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 12, 2020, 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 March 12, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on March 15, 2020. 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 Respondent of the Complaint, and the proceedings commenced on March 18, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 7, 2020. The Center received two email communications from Respondent on March 18, 2020. On March 23, 2020, Complainant requested the suspension of the proceeding. Pursuant to paragraph 17 of the Rules, the proceeding was suspended until April 22, 2020, for purposes of settlement discussions concerning the disputed domain name. On April 17, 2020, Complainant contacted the Center requesting the reinstitution of the proceeding. The proceeding was reinstituted on April 20, 2020, and the Response due date was recalculated as of that date, being May 5, 2020. No further communications were received from Respondent. On May 6, 2020, pursuant to paragraph 6 of the Rules, the Center notified the Parties that it would proceed to panel appointment. The Center appointed Stephanie G. Hartung, Christophe Caron, and Pablo A. Palazzi as panelists in this matter on May 14, 2020. The Panel finds that it was properly constituted. Each member of 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 a company organized under the laws of France which belongs to the multinational Engie group of companies, known to be active in the electricity industry. Complainant has provided evidence that it is, inter alia, the registered owner of the international (IR) trademark (word mark) INEO, registration number: 770772, registration date: October 25, 2001, status: active, with protection for numerous countries worldwide. Moreover, Complainant has demonstrated to own several domain names consisting of the combined terms and brands “Engie” and “Ineo”, e.g., the domain names Respondent, according to the disclosed WhoIs information for the disputed domain name, is a resident of the United States who registered the disputed domain name on August 28, 2019, which so far apparently has never been used to resolve to any active content on the Internet. Complainant requests that the disputed domain name be transferred to Complainant. 5. Parties’ Contentions A. Complainant Complainant contends that the Engie group of companies, to which it belongs, ranks among the world’s largest electric utilities companies with 160,000 employees and the “Engie” brand having acquired considerable recognition worldwide through substantial advertising efforts. Complainant points to the fact that its tradename indeed is “Engie Ineo” as it is reflected, inter alia, in Complainant’s several domain names. Complainant submits that the disputed domain name is confusingly similar to its INEO trademark as it incorporates the latter in its entirety, simply added by the ENGIE trademark belonging to Complainant’s parent company. Moreover, Complainant asserts that Respondent has no rights or legitimate interests in respect of the disputed domain name since (1) the disputed domain name is not currently used, (2) the disputed domain name is composed of two well-known trademarks, and (3) Respondent has been hiding its identity by a proxy service. Finally, Complainant argues that Respondent registered and is using the disputed domain name in bad faith since (1) given that the trademarks INEO and ENGIE, of which the disputed domain name is composed, are both distinctive and well known, it is unlikely that the disputed domain name could be lawfully used by anyone other than Complainant, (2) the disputed domain name is the exact opposite of Complainant’s main domain name Respondent did not submit a formal Response. The Center, however, received two email communications by Respondent dated March 18, 2020, stating that the disputed domain name was not in use and offering an authentication (auth) code for purposes of transferring the disputed domain name voluntarily upon Complainant. 6. Discussion and Findings Under paragraph 4(a) of the Policy, Complainant carries the burden of proving: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and Respondent’s lack of a formal Response in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(f) of the Rules provides that if Respondent does not submit a formal response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint. Further, according to paragraph 14(b) of the Rules, the Panel may draw such inferences from Respondent’s failure to submit a formal Response as it considers appropriate. A. Identical or Confusingly Similar The Panel concludes that the disputed domain name The disputed domain name incorporates the INEO trademark in its entirety. Numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that the disputed domain name is at least confusingly similar to a registered trademark (see e.g. PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS),WIPO Case No. D2003-0696). Moreover, it has been held in many UDRP decisions and has become a consensus view among UDRP panels (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.12), that where Complainant’s trademark is still recognizable within the disputed domain name, the addition of other third-party trademarks is insufficient, in and of itself, to avoid the finding of confusing similarity under the first element of the UDRP. Accordingly, while not a third-party trademark as such, the addition of the term “engie”, which correlates to the ENGIE brand and trademark of Complainant’s parent company, does not dispel the confusing similarity arising from the incorporation of Complainant’s INEO trademark in the disputed domain name, as the INEO trademark is obviously still recognizable therein. Therefore, Complainant has established the first element under the Policy set forth by paragraph 4(a)(i). B. Rights or Legitimate Interests The Panel is further convinced on the basis of Complainant’s undisputed contentions that Respondent has not made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, nor can it be found that Respondent has made a legitimate noncommercial or fair use thereof without intent for commercial gain. Respondent has not been authorized to use Complainant’s INEO trademark, either as a domain name or in any other way. Also, there is no reason to believe that Respondent’s name somehow corresponds with the disputed domain name and Respondent does not appear to have any trademark rights associated with the terms “Ineo” and/or “Engie” on its own. Finally, Respondent so far apparently has not made use of the disputed domain name whatsoever, e.g., by resolution to any active content on the Internet. UDRP panels, however, have recognized that the mere registration of a domain name, even one that is comprised of a confirmed dictionary word or phrase, does not by itself automatically confer rights or legitimate interests in the disputed domain name (see WIPO Overview 3.0, section 2.10.1). Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Now, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating to the contrary (see WIPO Overview 3.0, section 2.1). Given that Respondent has not replied to Complainant’s contentions, and that its email communications of March 18, 2020, addressed to the Center offer to transfer the disputed domain name voluntarily upon Complainant, Respondent has not met that burden. Therefore, the Panel finds that Complainant has also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy. C. Registered and Used in Bad Faith The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith. As a general rule, panels have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding (see WIPO Overview 3.0, section 3.3). While panels will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include e.g.: the degree of distinctiveness or reputation of Complainant’s mark, the failure of Respondent to submit a response or to provide any evidence of actual or contemplated good faith use, or the implausibility of any good faith use to which the domain name may be put. In the present case, Complainant contends, and Respondent has not challenged this contention, that both its INEO trademark as well as the ENGIE trademark of its parent company enjoy considerable reputation; given that those trademarks are both reflected in the disputed domain name, it is rather obvious that Respondent was well aware thereof when creating the latter. Moreover, Respondent’s has not submitted a formal Response, but rather indicated in its email communications of March 18, 2020, to be willing to transfer the disputed domain name voluntarily upon Complainant. In light of these overall circumstances to this case, it is simply implausible that Respondent did not aim at targeting Complainant’s INEO brand when registering the disputed domain name, and, therefore, intended to take unfair advantage of or otherwise abuse Complainant’s INEO trademark, thus acting in bad faith within the larger meaning of paragraph 4(b) of the Policy (see WIPO Overview 3.0, section 3.3). In this context, the Panel has also noted that Respondent not only made use of a WhoIs privacy service in order to conceal its true identity, but also provided fault or incomplete contact information in the WhoIs register for the disputed domain name since, according to the email correspondence between the Center and the postal courier service, the Written Notice on the Notification of Complaint dated March 18, 2020, could not be delivered. These facts at least throw a light on Respondent’s behavior which supports the Panel’s bad faith finding. Accordingly, the Panel holds that Complainant has also satisfied the third element under the Policy as set forth by paragraph 4(a)(iii). 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 Stephanie G. Hartung Christophe Caron Pablo A. Palazzi 1 It is evident from the case file that Proxy Protection, LLC, United States, is a privacy protection service and that Farid Saidi, United States, is the underlying registrant of the disputed domain name. Therefore, unless otherwise indicated, the term “Respondent” is used by the Panel in the case at hand to refer to the latter underlying registrant only.
(ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
Presiding Panelist
Panelist
Panelist
Date: May 26, 2020
Full & Egal Universal Law Academy