The Complainant is Ile-de-France Mobilités, France, represented by De Gaulle Fleurance & Associés, France.
The Respondent is Whois Agent, Netlify Inc, United States of America (“United States”). 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 27, 2020. On March 27, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 7, 2020, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that 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 April 15, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 5, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 6, 2020. The Center appointed Jacques de Werra as the sole panelist in this matter on May 14, 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 State-owned entity which is in charge of organizing and operating large public transportation services in Paris and its suburbs. It invests and innovates to improve mobility and services offered to passengers in the Ile-de-France region. It has an operating budget of EUR 10 billion. To access public transportation organized by the Complainant, passengers can choose between various subscription offers, including a rechargeable transportation pass which is called the “Navigo” card. Nearly 13 million Navigo cards were sold in 2017 and this number is continuously increasing. The Complainant is the owner of a French word mark NAVIGO filed on April 20, 2016 and registered on August 26, 2016 under No. 4266294 for products and services in classes 9, 12, 16, 18, 35, 36, 37, 38, 39, 41, and 42 (the “Trademark”). As a result of the long public transportation strikes which occurred in France in December 2019, the Complainant’s President publicly announced on December 19, 2019, her intention to negotiate with other public entities the refund of the December 2019 monthly subscription fee to the holders of Navigo cards. On January 8, 2020, this refund policy was confirmed and the Complainant indicated that holders of Navigo cards who will file a refund request on a dedicated online platform set to open on January 31, 2020 will get a refund. The Complainant registered the domain name Since the announcement of the refund mechanism on December 19, 2019, the Complainant was the victim of several fraudulent domain name registrations among which some were used to send fraudulent emails to users and to gather their personal data (including their bank account details). The Complainant warned its users of such registrations through its general website “www.iledefrancemobilites.fr/dedommagement-navigo/” but cannot be sure that its users will not be victim of these behaviors. The Disputed Domain Name was registered on January 9, 2020. It resolves to a website which reproduces the Complainant’s Trademark and a picture of the Navigo card on the right side. When clicking on a contact box on the website (with a text in French: “Contactez-nous ici !”), users are redirected to another website associated to the domain name The Complainant claims that the Disputed Domain Name is identical or at least highly similar to Complainant’s Trademark. The content of the website accessible through the Disputed Domain Name is in French and relates to the refund of Navigo cards monthly subscriptions. Such website and its associated domain name are thus obviously directed to French users. The Disputed Domain Name reproduces in its entirety the Complainant’s Trademark that is a highly distinctive and well-known mark and associates it with the generic term “remboursement” which is understood by the French public as meaning “refund”. The mere addition of this descriptive term is obviously unable to prevent a finding of confusing similarity and to distinguish the Disputed Domain Name from the Complainant’s Trademark. This is especially applicable to the case at hand since in early 2020, the Complainant announced that the monthly subscription fee for December 2019 will be integrally refunded to holders of Navigo cards in order to compensate the public transportation strikes that affected passengers during this month. The term “remboursement” is descriptive for such general refund and likelihood of confusion between the Complainant’s Trademark and the Disputed Domain Name is all the more striking. All these elements show that the Respondent’s Disputed Domain Name is confusingly similar to the Trademark in which the Complainant has rights. Based on searches made by the Complainant, the Respondent holds no intellectual property rights over any trade mark consisting of the terms “remboursement” and “navigo” and, especially, “remboursementnavigo”. In addition, the Complainant has never authorized the Respondent to register and use the Disputed Domain Name containing the Trademark, nor did it grant any permission to use the Trademark to the Respondent. Finally, the Respondent can claim no legitimate interest or bona fide use of the Disputed Domain Name. This is not only due to the likelihood of confusion but also because the Respondent has registered and used the Disputed Domain Name in bad faith. The Respondent therefore has no rights or legitimate interests in the Disputed Domain Name. The Complainant alleges that the Respondent’s decision to register and use the Disputed Domain Name which is confusingly similar to the Complainant’s Trademark has been done on purpose and in bad faith. The registration was made in bad faith because the strong reputation and renown of the Complainant’s Trademark makes it impossible for the Respondent to have been unaware that the registration and use of the Disputed Domain Name would violate the Complainant’s rights. The circumstances of the registration of the Disputed Domain Name further confirms that it was made in bad faith because it was made one single day after the public announcement made by the President of the Complainant and after that the Complainant had registered another domain name Under these circumstances, the Respondent’s decision to register the Disputed Domain Name is clearly a proof of bad faith registration. The Complainant further claims that the Disputed Domain Name was registered and is being used in bad faith because the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website to unduly benefit from the Complainant’s notoriety and refund announcement. The website accessible through the Disputed Domain Name refers to the public transportation strikes that occurred in December 2019 and to the Complainant’s offer to refund Navigo subscription fee for this month. The Disputed Domain Name contains the Complainant’s Trademark and also reproduces a picture of the Navigo card on the right side leading users to wrongly believe that this is the Complainant’s official refund platform. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy provides that the complainant must prove each of the following three elements in order to succeed in a UDRP proceeding: (i) the respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and The Panel is satisfied that the Complainant has rights to a trademark or service mark as reflected in the Trademark. A comparison between the Disputed Domain Name and the Trademark shows that the Disputed Domain Name is confusingly similar to the Trademark, whereby the generic Top-Level Domain (i.e. “.com”) shall be disregarded. The Disputed Domain Name consists of the Trademark before which the French word “remboursement” has been added. The addition of this dictionary term (which means refund in French) does not affect a finding of confusing similarity because the Trademark remains the key distinctive element of the Disputed Domain Name and because the dictionary term “remboursement” can be immediately connected to the reimbursement program and platform that has been set up by the Complainant in January 2020. On this basis, the addition of the descriptive French term “remboursement” does not prevent a finding of confusing similarity between the Disputed Domain Name and the Trademark. As a result, based on the rights of the Complainant in the Trademark and on the confusing similarity between the Trademark and the Disputed Domain Name, the Panel finds that the condition of paragraph 4(a)(i) of the Policy is met. 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. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests, and once such prima facie case is made the burden of production shifts to the respondent to come forward with relevant evidence of rights or legitimate interests in the domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) section 2.1. In the Panel’s opinion, the Complainant has made a prima facie case against the Respondent. The Respondent indeed registered the Disputed Domain Name that reflects the Trademark owned by the Complainant without the authorization of the Complainant, in a way that can only reasonably be explained as a reference to the Complainant’s Trademark, particularly in view of the chronological circumstances of the registration of the Disputed Domain Name (which was made one day after the official confirmation of the refund policy by the Complainant as described under section 4 above). The use of the Disputed Domain Name in connection with a website that replicates the official website of the Complainant and which points to a third party commercial website offering travel services (i.e. the organization of travels with friends to unknown destinations) which have no connection with the Complainant’s activities cannot confer rights or legitimate interests to the Respondent. SeeWIPO Overview 3.0, section 2.5.3(respondent’s use of a complainant’s mark to redirect users (e.g., to a competing site) would not support a claim to rights or legitimate interests). The Complainant has thus established prima facie that the Respondent has no rights or legitimate interests in the Disputed Domain Name, which has not been challenged by the Respondent (even assuming that it could be challenged) who has not participated in the proceedings. On this basis, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and that paragraph 4(a)(ii) of the Policy is met. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of registration and use of a domain name in bad faith: (i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of the complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; (ii) circumstances indicating that the respondent 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; (iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its website or other online 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 its website or location. The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. See Match.com, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230. In this case, the Panel holds that the Respondent registered the Disputed Domain Name in bad faith because the Disputed Domain Name clearly targets the Complainant’s Trademark and Complainant’s activities. Consequently, the choice of the Disputed Domain Name cannot be reasonably explained otherwise than as a reference to the Complainant’s Trademark. The use of the Disputed Domain Name in connection with a website that replicates the official website of the Complainant in order to redirect users to a commercial website offering travel services and mentioning a way how to spend the refund obtained from the Complainant confirms that the Respondent intentionally targeted the Complainant and the Complainant’s Trademark by registering and using the Disputed Domain Name. These are circumstances which indicate that the Respondent intentionally is using the Disputed Domain Name in an attempt to attract, for commercial gain, Internet users to its website or other online 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 its website or location under Paragraph 4(b)(iv) of the Policy. On this basis, the Panel finds that the Respondent registered and uses the Disputed Domain Name in bad faith pursuant to paragraph 4(b) of the Policy, so that the conditions of paragraph 4(a)(iii) of the Policy are met. 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 Jacques de Werra
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the respondent’s domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Sole Panelist
Date: May 26, 2020
Full & Egal Universal Law Academy