The Complainant is Union InVivo, France, represented by Fidal, France.
The Respondent is Name Redacted.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 May 12, 2020. On May 12, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 14, 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 the Complainant on May 15, 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 amendment to the Complaint on May 18, 2020. The Registrar also indicated that the language of the Registration Agreement was French. The Complaint was filed in English. The Center sent an email communication in French and English to the Parties on May 15, 2020, inviting the Complainant to provide sufficient evidence of an agreement between the Parties for English to be the language of the proceeding, a Complaint translated into French, or a request for English to be the language of the proceeding, and also inviting the Respondent to comment on the language of the proceeding. The Complainant filed a request for English to be the language of the proceeding on May 18, 2020. The Respondent did not submit any arguments. 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 in French and English of the Complaint, and the proceedings commenced on May 29, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 18, 2020. On June 3, 2020, a third party contacted the Center regarding the claimed unauthorized use of his identity and contact details in relation to the disputed domain name in the present proceedings, providing the related complaint that was filed for identity theft in March 2019. The Center sent an email communication to the Parties to inform them of receipt of this third party’s email. The Respondent did not submit any response. On June 19, 2020, the Center sent an email communication to inform the Parties that the Center would proceed to Panel appointment. The Center appointed Christiane Féral-Schuhl as the sole panelist in this matter on July 2, 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, Union InVivo, is the parent company of InVivo Group, which is one of the France’s leading agricultural cooperative groups, with 201 cooperatives and 5,500 employees. The Complainant is the owner of several trademark registrations, amongst which: - European Union word trademark UNION INVIVO No. 009969544 registered on July 7, 2013 in classes 1, 5, 31, 39 and 42; - French word trademark UNION INVIVO No. 3130855 registered on November 13, 2001 in classes 1, 5, 30, 31, 39, 42, 43, 44 and 45, duly renewed; - French figurative trademark UNION INVIVO No. 3130851 registered on November 13, 2001 in classes 1, 5, 30, 31, 39, 42, 43, 44 and 45, duly renewed; - French word trademark INVIVO No. 4288686 registered on July 21, 2016 in classes 35, 36, 37 and 44. The Complainant and/or InVivo Group is also the owner of several domain names including the term “Invivo”, amongst which: - The disputed domain name In accordance with paragraph 3(b)(ix) of the Rules, the legal and factual elements on which the Complainant relies are set out below. First of all, the Complainant asserts that the disputed domain name is confusingly similar to prior trademarks of the Complainant, pointing out that the disputed domain name wholly incorporates the terms “Union” and “Invivo” on which the Complainant has rights. The Complainant considers that it is thus very likely that the consumers will consider that the disputed domain name belongs to the Complainant. Secondly, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name, since the trademark INVIVO is naturally associated with the Complainant since it is not only used as a mark in its name but has also been used to identify the goods and services rendered by the Complainant for years. Moreover, the Complainant argues that there is no business or legal relationship between the Complainant and the Respondent, who has never been authorized by the Complainant to use the term “Invivo”. Additionally, the Complainant highlights that the disputed domain name is not really used and that it is therefore obvious that the Respondent has no rights or legitimate interests in registering or using the disputed domain name. Thirdly, the Complainant claims that the disputed domain name was registered and is being used in bad faith, with the aim of taking advantage of the reputation of the trademark of the Complainant. The Complainant reminds that the fact that the website to which the disputed domain name points is inactive does not prevent a finding of bad faith, and that, on the contrary, passive holding evidences bad faith registration and use. The Complainant finally asserts that the Respondent registered the disputed domain name in order to use it in relation with a fraudulent address to perform scams and phishing operations, especially by issuing false invoices. B. Respondent The Respondent did not reply to the Complainant’s contentions apart from the email dated June 3, 2020 received from a third party mentioned in the Procedural History above. 6. Discussion and Findings A. General remarks Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, (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. B. Language of the Proceeding Pursuant to paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, the language of the proceeding is the language of the registration agreement, subject to the authority of the Panel to determine otherwise. The Registrar indicated that the language of the Registration Agreement is French. The Complainant has requested English to be the language of the proceeding based on the following: - several elements lead the Complainant to believe that the Respondent is acting in bad faith, and merely tries to gain time; The Respondent did not comment on the language of the proceeding. UDRP panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement. Therefore, taking into consideration the Complainant’s arguments and the fact that the Respondent did not make any objection and chose not to file any response, the Panel decides that the language of the proceeding is English. C. Identical or Confusingly Similar According to the Policy, paragraph 4(a)(i), the Complainant shall prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. First of all, the Panel finds that the Complainant has provided evidence that it has trademark rights in the INVIVO and UNION INVIVO signs. Then, the Panel notices that the disputed domain name is composed of (i) the whole UNION INVIVO trademark, to which has been added the term “group”, with a hyphen between them, and (ii) the generic Top-Level Domain (“gTLD”) “.com”. The applicable gTLD in a domain name is viewed as a standard registration requirement and as such is disregarded for the purpose of determining whether a domain name is identical or confusingly similar to a trademark. The Panel wishes to remind that the first element of the UDRP serves essentially as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the domain name. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name. In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of the UDRP (see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDPR Questions, Third Edition (“WIPO Overview 3.0”)). Moreover, the Panel concurs with the opinion of prior UDRP panels which have considered that where the relevant trademark is recognizable within the disputed domain name, the addition of other terms, whether descriptive geographical, pejorative, meaningless, or otherwise, would not prevent a finding of confusing similarity (see section 1.8 of the WIPO Overview 3.0). Regarding the disputed domain name, the Panel finds that the addition of the term “group” to the UNION INVIVO trademark does not exclude confusing similarity. Further, the Panel notes that the term “group” refers to the identity of the Complainant, which is the parent company of the InVivo Group. Therefore, the Panel holds that the Complainant has established the first element of paragraph 4(a) of the Policy and that the disputed domain name is confusingly similar to the Complainant’s trademark. D. Rights or Legitimate Interests According to the Policy, paragraph 4(a)(ii), the Complainant shall demonstrate that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Policy, paragraph 4(c), outlines circumstances that if found by the Panel to be proved shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name. These circumstances are: (i) before any notice 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) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent 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. According to prior UDRP panel decisions, it is sufficient that the complainant shows prima facie that the respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production to the Respondent (see Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455). Indeed, while the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out prima facie that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element (see section 2.1 of the WIPO Overview 3.0). According to the Panel, the Complainant has shown prima facie that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that there is no business or legal relationship between the Complainant and the Respondent, who has never been authorized by the Complainant to use the UNION INVIVO nor the INVIVO trademarks. Moreover, the disputed domain name resolves to an error page, and seems to have been used in relation to an email address in order to perform scam and phishing operations, which does not represent a bona fide offering of goods or services nor a legitimate noncommercial or fair use. Therefore, the Panel considers that the Respondent does not have rights or legitimate interests in the disputed domain name. E. Registered and Used in Bad Faith According to the Policy, paragraph 4(a)(iii), the Complainant shall prove that the disputed domain name has been registered and is being used in bad faith. Thus, paragraph 4(b) provides that any one of the following non-exclusive scenarios constitutes evidence of a respondent’s bad faith: (i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name 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 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 the respondent’s website or location. First of all, the Panel notes that the disputed domain name was registered after the registration of numerous INVIVO and UNION INVIVO trademarks. Moreover, the Panel finds that the disputed domain name seems to have been used in relation to an email address indicated on fraudulent invoices, on which also reproduced one of the INVIVO figurative trademarks, proving the intention of the Respondent to impersonate the Complainant in order to obtain illegitimate payments. Considering those circumstances, the Panel reminds that the fact that the disputed domain name is resolving to an error page is not likely to avoid a finding of registration and use in bad faith. As asserted by the Complainant, passive holding of the disputed domain name in this case evidences bad faith registration and use. Consequently, the Panel considers that the disputed domain name has been registered and is being used in bad faith according to Policy, 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 Christiane Féral-Schuhl 1 The Respondent appears to have used the name and contact details of a third party when registering the disputed domain name. In light of the potential identity theft, the Panel has redacted the Respondent’s name from this Decision. However, the Panel has attached as Annex 1 to this Decision an instruction to the Registrar regarding transfer of the disputed domain name, which includes the name of the Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this Decision shall not be published due to the exceptional circumstances of this case. See ASOS plc. v. Name Redacted,WIPO Case No. D2017-1520; Banco Bradesco S.A. v. FAST-12785241 Attn. Bradescourgente.net / Name Redacted,WIPO Case No. D2009-1788.
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the Complainant shall prove the following three elements:
- the Registrar is located in the United States of America;
- the Registrar’s Domain Name Services Agreement and Terms and Conditions are written in English;
- having to translate the Complaint in French would lead to extra costs for the Complainant, who would be thus even more penalized than an already significant damage due to the disputed domain name’s fraudulent registration and use.
Sole Panelist
Date: July 16, 2020
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