Complainant is Compagnie Generale de Location d’Equipements, France, represented by Valérie Perrichon - Avocats, France.
Respondent is Domain Administrator d/b/a privacy.cloudns.net, Bulgaria. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 2, 2020. On June 2, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 3, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on June 5, 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 June 5, 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 June 8, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 28, 2020. On June 11, 2020, the Complainant submitted an unsolicited supplemental filing. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 29, 2020. The Center appointed Marina Perraki as the sole panelist in this matter on July 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 Complainant is a French company providing financial and leasing services under the SEFIA mark also through its website at “www.sefia.espace-clients.fr”. Complainant is the owner of French trademark registration No. 4443011 SEFIA (combined) registered on April 4, 2018 for services in International classes 35 and 36. The Domain Name was registered on December 28, 2019 and resolved to a website that purported to provide services in the field of finance and leasing (the “Website”). As Complainant demonstrated, the Website reproduced under the section “About Us” the corporate name, address and name of the last manager of Complainant’s subsidiary. The Website was taken down on May 28, 2020, as a result of a Complainant’s warning letter dated May 27, 2020 sent to the Registrar. 5. Parties’ Contentions A. Complainant Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Name. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings 6.1. Procedural Issues: Unsolicited Supplemental Filing Complainant submitted an unsolicited supplemental filing in these proceedings on June 11, 2020. The Rules make no express provision for supplemental filings by either party, except in response to a deficiency notification or if requested by the Center or the Panel. Generally, UDRP panels will only accept supplemental filings in “exceptional” circumstances where such a filing clearly shows its relevance to the case and why it was unable to provide the information contained therein in the original complaint or response (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.6). Complainant’s supplemental filing provides further argumentation in relation to Respondent’s bad faith. Nothing in the submissions would have been unavailable to Complainant at the time it filed the Complaint or the amendment to the Complaint. In these circumstances, the Panel declines to accept the supplemental filing. 6.2. Substantive Issues Paragraph 4(a) of the Policy lists the three elements, which Complainant must satisfy with respect to the Domain Name: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) 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. A. Identical or Confusingly Similar Complainant has demonstrated rights through registration and use on the SEFIA mark. The Panel finds that the Domain Name The Domain Name incorporates the SEFIA trademark of Complainant in its entirety. This is sufficient to establish confusing similarity (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525). The word “finance” which is added in the Domain Name does not avoid a finding of confusing similarity as it is non-distinctive (Wragge Lawrence Graham & Co LLP v. Registration Private, Domains by Proxy LLC / Ian Piggin,WIPO Case No. D2015-0135; WIPO Overview 3.0, section 1.8). The generic Top-Level Domain (“gTLD”) “.com” is disregarded, as gTLDs typically do not form part of the comparison on the grounds that they are required for technical reasons (Rexel Developpements SAS v. Zhan Yequn,WIPO Case No. D2017-0275; Hay & Robertson International Licensing AG v. C. J. Lovik,WIPO Case No. D2002-0122). Complainant has established Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements: (i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or (iii) you [Respondent] are 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. The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name. Respondent has not submitted any response and has not claimed any such rights or legitimate interests with respect to the Domain Name. As per Complainant, Respondent was not authorized to register the Domain Name. Respondent did not demonstrate prior to the notice of the dispute, any use of the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services. Complainant demonstrated that the Domain Name resolved to the Website, which reproduced Complainant’s subsidiary’s name, physical address and last manager’s name under the tab “About Us”. The use of a domain name, which intentionally trades on the fame of another and suggests affiliation with the trademark owner cannot constitute a bona fide offering of goods or services (Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”,WIPO Case No. D2000-0847; WIPO Overview 3.0, section 2.8). The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Name. Complainant has established Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in “bad faith”: (i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or (ii) that 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 Respondent has engaged in a pattern of such conduct; or (iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or (iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location. The Panel concludes that Respondent has registered and used the Domain Name in bad faith. Because the SEFIA mark had been used and registered by Complainant, at the time of the Domain Name registration, the Panel finds it more likely than not that Respondent had Complainant’s mark in mind when registering the Domain Name (Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc.,WIPO Case No. D2014-1754; Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net,WIPO Case No. D2000-0226). Furthermore, SEFIA is a fictitious mark. As regards bad faith use of the Domain Name, Complainant has demonstrated that the Domain Name was used to create the Website, which, in the “About Us” section, mentioned the corporate name, address and last manager’s name of Complainant’s subsidiary, thereby giving the false impression that it is operated by Complainant or a company affiliated to Complainant. The Domain Name operated therefore by intentionally creating a likelihood of confusion with Complainant’s trademark and business as to the source, sponsorship, affiliation or endorsement of the website it resolved to. This can be used in support of bad faith registration and use (Oculus VR, LLC v. Sean Lin,WIPO Case No. DCO2016-0034; and WIPO Overview 3.0 , sections 3.3 and 3.4 ). The Panel further considers the following factors: (i) the failure of Respondent to submit a response and (ii) the fact that the Domain Name is registered with a privacy shield service to hide the registrant’s identity. The concealment of the Domain Name holder’s identity through use of a privacy shield constitutes further indication of bad faith (Fifth Third Bancorp v. Secure Whois Information Service,WIPO Case No. D2006‑0696). Under these circumstances and on this record, the Panel finds that Respondent has registered and is using the Domain Name in bad faith. Complainant has established 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 Domain Name Marina Perraki
Sole Panelist
Date: July 29, 2020
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