The Complainant is Cheval Blanc Patrimoine, SAS, France, represented by Promark, France.
The Respondent is WhoisGuard, Inc., Panama / Kevin Tardes, France. 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 22, 2020. On June 22, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 22, 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 June 23, 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 June 26, 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 June 30, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 20, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 21, 2020. The Center appointed Benjamin Fontaine as the sole panelist in this matter on July 29, 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 the company Cheval Blanc Patrimoine, specialized in investment advice, wealth management, and insurance brokerage. The Complainant among other operates a website available at the address “www.chevalblanc-patrimoine.fr” to carry out its activities. For the purpose of the Complaint, the Complainant relies on the following trade mark registrations (Annex 7 to the Complaint), in particular: - French trade mark registration No. 4112595 CHEVAL BLANC PATRIMOINE in class 36 filed on August 19, 2014. - French trade mark registration No. 4459274 in classes 35, 36, and 41 filed on June 6, 2018. - French trade mark registration No. 4459279 CHEVAL BLANC PATRIMOINE in classes 35, 36, and 41 filed on June 6, 2018. The disputed domain name Initially, the disputed domain name apparently redirected users to the official website of the Complainant. Subsequently, it hosted a basic webpage where the Complainant’s trade mark and logo were reproduced, along with a message of pending update. At present, this webpage does no longer reproduce the Complainant’s trade mark. It simply displays the update message and offers means of contact. Also, the Respondent operates emails usurping the identity of the Complainant and of one of its employees. These emails are used to operate a fraudulent phishing scheme, with proposals of investments to potential clients of the Complainant. 5. Parties’ Contentions A. Complainant The arguments of the Complainant on the three elements of the Policy can be summarized as follows: First, the Complainant claims that the disputed domain name wholly incorporates the Complainant’s trade marks CHEVAL BLANC PATRIMOINE and that the disputed domain name is used for the same activities as the Complaint’s main business. Second, the Complainant asserts that the Respondent has no rights in relation to the Complainant’s trade mark, and that it has no connection with the Complainant and has no license or authorization by the Complainant to use the Complainant’s trade marks or the Complainant’s trade and corporate name. Besides, the Respondent is not making a “legitimate noncommercial or fair use of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trade mark at issue” within the meaning of the Policy. On the contrary, the Respondent reproduces the Complainant’s trade marks in the disputed domain name, to benefit from the Complainant’s investments and reputation and to divert users of the Complainant’s website. The Respondent even uses the name of the chairman and the name of an actual employee of the Complainant in its email addresses in order to imitate the Complainant and to create a confusion. Third, on the issue of bad faith, the Complainant has referred again to the fact that the disputed domain name is used to attract Internet users in order to propose doubtful investments and that the Respondent uses an email address to communicate with the clients containing the name of an employee of the Complainant. Moreover, as the Internet user is redirected to the Complainant’s official website while clicking on the disputed domain names, he has no means to verify the true identity behind the disputed domain name The Complainant further submits that the Respondent’s identity is concealed. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Preliminary issue regarding a concurrent court proceeding On June 16, 2020, prior to the filing of this Complaint, the Complainant filed a complaint with the Tribunal Judiciaire de Paris (Judiciary Court of Paris). This court is competent to judge cybercrimes against intellectual property rights. A copy of the complaint was filed as Annex 14 to the Complaint. In accordance with paragraph 18(a) of the Rules, “[i]n the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision”. In the present case, the Panel considers that the conditions for a suspension or a termination of the proceedings are not met, and will therefore proceed to a decision. Indeed, the Panel has reviewed the reliefs sought by the Complainant in the complaint filed in June 2020 and they are not directly targeted at the disputed domain name. What is sought in the complaint is the conduct of an investigation and the institution of criminal proceedings against the entities or individuals responsible for the infringement of the intellectual property rights of the Complainant. Therefore, there is no interference, no overlap, between the two proceedings. Last, but not least, the Complainant itself has opted to seek remedy under the UDRP as an alternative dispute resolution mechanism, and the Respondent has not objected to this initiative. See section 4.14.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). 6.2 Substantive issues Paragraph 4(a) of the Policy requires that the Complainant prove all of the following three elements in order to be successful in these proceedings: (i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name was registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant, under the first requirement of paragraph 4(a) of the Policy, needs to establish that the disputed domain name is confusingly similar to a trade mark or a service mark in which it has rights. The Complainant owns several trade mark registrations over the sign CHEVAL BLANC PATRIMOINE, which is the entirety of the disputed domain name. There is plain identity between the trade marks of the Complainant and the disputed domain name, insofar the generic Top-Level Domain (“gTLD”) “.com” is not taken into account for the purpose of the comparison. Therefore, the first element of the Policy is satisfied. B. Rights or Legitimate Interests Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. In this case, the Complainant has sufficiently argued that the Respondent is not commonly known by the disputed domain name, and has not been authorized by the Complainant to register and use the disputed domain name. Further, the impersonation of the Complainant’s identity, through the usurpation of an employee’s identity, is obviously not a bona fide offering of services. Accordingly and absent specific allegations of the Respondent, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith In order to prevail under the third element of paragraph 4(a) of the Policy, the Complainant must demonstrate that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists a number of circumstances, which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. These are: (i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the disputed domain name; or (ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant’s trade mark or service 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 disputed domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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. Regarding the registration of the disputed domain name in bad faith, the Panel notes that the Respondent has reproduced the Complainant’s distinctive trade mark CHEVAL BLANC PATRIMOINE without alteration or addition. Besides, the Respondent is domiciled in France, where the Complainant operates its activities. This is hardly a coincidence and raises the preliminary assumption that the disputed domain name has been registered with harmful intent. This presumption has not been contradicted by the Respondent. Furthermore, the evidence shows that the Respondent is using the disputed domain name to perpetrate a fraud: the Respondent impersonates the Complainant’s identity as part of a phishing scheme. He operates emails pretending that they are genuine emails coming from the Complainant and one of its employees, in an attempt to attract and abuse possible investors Given that the disputed domain name is used to commit fraud against the interests of the Complainant and its clients, a finding of bad faith registration and use is undisputable (see, Graybar Services Inc. v. Graybar Elec, Grayberinc Lawrenge,WIPO Case No. D2009-1017). Accordingly, the third element set out in paragraph 4(a) of the Policy is also satisfied. 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 Benjamin Fontaine
Sole Panelist
Date: August 12, 2020
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