The Complainant is ICADE, France, represented by De Gaulle Fleurance & Associés, France.
The Respondents are Private User, Domain Privacy Protector Ltd / isseu diouck, ICADE, United Kingdom and utm-contractor, United Kingdom. 2. The Domain Names and Registrars
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 26, 2020. On June 26, 2020, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On June 29, 2020, eNom and Register SpA transmitted by email to the Center their respective verification responses disclosing registrant and contact information for the disputed domain names which differed from the named Respondents and contact information in the Complaint. The Center sent an email communication to the Complainant on July 3, 2020, providing the registrant and contact information disclosed by the Registrars, and inviting the Complainant to submit an amendment to the Complaint. The Center received email communications on July 5 and 7, 2020, from “Marianne De Battisti.” The Complainant filed an amended Complaint on July 7, 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 Respondents of the Complaint, and the proceedings commenced on July 8, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 28, 2020. The Respondents did not submit any formal response. The Center notified the Parties on July 29, 2020, that it would proceed to panel appointment. The Center appointed William R. Towns as the sole panelist in this matter on August 12, 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 prominent real estate investment and property development company organized in 1954 and headquartered in Paris, France. The Complainant trades under the ICADE name, and is the owner of several trademark registrations for the ICADE mark, including a French trademark registration for the word mark ICADE, no. 3185579, filed on September 26, 2002, and registered February 28, 2003; and a French trademark mark registration for the semi-figurative mark ICADE, no. 4336987, filed on February 10, 2017, and registered June 2, 2017. The disputed domain name The Complainant has documented a number of “icade”-formative domain names registered between March 6, 2018 and March 9, 2020, and used in fraudulent scams employing the same or similar modus operandi, some including the “Marianne De Battisti” identity. See, e.g., ICADE v. Diouck Adius,WIPO Case No. D2020-0290; ICADE & ICADE Promotion v. Icade Marianne,WIPO Case No. DEU2020-0007; ICADE v. Stephane Leblanc / Promotion Icade / Luc Vicente,WIPO Case No. D2018-2222. 5. Parties’ Contentions A. Complainant The Complainant submits that the disputed domain names The Complainant maintains that the Respondents have no rights or legitimate interests in respect of the disputed domain names. The Complainant represents that the Respondents have not been authorized to use the ICADE mark or to register and use domain names containing the ICADE mark, absent which no actual or contemplated bona fide or legitimate use of the disputed domain name could be claimed by the Respondents. The Complainant also submits based on SAEGIS database research that neither “isseudiouck” nor “utm-contractor” are registered marks. The Complainant asserts that the Respondents registered and are using the disputed domain names in bad faith. The Complainant submits it is a well-known real estate company listed on the Paris stock market, with more than 1800 employees and active throughout France. The Complainant maintains that the Respondents have deliberately registered domain names appropriating the Complainant’s well-known ICADE mark, and that since 2018 the Respondents have been perpetrators of a consistent and ongoing scam targeting the Complainant’s ICADE mark. According to the Complainant, between March 2018 and March 2020 the Respondents registered a substantial number of domain names incorporating the Complainant’s ICADE mark, using the mark in email addresses for purposes of impersonation in order to scam unsuspecting suppliers of industrial goods or other products. B. Respondent The named Respondents did not reply to the Complainant’s contentions. However, and as previously noted, on July 5, 2020, an individual using the name “Marianne De Battisti” contacted the Center, maintaining that she had bought the disputed domain names, comprised of “icade” from the letters of her name and adding “groupe” in French and “group” in English. 6. Preliminary Issue: Consolidation of Multiple Domain Names and Respondents The Complainant has requested that the disputed domain names registered by the Respondents and identified in the Complaint be consolidated in a single administrative proceeding. Consolidation of multiple registrants as respondents in a single administrative proceeding is appropriate under the Policy and Rules where the domain names or the websites to which they resolve are subject to common control, and consolidation would be procedurally efficient and fair and equitable to all parties. Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons,WIPO Case No. D2010-0281. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 4.11.2, and cases cited therein. The facts in the instant record strongly suggest that the disputed domain names have been subject to common control by the Respondents. The disputed domain names The Panel, taking into account the Respondents’ use of the disputed domain names in a manner directly affecting the Complainant’s rights, and further finding that common questions of law and fact are predominant, concludes that consolidation would be procedurally efficient, and fair and equitable to all Parties. Accordingly, the Panel will proceed to a decision on the merits of these domain name disputes. 7. Discussion and Findings A. Scope of the Policy The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber‑Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable. Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred: (i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) the respondent has no rights or legitimate interests with respect to the domain name; and (iii) the domain name has been registered and is being used in bad faith. Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i). Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations. Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the view is that the burden of production shifts to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See WIPO Overview 3.0 , section 2.1. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar The Panel finds that the disputed domain names The Complainant’s ICADE mark is clearly recognizable in the disputed domain names.3 The inclusion of the descriptive terms “group” and “groupe” in the disputed domain names does not serve to dispel the confusing similarity of the disputed domain names to the Complainant’s marks. When the relevant trademark is recognizable in the disputed domain name the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise), does not preclude a finding of confusing similarity under paragraph 4(a)(i) of the Policy.4 Generic Top-Level Domains (“gTLDs”) generally are disregarded when evaluating the identity or confusing similarity of the Complainant’s mark to the disputed domain name under paragraph 4(a)(i) of the Policy, irrespective of any ordinary meaning that might be ascribed to the gTLD. 5 Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondents have not been licensed or otherwise authorized to use the Complainant’s ICADE mark. The Respondents notwithstanding have registered multiple domain names appropriating the Complainant’s ICADE mark. The Respondents have used the disputed domain names to create email addresses in a clearly documented attempt to commit identity fraud through impersonation of the Complainant. Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a 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 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 has been commonly known by the 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 domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The Respondents have not submitted a formal response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. The Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondents’ registration and use of the disputed domain names within any of the “safe harbors” of paragraph 4(c) of the Policy. The Panel concludes from the record in this case that the Respondents were aware of the Complainant and had the Complainant’s ICADE mark in mind when registering the disputed domain names. As noted earlier, the disputed domain names are confusingly similar to the Complainant’s mark, and the record is convincing that the Respondents registered the disputed domain names with the aim of exploiting and profiting from the Complainant’s mark, impersonating the Complainant in furtherance of a fraudulent scam. Having regard to all of the relevant circumstances in this case, and in the absence of any explanation by the Respondents, the Panel concludes that the Respondents have not used or demonstrated preparations to use the disputed domain names in connection with a bona fide offering of goods or services, and that the Respondents are not making a legitimate noncommercial or fair use of the disputed domain names. There is no indication that the Respondents have been commonly known by the disputed domain names within the meaning of paragraph 4(c)(ii) of the Policy, and nothing in the record before the Panel supports a finding of the Respondents’ rights or legitimate interests in the disputed domain names. Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. 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 the 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 that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or (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; or (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 is using the domain name to intentionally 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 seeks to profit from and exploit the trademark of another. See Match.com, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230. For the reasons discussed under this and the preceding heading, the Panel considers that the Respondents’ conduct in this case constitutes bad faith registration and use of the disputed domain names within the meaning of paragraph 4(a)(iii) of the Policy. As previously noted, the Panel concludes that the Respondents were well aware of the Complainant and had the Complainant’s ICADE mark in mind when registering the disputed domain names. The Respondents’ registration of the disputed domain names in the attendant circumstances smacks of opportunistic bad faith. It is abundantly clear from the record that the Respondents’ motive in relation to the registration and use of the disputed domain names was to capitalize on the Complainant’s trademark rights by creating a likelihood of confusion with the Complainant’s mark, with the ultimate aim to profit illicitly from the perpetration of a fraudulent scheme. Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. 8. 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 names William R. Towns 1 On August 31, 2020, the Center upon inquiry was informed by Register SpA that it had taken over as the registrar after LCN.COM Ltd. voluntarily requested termination of its registrar accreditation, which was accepted by the Internet Corporation for Assigned Names and Numbers (ICANN). 2 See WIPO Overview 3.0 , section 1.7. 3 See WIPO Overview 3.0, section 1.8 and cases cited therein. 4 Id. 5 See WIPO Overview 3.0 , section 1.11 . In some instances the meaning of a particular gTLD may be relevant to assessments under the second and third elements of the Policy. See WIPO Overview 3.0, sections 1.11.2, 2.14, and cases cited therein.
Sole Panelist
Date: August 31, 2020
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