The Complainant is Indigo Group, SAS, France, represented by Promark, France.
The Respondent is Frederic Lemoine, 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 July 7, 2020. On July 7, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 8, 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 July 10, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 30, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 31, 2020. The Center appointed Christiane Féral-Schuhl as the sole panelist in this matter on August 17, 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 Indigo Group, SAS, which is one of the leader in parking and individual mobility. The Complainant builds, finances and operates tailor-made parking solutions, and offers innovative services. The Complainant is the owner of numerous trademarks, in France and in the European Union, including: - The European Union word trademark INDIGO Number 014443204 registered on January 9, 2019 in classes 9, 35, 37, 38 and 39; - The French semi-figurative trademark INDIGO Number 4187612 registered on June 10, 2015 in classes 9, 35, 37, 38 and 39. The Complainant also owns the domain name 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 the disputed domain name is confusingly similar to its prior trademarks, since it wholly incorporates the INDIGO trademark, with addition of the terms “group” and “parking”. The Complainant considers that the addition of the term “group” and the term “parking” does not avoid the likelihood of confusion between the disputed domain name and the INDIGO trademarks, and on the contrary contributes to increase this likelihood of confusion since the term “group” directly refers to the Complainant’s corporate name and the term “parking” could refer to the Complainant’s activity area. Secondly, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name, since the Respondent has not been commonly known through the disputed domain name and the Complainant has never granted any license, nor any authorization to the Respondent to use the INDIGO trademark or the Complainant’s trade and corporate names. The Complainant also considers that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, and on the contrary reproduces the Complainant’s trademark and corporate name in the disputed domain name and on the related website, making Internet users believe that the Respondent is working in a partnership with the Complainant. Finally, the Complainant claims that the disputed domain name was registered and is being used in bad faith. The Complainant states that it was alerted, in May 2020, on the fact that real estate investments in car parks were being offered to third parties by malicious persons claiming to act on behalf of the Complainant, to try to obtain money from the said third parties. The Complainant argues that the disputed domain name is currently being used, at the time of the Complaint, in a fraudulent intention to attract Internet users to obtain money from them, making them believe that the Complainant is an economically linked partner in the activity of parking lots investments. The Complainants also considers that the fact that the Respondent’s identity is hidden on WhoIs database strengthens the presumption of bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, the Complainant shall prove the following three elements: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has right; (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. A. 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 rights in the INDIGO trademark. Then, the Panel notices that the disputed domain name is composed of (i) the INDIGO trademark in its entirety, to which have been added to which the terms “group” and “parking”, each term being separated from the others by a hyphen, 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 several 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 or meaningless, 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” and the term “parking”, which can be considered as a reference to the Complainant’s corporate name and the Complainant’s activity area, to the INDIGO trademark does not exclude confusing similarity. 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 trademarks. B. 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. The Panel finds that, before any notice of the dispute, the Respondent’s use of the disputed domain name was not in connection with a bona fide offering of goods or services insofar as the related website also reproduced the Complainant’s logo and graphic design. Moreover, the Panel considers that the Respondent has not been commonly known through the disputed domain name. Finally, the Panel finds that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, since the existence of a license or authorization to use the Complainant’s trademark or corporate name has not been established, and on the contrary, the reproduction of the logo and the graphic design used by the Complainant demonstrates the intention to mislead Internet users. However, the Respondent did not reply to the Complainant’s contentions. Therefore, the Panel considers that the Complainant has established that the Respondent does not have rights or legitimate interests in the disputed domain name. C. 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.” According to prior UDRP decisions, particular circumstances panels may take into account in assessing whether the respondent’s registration of a domain name is in bad faith include: (i) the nature of the domain name (e.g., a typo of a widely-known mark, or a domain name incorporating the complainant’s mark plus an additional term such as a descriptive or geographic term, or one that corresponds to the complainant’s area of activity or natural zone of expansion), (ii) the chosen top-level domain (e.g., particularly where corresponding to the complainant’s area of business activity or natural zone of expansion), (iii) the content of any website to which the domain name directs, including any changes in such content and the timing thereof (see section 3.2.1 of the WIPO Overview 3.0). First of all, the Panel finds that it is established that the Complainant’s trademarks were registered before the registration of the disputed domain name. Thus, the Panel finds that the Respondent knew, or should have known, at the registration stage, that the disputed domain name would be confusingly similar to the Complainant’s trademark, given the reputation of the Complainant’s trademark and the fact that the disputed domain name reproduces the INDIGO trademark in its entirety. Indeed, doing so, the Panel finds that the Respondent intentionally attempted to hold the disputed domain name, by creating a likelihood of confusion with the INDIGO trademark, all the more so as the Respondent added the “group” and “parking” terms to the INDIGO trademark in the disputed domain name, which can be considered as referring to the Complainant’s corporate name and activity area, and confirms the Respondent’s intention to use the disputed domain name in bad faith. Furthermore, the Panel considers that the Complainant demonstrated bad faith use of the disputed domain name at the moment of the Complaint, since it resolved to an active website, at the stage of the Complaint, on which the logo and graphic design used by the Complainant was reproduced. Finally, the Panel notes that the Respondent has not submitted a response to the Complaint. Consequently, in view of all the circumstances of this case, the Panel finds 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
Sole Panelist
Date: August 21, 2020
Full & Egal Universal Law Academy