Complainant is ICADE, France, represented by De Gaulle Fleurance & Associés, France.
Respondent is Yadz Harudin, Malaysia. 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 30, 2020. On July 30, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 31, 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 Complainant on August 3, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. On August 3, 2020, the Center received an email communication in English from Respondent. On August 6, 2020, the Center informed the Parties of the possibility to suspend the proceedings to explore settlement options. On August 6, 2020, Complainant requested the suspension of the proceedings. On August 6, 2020, the Center confirmed the suspension of the proceedings for purposes of settlement discussions concerning the Disputed Domain Name. On September 10, 2020, Complainant requested the proceedings to be reinstituted. On September 11, 2020, the Center confirmed the reinstitution of the proceedings. The Registrar also indicated that the language of the Registration Agreement was English. The Complaint was filed in French. The Center sent an email communication to Complainant on August 3, 2020, inviting Complainant to provide sufficient evidence of an agreement between the Parties for French to be the language of proceeding, a Complaint translated into English, or a request for French to be the language of proceedings. Respondent did not submit any arguments regarding the language of the proceedings. Complainant filed an amended Complaint translated into English and reflecting the registrant information disclosed by the Registrar on September 16, 2020. The language of the proceedings is English according to the paragraph 11(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”). 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 Respondent of the Complaint, and the proceedings commenced on September 22, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 12, 2020. Respondent did not submit any formal response. Accordingly, the Center informed the Parties that it would proceed to Panel appointment on October 13, 2020. The Center appointed Peter Wild as the sole panelist in this matter on October 21, 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 well known real estate investment and property development company, established 1954 and based in Paris, France. It trades under the name “Icade” and is listed as one of the 40 biggest public companies in France. Complainant owns a number of trademarks for ICADE in France, such as the trademark no. 4336987 registered on February 10, 2017 and the trademark no. 3185579 registered on September 26, 2002. The Disputed Domain Name was registered on May 29, 2018. At the time of this decision, it directs Internet users to a website where it is stated as follows: “Interested in icadeassociation.com? Domain Broker Service may be able to get [the Disputed Domain Name] for you”. The website also displays pay-per-click (“PPC”) links related to real estate. 5. Parties’ Contentions A. Complainant According to Complainant, the Disputed Domain Name is confusingly similar to Complainant’s trademark ICADE as it is included in its entirety and only adds a descriptive element “association”. According to Complainant, this addition may even add to the danger of confusion, as it seems to indicate that there is an association between the Disputed Domain Name and Complainant. Complainant claims to be a provider of real estate and construction related services in France and that it has been exposed to a number of cyber scams, where third parties registered confusingly similar domain names and activated email addresses under these domain names to solicit payments from third parties, pretending to be part of Complainant’s group. Such cases lead to earlier UDRP decisions in favor of Complainant, such as Icade contre Stephane Leblanc / Promotion Icade / Luc Vicente,WIPO Case No. D2018-2222 or ICADE & ICADE Promotion v. Icade Marianne,WIPO Case No. DEU2002-0007 Complainant claims that the Disputed Domain Name will confuse consumers and people who are looking for contact with Complainant and attract them to the website under the Disputed Domain Name, to create traffic or possibly be the background to yet another email scam. While there is no direct indication that the Disputed Domain Name is or will be abused for scam emails, Complainant strongly suggests this, citing the registration date of the Disputed Domain Name which is very similar to the date of other, abusive domain names and claiming that the structure of the Disputed Domain Name is highly similar to those earlier cases and therefore likely will be used in such email scams as well. The Disputed Domain Name is therefore, according to Complainant, registered and used in bad faith. Complainant furthermore claims that Respondent has no own rights or legitimate interests in the term “icade”, and that the Disputed Domain Name has been registered and is being used in bad faith, using a descriptive suffix to the Complainant’s trademark to create consumer confusion and leading consumers to Respondent’s website for Respondent’s commercial gain. B. Respondent Respondent did not reply formally to Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Disputed Domain Name contains, in its entirety and prominently, Complainant’s trademark ICADE. The added term “association” is purely a descriptive term. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Edition 3.0 (“WIPO Overview 3.0”), section 1.8 provides that “[w]here the relevant trademark is recognizable within the Disputed Domain Name, the addition of other terms […] would not prevent a finding of confusing similarity under the first element”. Also see, e.g., Société des Produits Nestlé,WIPO Case No. D2009-0865. In line with this, the Panel decides that the Disputed Domain Name is confusingly similar to Complainant’s trademark. The first condition of the Policy is met. B. Rights or Legitimate Interests Complainant is required to make out a prima facie case that Respondent lacks rights or legitimate interests, see Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455. Once such prima facie case is made, Respondent carries the burden of demonstrating rights or legitimate interests in the Disputed Domain Name. If Respondent fails to do so, Complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP. There is no indication or reason to believe that Respondent’s name somehow corresponds with the Disputed Domain Name, and Respondent does not appear to have any trademark rights associated with the term “icade”. See VUR Village Trading No. 1 Limited t/a Village Hotels v. Carolina Rodrigues, Fundacion Comercio Electronico,WIPO Case No. D2019-1596. Respondent is not identified in the WhoIs database as “icade” or another name with the element “icade”. From the available record, there is no evidence that Respondent is commonly known by the Disputed Domain Name. The Panel therefore finds under paragraph 4(a)(ii) of the Policy that Respondent is not commonly known by the Disputed Domain Name. According to Complainant, Respondent is not affiliated with nor authorized by Complainant in any way to use the trademark ICADE. The fact that the website under the Disputed Domain Name directs Internet users to a website with links to real estate industry websites (such as “Immo Neuf ProMoteur, Programme Immobilier Projet, etc…”), is rather an indication of bad faith, and not of own rights or legitimate interests. Respondent did not claim any rights or legitimate interests, as it did not file a Response at all. Based on these facts, the Panel holds that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name and the second condition of the Policy is met. C. Registered and Used in Bad Faith Complainant owns earlier French registrations for its ICADE trademark and is a major and well known company in France. The Disputed Domain Name incorporates Complainant’s ICADE mark in full and is therefore confusingly similar to Complainant’s ICADE Marks. See, e.g., Johnson & Johnson v. Daniel Wistbacka,WIPO Case No. D2017-0709. The Panel finds it hard to see any plausible circumstance in which Respondent could legitimately have registered the Disputed Domain Name. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The Panel notes Respondent fails to provide any explanation. For these reasons, the Panel holds that the Disputed Domain Name was registered in bad faith. Complainant links the present Disputed Domain Name to more than 10 earlier cases, where the registration of similarly structured domain names with the element “icade” led to email scams based on these domain names. While there is a possibility that the Disputed Domain Name was intended to be used for such purposes, Complainant does not provide direct indication or evidence of this. However, there is evidence that Respondent was at least aware of the industry in which Complainant is active and well known, as the Disputed Domain Name directs Internet users to a website which mainly lists links to real estate related services, set up as PPC links. In the absence of evidence of fraud, it is therefore likely that Respondent registered the Disputed Domain Name “to benefit from particular activities carried out by Complainant by creating a likelihood of confusion with Complainant”. See e.g. Société des Produits Nestlé v. Shuai Nian Qing,WIPO Case No. D2009-0865. The website at the Disputed Domain Name displays PPC links to real estate related services. Even if Respondent did not post those links itself, “respondent cannot disclaim responsibility for content associated with its domain name”. WIPO Overview 3.0, section 3.5. Respondent is using the disputed domain name for commercial gain by creating a likelihood of confusion with Complainant’s ICADE trademark in violation of Policy paragraph 4(b)(iv) and diverting traffic intending to reach Complainant’s website to Respondent’s website. See, e.g., Balenciaga v. PrivacyProtect.org / Level5 Corp.,WIPO Case No. D2010-0038; Société des Produits Nestlé v. Shuai Nian Qing,WIPO Case No. D2009-0865. The Panel therefore holds that the Disputed Domain Name was registered and used in bad faith and the third element of the Policy is met. 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 Peter Wild
Sole Panelist
Date: October 27, 2020
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