Complainant is Europe 1 Telecompagnie, France, represented by GPI MARQUES, France.
Respondent is WhoisGuard, Inc., Panama / Dost Mohammad, United Arab Emirates. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 23, 2020. On September 23, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 23, 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 September 25, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on September 29, 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 Respondent of the Complaint, and the proceedings commenced on October 7, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 27, 2020. Respondent sent two informal email communications on September 25, 2020. Respondent did not submit any formal response. Accordingly, the Center notified the Commencement of Panel Appointment Process on November 4, 2020. The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on November 16, 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 has been providing radio communication and entertainment services under the EUROPE1 trademark (“EUROPE1 Mark” or “Complainant’s Mark”) since 1955. Complainant owns various national and international trademark registrations for the EUROPE1 Mark, including French registration number 3745320 (registered on June 10, 2010), and European Union registration number 2956720 (registered on September 22, 2004). Complainant also owns the domain name The disputed domain name Complainant contends that the disputed domain name is confusingly similar to Complainant’s EUROPE1 mark because it reproduces identically the EUROPE1 mark. Complainant argues that the addition of the term “one” in the disputed domain name is insufficient to distinguish it from Complainant’s Mark since “one” is a generic term that merely reiterates the number “1” in Complainant’s EUROPE1 mark. Complainant contends that Respondent has no rights or legitimate interests in or to the disputed domain name. According to Complainant, Respondent has never been commonly known by the disputed domain name, it has not licensed to Respondent the right to use the EUROPE1 trademark, and that Respondent is not otherwise authorized to act on Complainant’s behalf. Furthermore, Complainant argues that Respondent’s use of the disputed domain name to operate a child pornography website cannot be considered a bona fide offering of goods and services nor a legitimate noncommercial or fair use. Lastly, Complainant argues that Respondent registered and is using the disputed domain name in bad faith. Complainant argues that Respondent must have had actual knowledge of Complainant’s rights in the EUROPE1 Mark given the complete incorporation of the EUROPE1 mark in the disputed domain name and the EUROPE1 Mark’s reputation. Furthermore, Complainant asserts that Respondent’s bad faith conduct is manifestly shown in his use of the disputed domain name to operate a child pornography website. B. Respondent Even though Respondent did not submit a formal response to the present Complaint, he did allege before this UDRP proceeding that he was unaware of Complainant’s EUROPE1 Mark when he registered the disputed domain name. Respondent also alleged that he has committed resources to the disputed domain name’s website and will ostensibly lose revenue if access to it is disabled given the amount of traffic it generates. On September 25, 2020 he submitted two informal emails where he was asking “to know what [was] the dispute [about] and how to resolve it”. 6. Discussion and Findings Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that: (i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the disputed domain names; and (iii) the disputed domain names were registered and are being used in bad faith. Furthermore, section 4.3 of the WIPO Overview 3.0 states: “Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding? Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true.” Thus, even though Respondent has failed to address Complainant’s contentions, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340. A. Identical or Confusingly Similar Ownership of a nationally registered trademark registration constitutes prima facie evidence that the complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant has provided evidence that it has rights in the EUROPE1 Mark through its national and international registrations. With Complainant’s rights in the EUROPE1 Mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the Top-Level Domain (“TLD”) in which each domain name is registered) is identical or confusingly similar to Complainant’s Mark. Here, Complainant’s EUROPE1 Mark is fully incorporated in the disputed domain name. Furthermore, the inclusion of the dictionary term “one” in the disputed domain name does nothing to prevent a finding of confusing similarity under the first element. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its trademark rights and showing that the disputed domain name is confusingly similar to Complainant’s EUROPE1 trademark. B. Rights or Legitimate Interests Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP. Paragraph 4(c) of the Policy lists the ways that the respondent may demonstrate rights or legitimate interests in the disputed domain name: (i) before any notice of the dispute, respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed 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 disputed domain name, even if it has acquired no trade mark or service mark rights; or (iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue. Here, Complainant has alleged that Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not submitted any arguments or evidence to rebut Complainant’s contention that it has never authorized, licensed or permitted Respondent to use the EUROPE1 Mark in any way. Complainant has also asserted that Respondent is not commonly known by the disputed domain name, and again Respondent has not rebutted this allegation nor is there any evidence to contradict this allegation. As shown in the evidence submitted by Complainant, the disputed domain name was used to operate a child pornography website. This activity cannot be considered bona fide offerings of goods or services nor a legitimate noncommercial or fair use under the Policy. See Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; WIPO Overview 3.0, section 2.13.1. Indeed, the use of a domain name for per se illegal activity can never confer rights or legitimate interests on a respondent. See, e.g., Wikimedia Foundation, Inc. v. Nanci Nette, Name Management Group,WIPO Case No. D2018-0717. Respondent has failed to rebut Complainant’s allegations and evidence, and therefore, the Panel concludes that Respondent does not have rights or legitimate interests in the disputed domain name within the meaning of Policy paragraph 4(a)(ii). C. Registered and Used in Bad Faith The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use of a domain name can be found when, by using the domain name, a 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 a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location. In this case, bad faith can be found in the registration and use of the disputed domain name. Complainant provided ample evidence to show the widespread use and numerous registrations of the EUROPE1 Mark that long predate Respondent’s registration of the disputed domain name. Furthermore, Complainant’s Mark is completely incorporated in the disputed domain name. Therefore, despite Respondent’s allegation to the contrary, Respondent was likely aware of the EUROPE1 trademark when he registered the disputed domain name, or knew or should have known that it was identical or confusingly similar to Complainant’s Mark. See WIPO Overview 3.0, section 3.2.1; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited,WIPO Case No. D2016-1973. Respondent has used the disputed domain name containing Complainant’s Mark to attract Internet users to its website for commercial gain (which Respondent has admitted), which is clear evidence of bad faith within the meaning of Policy paragraph 4(b)(iv). Moreover, the use of the disputed domain name to operate a child pornography website is the type of per se illegal activity that is manifestly considered evidence of bad faith under the Policy. See WIPO Overview 3.0, section 3.1.4; Wikimedia Foundation, Inc., supra. Hopefully Complainant has also reported Respondent to the appropriate law enforcement authorities in connection with this heinous activity. For these reasons, this Panel finds that Respondent’s registration and use of the disputed domain name was in bad faith. 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 Brian J. Winterfeldt
Sole Panelist
Date: December 2, 2020
Full & Egal Universal Law Academy