The Complainant is Gleeds UK, United Kingdom, represented by Squire Patton Boggs (Paris), France.
The Respondent is John Mefoney, Hungary. 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 28, 2020. On September 28, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 29, 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 September 30, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant sent an email on October 5, 2020, stating that it did not wish to amend the Complaint as it believed the information not to be accurate. 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 October 6, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 26, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 30, 2020. The Center appointed Knud Wallberg as the sole panelist in this matter on November 8, 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 an independent property and construction consultancy established in 1885. The Complainant holds several registrations of the trademark GLEEDS including the European Union registration of the word mark GLEEDS no. 010117091 filed on July 12, 2011 for services in classes 35, 37, 42 and 45. The disputed domain name was registered on August 12, 2020 and has been used as part of an identity theft and fraud scheme, as described below in section 5 A. 3. 5. Parties’ Contentions A. Complainant The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights The Complainant asserts that the disputed domain name is confusingly similar to the trademark GLEEDS since it contains this mark in its entirety with the addition of the term “fr”. The disputed domain name will merely be perceived as a variation for the French office of the Complainant or for more specific services provided by the Complainant in France. The Respondent has no rights or legitimate interests in respect of the disputed domain name The Complainant further asserts that the Respondent has no rights or legitimate interests in the disputed domain name, since the disputed domain name was registered for the sole purpose of committing identity theft and fraud. The disputed domain name was registered and is being used in bad faith Finally, the Complainants assert that the disputed domain name has been registered and is being used in bad faith as part of an identity theft and fraud scheme. Gleeds France SAS – Complainant’s affiliate in France which uses the domain name Various invoices were to be paid in the context of this project, in particular one for EUR 900,000 by YYY to XXX. However, the Complainant discovered that fake emails and fake email addresses using the disputed domain name were used by an individual or a group of individuals to make the emails’ recipients wrongly believe that the emails came from the Complainant’s employees and ultimately to fraudulently misappropriate EUR 900,000. The Complainant’s affiliate Gleeds France SAS has filed a criminal complaint with the judicial authorities in Paris because of the above actions by the Respondent. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings According to paragraph 15(a) of the Rules the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Paragraph 4(a) of the Policy directs that a complainant must prove each of the following: (i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (ii) that the respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith. Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules, or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate. A. Identical or Confusingly Similar The Panel finds that the disputed domain name is confusingly similar (in the sense of the Policy) to the Complainant’s European Union registered trademark GLEEDS since the disputed domain name contains the mark GLEEDS in its entirety with the addition of the suffix “-fr”. See Section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The generic Top-Level Domain (“gTLD”) “.com” is a standard registration requirement and as such is generally disregarded under the first element confusing similarity test. See Section 1.11.1 of the WIPO Overview 3.0. The Panel finds that the conditions in paragraph 4(a)(i) of the Policy are therefore fulfilled in relation to the disputed domain name. B. Rights or Legitimate Interests It is obvious from the Complaint, that the Complainant has not licensed or otherwise permitted the Respondent to use the trademark GLEEDS. Further, given the circumstances of this case, the Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not rebutted this, and the way the Respondent has been and is using the disputed domain name (see above in the section 5.A.3) effectively excludes any possible finding of rights or legitimate interests. See section 2.13.2 of the WIPO Overview 3.0. Consequently, the Panel finds that the conditions in paragraph 4(a)(ii) of the Policy are also fulfilled. C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy requires the Complainant to prove both registration and use of the disputed domain name in bad faith. Paragraph 4(b) of the Policy provides examples of circumstances which shall be evidence of registration and use in bad faith: (i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration 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 holder’s documented out-of-pocket costs directly related to the domain name; or (ii) the holder 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 holder has engaged in a pattern of such conduct; or (iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’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 holder’s website or location or of a product or service on the holder’s website or location. Accordingly, for the Complainant to succeed, the Panel must be satisfied that the disputed domain name has been registered and is being used in bad faith. Given the circumstances of the case, in particular the way the disputed domain name has been used, it is obvious to the Panel in the current circumstances that the Respondent registered the disputed domain name in bad faith. It is equally obvious to the Panel that the Respondent uses the disputed domain name as part of a sophisticated attempt to deceive customers of the Complainant by creating a likelihood of confusion with the Complainant and with the Complainant’s mark as to the source of the Respondent’s activities. This constitutes bad faith use under the Policy, see section 3.4 of the WIPO Overview 3.0. The Panel therefore finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case. 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, Knud Wallberg 1 The names of the two French companies are not reproduced in the decision, since this information has no relevance for the understanding of nor for the outcome of the case.
Sole Panelist
Date: November 16, 2020
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