The Complainants are Groupe Industriel Marcel Dassault, France, Olivier Dassault, France, Thierry Dassault, France, and Laurent Dassault, France, all represented by Dreyfus & associés, France.
The Respondent is Protection of Private Person, Russian Federation / Paul Basset, Russian Federation. 2. The Domain Name and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 14, 2020. On October 15, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 16, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 26, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same date, the Center sent the language of proceeding email in English and in Russian to the Parties and invited the Complainants to respond by October 29, 2020 and the Respondent to comment on the Complainant’s response by October 31, 2020. On October 27, 2020, the Complainant filed a request for English to be the language of the proceeding. The Respondent did not file any comments on this request of the Complainant. The Complainant filed an amended Complaint on October 28, 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 Respondent of the Complaint, and the proceedings commenced on November 5, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 25, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 27, 2020. The Center appointed Assen Alexiev as the sole panelist in this matter on December 4, 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 history of the Groupe Industriel Marcel Dassault, also known as the Dassault group (the “First Complainant”) was started in 1914 by its founder Marcel Bloch, who later changed his surname to Dassault. The First Complainant has subsidiaries active in the fields of aeronautics, software, publishing, management and development of properties, and viticulture. The ownership of shares in the First Complainant made Mr. Serge Dassault, son of the founder of the group, one of the top French billionaires. When he passed away in 2018, his fortune was inherited by his children, Olivier, Thierry, Laurent and Marie-Hélène Dassault, the first three of which are the Second, Third and Fourth Complainant in this proceeding. The First Complainant is the owner of the following trademark registrations for the sign “DASSAULT” (the “DASSAULT trademark”): - the European Union Trademark DASSAULT with registration No. 004837886, registered on January 31, 2007 for goods and services in International Classes 9, 12, 16, 35, 36, 37, 38, 39, 41, 42; and The First Complainant also operates the domain names The disputed domain names The Complainants submit that the disputed domain names entirely reproduce their DASSAULT trademark and incorporate the full names of the Second, Third and Fourth Complainant, separated by a hyphen, which does not prevent any likelihood of confusion, and Internet users may be misled into believing that the disputed domain names would direct them to official websites or to websites that provide information related to the Complainants or that are endorsed by them. According to the Complainants, the Respondent has no rights or legitimate interests in respect of the disputed domain names, as it is not commonly known by them, is not affiliated with the Complainants, and has not been authorized by them to use and register the DASSAULT trademark or to seek registration of any domain name incorporating this trademark. The Complainants add that the Respondent cannot claim prior rights or legitimate interests in the disputed domain names as the registration of the DASSAULT trademark precedes their registration for years. The Complainants point out that the Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services, and is not making a legitimate noncommercial or fair use of the disputed domain names. The Complainants note that the disputed domain names associate the DASSAULT trademark with the names of the Dassault Groupe founder’s grandsons, which according to the Complainants is evidence that the Respondent wishes to create an impression that the disputed domain names are related to the Complainants. They note that the disputed domain names The Complainants contend that the disputed domain names were registered and are being used in bad faith. They submit that the Respondent must have been aware of the Complainants when it registered the disputed domain names, as the DASSAULT trademark significantly predates their registration, and the disputed domain names entirely reproduce this trademark and the full names of the Second, Third and Fourth Complainant. According to them, this shows that the Respondent was aware of the existence and reputation of the Complainants and was targeting them and the DASSAULT trademark when registering the disputed domain names to deliberately cause confusion amongst Internet users and take unfair advantage of the Complainants’ goodwill and reputation. The Complainants submit that the Respondent is using the disputed domain names to intentionally attract Internet users to its websites by creating a likelihood of confusion with the Complainants’ DASSAULT trademark and their names as to the source, sponsorship, affiliation or endorsement of the services offered on the Respondent’s websites. According to them, in the absence of any license or permission from the Complainants to use the DASSAULT trademark, no actual or contemplated bona fide or legitimate use of the disputed domain names could reasonably be claimed, and the use of the full names of the Complainants Thierry, Laurent and Olivier Dassault without authorization is a serious infringement of their rights and an unauthorized impersonation of them. The Complainants state that the disputed domain names The Complainants submit that on September 24, 2020, they sent a blocking request to the Registrar for the deactivation of the disputed domain names, but the Registrar failed to respond. The Complainants then contacted the hosting services provider for the disputed domain names to deactivate them. On September 28, 2020, the registrant of the disputed domain names responded that the redirections of the disputed domain names were deactivated. The deactivation continued for several days, after which the respective webpages were reactivated. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Procedural issue – Language of the proceeding According to the information provided by the Registrar, the language of the Registration Agreement for the disputed domain names is Russian. Under paragraph 11 of the Rules, unless otherwise agreed by the Parties or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding. The Complainants request that the language of the present proceedings be English. They point out that they are located in France and have no knowledge of Russian, and to proceed in this language, they will have to retain specialized translation services at a cost that is likely to be higher than the overall cost for the present proceedings. They also submit that the Respondent seems to be able to communicate in English, as it understood the Complainants’ requests made in English and responded to them in English. The Center has sent all its communications to the Respondent in both English and Russian, and has invited the Respondent to express its views on the language of the proceeding. The Respondent has not submitted a Response or any objections to the Complainants’ request that the proceedings be held in English. The above satisfies the Panel that the Respondent would not be disadvantaged if the language of the proceeding is English, and that using the English language in this proceeding would be fair and efficient. Therefore, in exercise of its powers under paragraph 11 of the Rules, the Panel decides that the language of this administrative proceeding will be English. 6.2. Procedural issue – Consolidation of Complainants The Complaint has been filed by four Complainants. As discussed in section 4.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), in assessing whether a complaint filed by multiple complainants may be brought against a single respondent, panels look at whether the complainants have a specific common grievance against the respondent or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and whether it would be equitable and procedurally efficient to permit the consolidation. As discussed in section 6.3 below, the disputed domain names reproduce the DASSAULT trademark and the names of three of the Complainants in a similar manner. This appears to show that the Respondent’s conduct that has affected the Complainants in a similar fashion, and all of them have a common grievance against the Respondent. The Center has discharged its duties to notify the Respondent, but the Respondent did not submit a Response in this proceeding or raised any arguments why the consolidation of the Complainants would not be equitable or procedurally efficient. The Panel is of the view that the consolidation would lead to greater procedural efficiency, and is not aware of any reasons why it would not be fair and equitable to all parties. Therefore, the Panel decides to allow the consolidation of the Complainants in the present proceeding. 6.3. Substantive issues Pursuant to the Policy, paragraph 4(a), the Complainants must prove each of the following to justify the transfer of the disputed domain names: (i) each of the disputed domain names is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and (iii) the Respondent has registered and is using the disputed domain names in bad faith. By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name […]”. The Respondent has however not submitted a Response and has not disputed the Complainants’ contentions and evidence in this proceeding. A. Identical or Confusingly Similar The Complaint is jointly submitted by the Complainants. They have submitted evidence showing that the First Complainant is the registered owner of the DASSAULT trademark. The other Complainants are shareholders in the First Complainant, and the Complaint refers to the DASSAULT trademark as belonging to all of the Complainants. This satisfies the Panel that the Complainants have rights in the DASSAULT trademark for the purposes of the Policy. The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the Top-Level Domain (“TLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). See section 1.11.1 of the WIPO Overview 3.0. The Panel sees no reason not to follow the same approach here, so it will disregard the “.info” TLD sections of the disputed domain names. The disputed domain names incorporate the DASSAULT trademark entirely in combination with the personal names of the Second, Third and Fourth Complainant. The DASSAULT trademark is easily recognizable in this disputed domain names. 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 UDRP standing. See sections 1.7 and 1.8 of the WIPO Overview 3.0. In view of the above, the Panel finds that the disputed domain names are confusingly similar to the DASSAULT trademark in which the Complainants have rights. B. Rights or Legitimate Interests While the overall burden of proof in UDRP proceedings is on the complainant, UDRP 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 a prima facie case 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. The Complainants contend that the Respondent has no rights or legitimate interests in the disputed domain names, as it is not commonly known by them, is not affiliated with the Complainants, and has not been authorized by them to register any domain name incorporating the DASSAULT trademark. According to the Complainants, the Respondent is not carrying out a bona fide use of the disputed domain names, as two of them are inactive, while the third one is linked to a “Telegram” page with the title “Millionaire de ParisFR” and the account name “@Paul_Basset”, which they state has already been identified as fraudulent. According to the Complainants, the Respondent thus creates a false impression that its website is affiliated with the Complainants. They add that email servers have been configured on the disputed domain names and the use of email addresses with the disputed domain names presents a significant risk that the Respondent could aim at stealing valuable information such as credit cards from the Complainants’ clients or employees. Thus, the Complainants have established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. The Respondent has not submitted a Response and has not alleged that it has rights or legitimate interests in the disputed domain names and have not disputed the Complainants’ allegations in this proceeding. The Respondent has not provided a plausible explanation why it has registered the disputed domain names and why it has used one of them as described by the Complainants. All of the disputed domain names are confusingly similar to the DASSAULT trademark and they share the same naming pattern, incorporating the first names of the Second, Third and Fourth Complainant. The evidence in the case file shows that two of them are inactive, while the third indeed resolves to a webpage with the title “Millionaire de ParisFR” and offers visitors to join the channel, without disclosing the lack of relationship with the Complainants. The fact that email servers have been configured for use with the disputed domain names increases the risk that they may be used to impersonate the Complainants for illegal purposes. In view of the above, the Panel is satisfied that it is more likely than not that the Respondent, being aware of the goodwill of the Complainants and of the DASSAULT trademark, has registered and used the disputed domain names in an attempt to take advantage of the Complainants and the DASSAULT trademark by attracting Internet users to the associated website without disclosure of the lack of relationship between the Parties and/or to impersonate the Complainants. To the Panel, such conduct does not appear to be legitimate nor giving rise to rights or legitimate interests of the Respondent in the disputed domain names. The fact that two of the disputed domain names do not resolve to an active website does not alter the Panel’s finding on the Respondent’s lack of rights or legitimate interests. Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain names. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely: “(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or (ii) you have 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 you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.” The disputed domain names incorporate the DASSAULT trademark, which was registered 15 years prior to the registration of the disputed domain names, and the names of the Second, Third and Fourth Respondent. The Respondent has not submitted any plausible explanation why it has registered the disputed domain names and how it intends to use those that do not resolve to an active website. It does not deny that email servers have been configured with the disputed domain names, nor provide any explanation for its configuration, and that one of them is linked to a website that offers visitors to join a channel named “Millionaire de ParisFR” without disclosing the lack of relationship with the Complainants. This creates the risk that the disputed domain names may be used likely to impersonate the Complainants for illegitimate purposes. Taking the above into account, the Panel accepts that it is more likely than not that the Respondent has registered and used the disputed domain names with knowledge of the Complainants and targeting the DASSAULT trademark and their names in an attempt to impersonate the Complainants and/or to attract traffic to the disputed domain names by confusing Internet users that they are reaching official online locations of the Complainants. This supports a finding of bad faith conduct under Paragraph 4(b)(iv) of the Policy. The fact that two of the disputed domain names do not resolve to an active website does not prevent a finding of bad faith. Therefore, the Panel finds that the disputed domain names have been registered and used 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 names Assen Alexiev
- the French Trademark DASSAULT with registration No. 3373264, registered in France on July 29, 2005 for goods and services in International Classes 9, 12, 16, 35, 36, 37, 38, 39, 41 and 42.
Sole Panelist
Date: January 7, 2021
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