The Complainant is MIROVA, France, represented by Inlex IP Expertise, France.
The Respondent is Markisa Mirova, Markisa Miro, Indonesia. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 3, 2020. On December 4, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 4, 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 December 9, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 9, 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 January 20, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 9, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 15, 2021. The Center appointed Lynda M. Braun as the sole panelist in this matter on February 23, 2021. 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 French financial company specialized in the banking and financial sector. The Complainant is active in the field of sustainable financial and investment solutions. It enables its customers to collect funds and transfer cash to third-party accounts for remote and proximity payments and to easily integrate payments. The Complainant owns the following trademark registrations: MIROVA, European Union Trade Mark Registration No. 010787307, registered on September 10, 2012 in international classes 16, 35 and 36; MIROVA RESPONSIBLE INVESTING & design, European Union Trade Mark Registration No. 011123726, registered on January 14, 2013 in international classes 16, 35, and 36; and MIROVA, International Trade Mark Registration No. 1146522, filed on August 14, 2012 and based on a registration in France with priority date of February 15, 2012 in international classes 35 and 36 (hereinafter collectively referred to as the “MIROVA Mark”). The Complainant registered the domain name The Disputed Domain Name was registered on November 14, 2020. The Disputed Domain Name is passively held as it does not resolve to any active website or landing page. 5. Parties’ Contentions A. Complainant The following are the Complainant’s contentions: - the Disputed Domain Name is confusingly similar to the Complainant’s MIROVA Mark; - the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; - the Disputed Domain Name was registered and is being used in bad faith. The Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)(i-iii)): (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (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 This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark. The Panel concludes that the Disputed Domain Name is confusingly similar to the MIROVA Mark as set forth below. It is uncontroverted that the Complainant has established rights in the MIROVA Mark based on its years of use as well as its registered the European Union and International trademarks. The general consensus is that “registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive”. CWI, Inc. v. Domain Administrator c/o Dynadot,WIPO Case No. D2015-1734. The Respondent has not rebutted this presumption, and therefore the Panel finds that the Complainant has enforceable rights in the MIROVA Mark. The Disputed Domain Name consists of the MIROVA Mark in its entirety followed by the generic Top-Level Domain (“gTLD”) “.page”. When a disputed domain name incorporates the entirety of a trademark, the disputed domain name will generally be considered confusingly similar to that mark for purposes of UDRP standing. See the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. Further, the addition of a gTLD such as “.page” in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Sanofi v. Contact Privacy Inc. Customer 1246084445 / Thu Ha Bui,WIPO Case No. D2020-0441 and WIPO Overview 3.0, section 1.11. Accordingly, the Panel finds that the first element of paragraph 4(a) of the Policy has been met by the Complainant. B. Rights or Legitimate Interests Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name at issue. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1. In this case, the Panel finds that the Complainant has made out a prima facie case. In particular, the Respondent has not submitted any arguments or evidence to rebut the Complainant’s prima facie case and there is no evidence in the record that the Respondent is in any way associated with the Complainant. Moreover, the Complainant has not authorized, licensed or otherwise permitted the Respondent to use its MIROVA Mark. Finally, based on the record, the Disputed Domain Name is not related to a trademark or trade name in which the Respondent has rights, nor is the Respondent commonly known by the name “Mirova”. In the circumstances, the Panel concludes that the name of the Respondent was adopted to impersonate the Complainant so that the Complainant’s customers would believe that the Respondent was associated with the Complainant. Finally, the Panel concludes that based on the record, the Respondent is neither making a legitimate noncommercial or fair use of the Disputed Domain Name nor using the Disputed Domain Name in connection with a bona fide offering of goods or services since the Disputed Domain Name has not been put to use. Accordingly, the Panel finds that the second element of paragraph 4(a) of the Policy has been met by the Complainant. C. Registered and Used in Bad Faith The Panel concludes that the Respondent registered and used the Disputed Domain Name in bad faith as set forth below. First, the Disputed Domain Name was registered years after the Complainant first began using its MIROVA Mark. Moreover, the Panel notes that the Complainant owns the domain name Second, the registration of a disputed domain name that reproduces a trademark in its entirety (being identical or confusingly similar to such trademark) by an individual or entity that has no relationship to that mark, without any reasonable explanation on the motives for the registration, may be sufficient in certain circumstances to infer an opportunistic bad faith. See Ebay Inc. v. Wangming,WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163. Finally, inactive or passive holding of the Disputed Domain Name by the Respondent may amount to bad faith use. See Advance Magazine Publishers Inc. and Les Publications Condé Nast S.A. v. ChinaVogue.com,WIPO Case No. D2005-0615; Société pour l’Oeuvre et la Mémoire d’Antoine de Saint Exupéry – Succession Saint Exupéry – D’Agay v. Perlegos Properties,WIPO Case No. D2005-1085. It has long been held in UDRP decisions that the passive holding of a domain name that incorporates a well-known trademark without a legitimate purpose may indicate that the disputed domain name is being used in bad faith under paragraph 4(a)(iii) of the Policy. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Jupiters Limited v. Aaron Hall,WIPO Case No. D2000-0574. Here, the Disputed Domain Name currently resolves to an inactive landing page, thus demonstrating bad faith. Accordingly, the Panel finds that the third element of paragraph 4(a) of the Policy has been met by the Complainant. 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 Lynda M. Braun
Sole Panelist
Date: March 9, 2021
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