The Complainant is Cision US Inc., United States of America (“United States”), represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Carlos L Kempinsky, Spain. 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 24, 2020. On December 24, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 25, 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 January 5, 2021 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 January 6, 2021. 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 22, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 11, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 15, 2021. The Center appointed John Swinson 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 Cision US Inc. According to the Complaint, Cision is a company specializing in public relations that helps its clients with media management. The Complainant has over 75,000 clients around the world, including 3M, LinkedIn, Citrix, and Nationwide. The Complainant’s history dates back to 1932, when the Complainant produced the first media books and knowhow documents for public relations. At this time, the Complainant was known as Observer AB, and the rebrand to Cision took place in 2007. The Complainant has a number of subsidiaries including Canyon UK Ventures Ltd. and GTCR Canyon UK Ventures. The Complainant and its subsidiaries own a number of trade marks across various jurisdictions including United States registered trade mark number 3550372 for CISION registered on December 23, 2008 in the name of Canyon UK Ventures Ltd. (“Trade Mark”). The Complainant also owns other trade marks which include the word CISION, including United States registered trade mark number 87334743 for CISION COMMUNICATIONS CLOUD, registered on December 31, 2019. The Complainant registered the domain name The Respondent is Carlos L Kempinsky, an individual from Spain. No response was received from the Respondent and therefore little information is known about the Respondent. The Respondent registered the Disputed Domain Name on April 14, 2020. The Disputed Domain Name does not resolve to an active website. The Complainant submits that prior to the notice of dispute, the Disputed Domain Name resolved to a website which was a replica of the Complainant’s website. 5. Parties’ Contentions A. Complainant The Complainant makes the following contentions. Identical or Confusingly Similar In creating the Disputed Domain Name, the Respondent incorporates the Trade Mark with the descriptive term “cloud”. The fact that the term “cloud” is closely linked and associated with Complainant’s brand and Trade Mark only serves to increase the confusing similarity between the Disputed Domain Name and the Trade Mark. The Disputed Domain Name is confusingly similar to the Trade Mark. Rights or Legitimate Interests The Respondent does not have rights or legitimate interests in the Disputed Domain Name because: - The Respondent is not sponsored by or affiliated with the Complainant in any way. - The Complainant has not given Respondent permission to use the Trade Mark in any manner, including in domain names. - The Respondent is not commonly known by the Disputed Domain Name, which evinces a lack of rights or legitimate interests. The Whois information identifies the Registrant as “Carlos L Kempinsky”, which does not resemble the Disputed Domain Name in any manner. - The Respondent was using a privacy service, which past panels have also found to equate to a lack of legitimate interest. - Prior to the website being taken down, the Disputed Domain Name previously redirected Internet users to a website that copied the Complainant’s official website by copying the design, colour scheme and general look and feel of the Complainant’s website, including Complainant’s logo. - The Respondent’s inclusion of the Complainant’s logo on the Disputed Domain Name’s former website is further evidence of Respondent’s direct effort to take advantage of the fame and goodwill that the Complainant has built in its brand. - Following its website takedown, the Respondent is currently using the Disputed Domain Name to redirect Internet users to a website that resolves to a blank page and lacks content. Registered and Used in Bad Faith The Complainant and its Trade Mark are known internationally, with trademark registrations across numerous countries. The Complainant has marketed and sold its goods and services using this Trade Mark since 2007, which is well before Respondent’s registration of the Disputed Domain Name on April 14, 2020. The Respondent has demonstrated a knowledge of and familiarity with Complainant’s brand and business because the Respondent has used the Disputed Domain Name to pose as the Complainant by hosting a website that sought to mimic Complainant’s actual website. The Trade Mark is so closely linked and associated with the Complainant that the Respondent’s use of the Trade Mark, or any minor variation of it, strongly implies bad faith. Further the Respondent, at the time of initial filing of the Complaint, had employed a privacy service to hide its identity, which past Panels have held serves as further evidence of bad faith registration and use. The Respondent has ignored the Complainant’s attempts to resolve this dispute outside of this administrative proceeding. Past Panels have held that failure to respond to a cease-and-desist letter may properly be considered a factor in finding bad faith registration and use of a domain name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely: (i) the Disputed Domain Name is identical or confusingly similar to a trade mark 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. Procedural Issues No Response. The Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant (see, e.g., Airbus SAS, Airbus Operations GmbH v. Alesini Pablo Hernan / PrivacyProtect.org,WIPO Case No. D2013-2059). However, the Panel may draw appropriate inferences from the Respondent’s lack of a Response. B. Identical or Confusingly Similar Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights. Where a domain name incorporates the entirety of a trade mark, or where at least a dominant feature of the relevant mark is recognisable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of the first element (section 1.7, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). The Disputed Domain Name incorporates the entirety of the Trade Mark, with the addition of the word “cloud”. This additional descriptive term does not prevent the Trade Mark from being recognisable in the Disputed Domain Name. The Trade Mark is owned by the Complainant’s subsidiary company Canyon UK Ventures Ltd. A trademark owner’s affiliate such as a subsidiary of a parent or of a holding company, or an exclusive trademark licensee, is considered to have rights in a trade mark under the UDRP for purposes of standing to file a complaint (section 1.4 of the WIPO Overview 3.0). The Panel considers the Disputed Domain Name to be confusingly similar to the Trade Mark. The Complainant succeeds on the first element of the Policy. C. Rights or Legitimate Interests Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lack rights or legitimate interests. The Panel considers the Complainant has made out a prima facie case. This finding is based on the following: - The Respondent is not using (and there is no evidence that the Respondent has demonstrable preparations to use) the Disputed Domain Name in connection with a bona fide offering of goods or services. The website at the Disputed Domain Name does not currently resolve to an active website. Prior to the notice of dispute, the Disputed Domain Name resolved to a website which sought to mimic Complainant’s actual website. This use is not bona fide in the circumstances. - The Complainant has not authorised or otherwise given the Respondent permission to use the Trade Mark in the Disputed Domain Name. - There is no evidence that the Respondent has been commonly known by the Disputed Domain Name, or has registered or common law trade mark rights in relation to this name. - The Respondent has not been making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain. There is currently no active website associated with the Disputed Domain Name. The Respondent had the opportunity to demonstrate its rights or legitimate interests, but did not do so. As such, the prima facie case established by the Complainant has not been rebutted and the Complainant succeeds on the second element of the Policy. D. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith. Registered in bad faith If circumstances indicate that a respondent’s intent in registering a disputed domain name was to profit in some fashion from, or otherwise exploit, the complainant’s trade mark, panels will find bad faith on the part of the Respondent (see section 3.1.1 of the WIPO Overview 3.0). The Disputed Domain Name was registered 13 years after the Complainant’s started using the Trade Mark. The Panel accepts that the Complainant has developed a reputation in the Trade Mark and is known for the services it provides. Given that the Disputed Domain Name is confusingly similar to the Trade Mark with only the addition of the descriptive term “cloud” (the Complainant provides analytical services under the name Cision Communications Cloud, a cloud-based platform that integrates various services into one interface) and that the Respondent at one time hosted a website at the Disputed Domain Name that mimicked the Complainant’s website, and without the benefit of a response from the Respondent, the Panel can reasonably infer that the Respondent either knew or should have known that the registration of the Disputed Domain Name would be confusingly similar to the Complainant’s Trade Mark. Used in bad faith The fact that the Disputed Domain Name is not currently being used does not preclude a finding of bad faith (see section 3.3 of WIPO Overview 3.0 and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). Section 3.3 of the WIPO Overview 3.0 considers passive holding and explains that: While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good-faith use to which the domain name may be put. The particular circumstances of this case which lead to a conclusion in the Complainant’s favour are: - The Trade Mark has been in use by the Complainant since 2007 and has developed a substantial reputation during this period in the relevant field. - The Disputed Domain Name is not a generic or descriptive term. - The Respondent has not submitted a formal Response or provided any evidence of actual or contemplated good faith use. - The Respondent previously made use of the Disputed Domain Name to copy the Complainant’s website design and business. - The Respondent did not respond to Complainant’s cease and desist letters. In light of the above, the Panel finds that the Complainant has succeeded on the third element of the Policy. 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 John Swinson
Sole Panelist
Date: March 9, 2021
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