The Complainant is Korian, France, represented by Scan Avocats AARPI, France.
The Respondents are WhoisGuard Protected, WhoisGuard, Inc., Panama / Chevarin Herve, Israel and Name Redacted 1, 2. The Domain Names and Registrars
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 12, 2021. On January 13, 2021, the Center transmitted by email to the Registrars a request for registrar verification in connection with the Domain Names. On January 13, 2021, the Registrar Namecheap, Inc. and, on January 14, 2021, the Registrar 1&1 IONOS SE transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondents and contact information in the Complaint. The Center sent an email communication to the Complainant on January 19, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint or to file a separate Complaint for each of the Domain Names. The Complainant filed an amended Complaint on January 22, 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 Respondents of the Complaint, and the proceedings commenced on January 27, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 16, 2021. On February 8 and 24, 2021, one the Respondents sent email communications to the Center. The Center notified the Commencement of Panel Appointment Process on February 26, 2021. The Center appointed Vincent Denoyelle as the sole panelist in this matter on March 16, 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 following facts are based on the submissions in the Complaint and the Annexes to the Complaint. The Complainant is a French group of companies specialized in long-term care services to elderly or vulnerable people. The Complainant is the owner of several trade marks for KORIAN including the following: - European Union Trade Mark KORIAN No. 005192224, registered on August 29, 2007 and; The Complainant is also the owner of several domain names reflecting its trade mark. The Domain Name The Domain Names At the time of the Complaint, the Domain Names As for the Domain Name The Complainant contends that the Domain Names are confusingly similar to the KORIAN trade mark in which the Complainant has rights as the Domain Names incorporate the entire KORIAN trade mark followed by descriptive terms respectively “sa”/ “-sa” (an acronym for “société anonyme” a common type of corporate structure in France) and “patrimoine” (a French word meaning “asset”) and that such addition to each of the Domain Names does not prevent the likelihood of confusion between the Domain Names and the Complainant’s trade mark. The Complainant asserts that the Respondents have no rights or legitimate interests in respect of the Domain Names. The Complainant states that the Respondents are not known to the Complainant. The Complainant contends that the Respondents are not related in any way to the Complainant’s business and also that the Respondents have never been known by either of the Domain Names. Finally, the Complainant asserts that no license or authorisation has been granted to the Respondents to register or use the Domain Names. Finally the Complainant submits that the use of the Domain Names either passively or to point to parking pages with PPC links targeting the Complainant’s sector cannot be considered bona fide, legitimate or fair. The Complainant contends that the Respondents have registered the Domain Names with full knowledge of the Complainant’s trade mark and the Respondents could not have ignored the strong reputation of the Complainant’s trade mark KORIAN. The Complainant adds that the term “korian” is not a common or dictionary term and that it is strongly associated with the Complainant and that this can be seen from the search results obtained when searching for the term “korian” via an online search engine. The Complainant also alleges that the Respondents are using both Domain Names in bad faith. For the Domain Name The Respondent did not reply to the Complainant’s contentions. However, the Center received emails from a third party claiming identity theft and stating that this was the first time he heard of “Korian” and that he never bought any domain name on the Internet from “Korian”. 6. Preliminary Procedural Issue – Consolidation of Multiple Respondents There are two Respondents, one for the Domain Name According to Paragraph 10(e) of the Rules it is within the Panel’s general power to decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and the Rules. Section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) summarises the consensus view that “where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario”. The Panel grants the request for consolidation for the following reasons suggesting that the Domain Names are subject to common control: - The naming pattern in all three Domain Names is similar in that it includes the entire KORIAN trade mark of the Complainant followed by dictionary terms. This is particularly true of the Domain Names - All three Domain Names were registered within a period of less than a week in November 2020; - Annex L6 to the Complaint clearly shows that in an email sent from an email address under the Domain Name - The DNS setup of all three Domain Names is similar, with active MX records. The Panel finds that the consolidation would be fair and equitable to all parties and that it would also be in the interest of the efficiency of the proceedings. The Respondents have not submitted any argument as to why consolidation should not be granted. 7. Discussion and Findings In order to prevail the Complainant must substantiate, for each Domain Name, that the three elements of paragraph 4(a) of the Policy have been met, namely: (i) the Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and In the case of default by a party, as is the case here, paragraph 14(b) of the Rules makes it clear that 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. In the absence of a Response from the Respondents whereby the Respondents did not object to any of the contentions from the Complainant, the Panel will have to base its decision on the basis of the Complaint and supporting Annexes. A. Identical or Confusingly Similar In light of the evidence provided by the Complainant, the Panel is satisfied that the Complainant has substantiated that it holds valid trade mark rights in KORIAN, which is reproduced in its entirety in the three Domain Names. The second point that has to be considered is whether the Domain Names are identical or confusingly similar to the trade mark KORIAN in which the Complainant has rights. At the second level, the Domain Names incorporate the Complainant’s KORIAN trade mark in its entirety with the addition of, respectively, the terms “sa”/ “-sa” (an acronym for “société anonyme” a common type of corporate structure in France) and “patrimoine” (a French word meaning “asset). The terms added to the respective Domain Names do not prevent a finding of confusing similarity between the Complainant’s trade mark and the Domain Names. Then there is the addition of the generic Top-Level-Domain (“gTLD”) “.com”. As is generally accepted, the addition of a gTLD such as “.com” is merely a technical registration requirement and as such is typically disregarded under the first element of confusing similarity test. Thus, the Panel finds that the Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy sets out relevant circumstances that could demonstrate that a respondent has rights or legitimate interests in a domain name, namely: Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [the respondent’s] rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii): (i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) [the respondent] (as an individual, business, or other organization) ha[s] been commonly known by the domain name, even if [the respondent] ha[s] acquired no trade mark or service mark rights; or (iii) [the respondent] is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue. Numerous previous panels have found under the UDRP that once the Complainant makes a prima facie showing that the Respondent does not have rights or legitimate interests in the domain name, the burden of production shifts to the Respondent to rebut the showing by providing evidence of its rights or interests in the domain name. Having reviewed the Complainant’s assertions and evidence, the Panel is satisfied that the Complainant has made a prima facie showing that the Respondents lack rights or legitimate interests in the Domain Names. The Complainant has stated that it does not know the Respondents and that it has not licensed or otherwise authorised the Respondents to make any use of its trade mark KORIAN. There is no indication that the Respondents are commonly known by any of the Domain Names. The current absence of use of the Domain Names and the past use of the Domain Names Furthermore, the nature of the Domain Names, comprising the Complainant’s trade mark in its entirety in combination with additional terms, carries a high risk of implied affiliation. See section 2.5.1 of the WIPO Overview 3.0. Thus, the Panel finds that the Respondents have no rights or legitimate interests in respect of the Domain Names. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy sets out a number of relevant non-exhaustive circumstances, which can be deemed to constitute evidence of registration and use of a domain name in bad faith, namely: (i) circumstances indicating that [the respondent has] registered or acquired [a disputed] 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 trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the domain name; or (ii) [the respondent has] registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or (iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location. Given the circumstances described in the Complaint and the documentary evidence provided by the Complainant, the Panel finds that the Domain Names were registered in bad faith. The Domain Names reproduce the exact KORIAN trade mark of the Complainant and this cannot be a coincidence given the overall circumstances of the present case including: (i) the goodwill and reputation of the Complainant’s KORIAN trade mark, as substantiated by the Complainant, (ii) the fact that the Domain Names were registered relatively recently and many years after the registration of the trade mark KORIAN and, (iii) the choice of dictionary terms added to the trade mark KORIAN in the respective Domain Names. Thus, the Panel finds that the Domain Names were registered in bad faith. As for use of the Domain Names in bad faith, given the circumstances described in the Complaint, the evidence provided by the Complainant and the brief verification carried out by the Panel of the website associated with the Domain Names, the Panel considers that the Domain Names are used in bad faith. The Domain Names appear to be passively held at the time of the Decision. Passive use itself would not cure the Respondents’ bad faith given the overall circumstances here, specifically the goodwill and reputation of the Complainant’s KORIAN trade mark, especially in the country where one of the Respondents appears to be based and the Respondents’ default to file a Response. Furthermore, the past use of the Domain Names In addition, the DNS setup of the Domain Names (with active MX records), along with the past use of the Domain Names The fact that the Respondents chose not to object to the Complainant’s assertions and that the Respondents appear to have used the name of a third party when registering one of the Domain Names can only reinforce the Panel’s view that the Domain Names are used in bad faith. Finally, this is further supported by the fact that the Respondents deliberately chose to conceal its identity by means of a privacy protection service, which, in the circumstances, is an additional indication of the Respondents’ bad faith and their intent to use the Domain Names in a way which may be abusive or otherwise detrimental to the Complainant and its rights. Thus, the Panel finds that the Domain Names have been registered and are also being used in bad faith. 8. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names Vincent Denoyelle 1 “The Respondent appears to have used the name of a third party when registering the disputed domain name
- European Union Trade Mark KORIAN No. 014683981, registered on June 2, 2016.
(ii) the Respondents have no rights or legitimate interests in respect of the Domain Names; and
(iii) the Domain Names have been registered and are being used in bad faith.
Sole Panelist
Date: March 30, 2021
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