The Complainants are Thales and Thales Alenia Space, France, represented by Dreyfus & associés, France.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Philippe Blettrie, Name Redacted, France. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 22, 2021. On January 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 22, 2021, 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 Complainants on January 25, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on January 28, 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 29, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 18, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 19, 2021. The Center appointed Louis-Bernard Buchman as the sole panelist in this matter on February 25, 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 Thales is a company registered in France, belonging to the Thales Group, which is a major manufacturer and provider of electronic systems and services for the defense, security, aerospace, and ground transportation industries. It operates in 68 countries with over 83,000 employees. Thales Alenia Space is a subsidiary of Thales, concentrating on the space market, and contends to be Europe’s largest satellite manufacturer. The Complainants are respectively operating their business activities under the name Thales, used as a trademark, a domain name, and a corporate name, and under the name Thales Alenia Space which is also used as a trademark, domain name, and corporate name. The disputed domain name The disputed domain name was initially registered in the name of a proxy service. The identity of the Respondent was disclosed by the Registrar in response to the Center’s request for registrar verification in connection with the disputed domain name. The Complainants have submitted forensic evidence that the disputed domain name has been used to activate MX email servers, to send fraudulent emails to third parties in view of opening trade accounts and obtaining payment facilities for ordering their products, thus engaging in a phishing scheme. The signatory of such emails was Philippe Blettrie, purporting to be the Purchasing Manager of an existing French subsidiary of Thales Alenia Space. The Complainant Thales owns several registered trademarks containing the term THALES, including, inter alia, the French trademark No. 1318674, registered on July 30, 1985, and the European Union trademark No 002186088, registered on November 9, 2006. The Complainant Thales Alenia Space owns the registered Italian trademark containing the terms THALES ALENIA SPACE No. 302017000046467, registered on December 10, 2018, (hereinafter referred to as: “the Mark”). It also owns the The disputed domain name, (i) The Complainants submit that the disputed domain name reproduces the Mark and the distinctive element THALES, in which the Complainants have rights, and is confusingly similar to the Mark insofar as the disputed domain name, (ii) The Complainants contend that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Furthermore, the Complainants contend that they never authorized the Respondent to use the Mark in any manner and that the Respondent has never had any affiliation with the Complainants. (iii) The Complainants submit that the Respondent has registered the disputed domain name in bad faith. The Complainants allege that the Respondent had knowledge of the Mark when registering the disputed domain name. (iv) The Complainants submit that the Respondent is using the disputed domain name in bad faith. (v) The Complainants request that the disputed domain name be transferred to Complainant Thales. B. Respondent The Respondent did not reply to the Complainants’ contentions. 6. Discussion and Findings As a preliminary matter, the Panel notes the Complainants’ persuasive claim that the named Respondent Philippe Blettrie has never been employed by the French subsidiary of Complainant Thales Alenia Space. Accordingly, the Panel finds that that the French subsidiary of Complainant Thales Alenia Space was a victim of identity theft, had no knowledge of the registration and use of the disputed domain name, and that it is therefore appropriate in this proceeding to redact the actual name of the Respondent’s organization. See Independent Health Association Inc. v. Registration Private, Domains By Proxy, LLC / [K.A.], WIPO Case No. D2016-1625. The Panel has attached as Annex 1 to this decision an instruction to the Registrar regarding transfer of the disputed domain name, which includes the name of the Respondent’s organization. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this decision shall not be published due to the exceptional circumstances of this case. 6.1. Procedural Aspects A. Consolidation of Complainants The Complainants have requested the consolidation of Complainants under paragraph 10(e) of the Rules, arguing that the Complainants in this proceeding share a common legal interest in the Mark reproduced in the disputed domain name, which violates their rights and affects them equally. Pursuant to paragraph 10(e) of the Rules, in assessing whether a complaint filed by multiple complainants may be brought against a single respondent, the Panel looked at whether (i) 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 (ii) it would be equitable and procedurally efficient to permit the consolidation, and found that indeed the Respondent’s conduct affects the Complainants equally, that the Complainants have a common grievance against the Respondent, and that filing multiple complaints would induce unnecessary duplication of time, effort and expenses for the Complainants. The Panel determines that ordering the consolidation fulfills the purpose of the Policy to provide a cheaper, speedier alternative to litigation and is procedurally efficient, fair and equitable to all parties. Accordingly, the request of the Complainants for consolidation is granted. B. Failure to respond As aforementioned, no Response was received from the Respondent. Under the Rules, paragraphs 5(f) and 14(a), the effect of a default by the Respondent is that, in the absence of exceptional circumstances, the Panel shall proceed to a decision on the basis of the Complaint. Under paragraph 4(a) of the Policy, it is the Complainant’s burden to establish that all three of the required criteria for a transfer of the disputed domain name have been met, even in the event of a default. Under paragraph 14(b) of the Rules, the Panel is empowered to draw such inferences from the Respondent’s default as it considers appropriate under the circumstances. In this case, the Panel finds that as a result of the default, the Respondent has failed to rebut any of the reasonable factual assertions that are made and supported by evidence submitted by the Complainants. In particular, by defaulting and failing to respond, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy or otherwise, from which the Panel might conclude that the Respondent has any rights or legitimate interests in the disputed domain name, such as making legitimate noncommercial or fair use of the disputed domain name. Moreover, as discussed below, the Respondent has failed to provide any exculpatory information or reasoning that might have led the Panel to question the Complainants’ arguments that the Respondent has acted in bad faith. 6.2. Requirements of paragraph 4(a) of the Policy A. Identical or Confusingly Similar In comparing the Mark with the disputed domain name It is well established that a gTLD does not generally affect the assessment of a domain name for the purpose of determining identity or confusingly similarity. The Panel finds that the disputed domain name Thus, the Complainants have satisfied the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Although a complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that with regard to paragraph 4(a)(ii) of the Policy, this could result in the often impossible task of proving a negative proposition, requiring information that is primarily, if not exclusively, within the knowledge of a respondent. Thus, the consensus view of UDRP panels is that paragraph 4(c) of the Policy shifts the burden of production of evidence to the respondent to come forward with evidence of rights or legitimate interests in a domain name, once the complainant has made a prima facie showing, as the Panel believes the Complainants have made in this case. See Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000‑0270. As previously noted, the Respondent offered no reason for selecting the disputed domain name. There is no evidence that the Respondent is known by the disputed domain name or uses (or has made bona fide preparations to use) the disputed domain name in a business. The disputed domain name directs the public to a parking page, displaying sponsored links relating to services and goods associated with Complainants’ industries. Such content does not represent a bona fide offering, as such links compete with or capitalize on the reputation and goodwill of the Mark. Further, the available evidence has shown that the disputed domain name has been used in an apparent fraudulent email scheme. The use of the disputed domain name for said illegal activity cannot confer rights or legitimate interests on the Respondent. No information is provided on what rights or legitimate interests the Respondent may have in the disputed domain name. To counter any notion that the Respondent has such rights or legitimate interests, the Complainants have argued that the Respondent (i) has no affiliation with the Complainants and (ii) received no authorization from the Complainants to register or use the disputed domain name. In the circumstances, the Panel concludes that the Complainants have established the requirement of paragraph 4(a)(ii) of the Policy with respect to the disputed domain name. C. Registered and Used in Bad Faith As noted above, the Respondent has failed to provide any exculpatory information or persuasive reasoning that might have led the Panel to question the Complainants’ arguments that the Respondent acted in bad faith by creating confusion to the detriment of the Complainants by registering the disputed domain name confusingly similar to the Mark. It is established in prior UDRP decisions that where the respondent knew or should have known of a trademark prior to registering the disputed domain name, such conduct may be, in certain circumstances, sufficient evidence of bad faith registration and use. See Weetabix Limited v. Mr. J. Clarke,WIPO Case No. D2001-0775. In this case, considering that the Complainants have provided evidence that the disputed domain name has been used for phishing purposes, the Panel finds that it is impossible to believe that the Respondent chose to register the disputed domain name randomly with no knowledge of the Mark. See Barney’s Inc. v. BNY Bulletin Board, WIPO Case No. D2000‑0059; Kate Spade, LLC v. Darmstadter Designs, WIPO Case No. D2001‑1384, citing Cellular One Group v. Paul Brien,WIPO Case No. D2000‑0028; and SembCorp Industries Limited v. Hu Huan Xin, WIPO Case No. D2001‑1092. Furthermore, the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 3.1.4, states that evidence that a disputed domain name has been used for phishing purposes may be considered evidence of bad faith use (see also Thales v. Domain Admin, Privacy Protect, LLC / rigby james,WIPO Case No. D2018-0921). In addition, the Panel notes that previous UDRP panels inferred a bad faith behavior from the activation of MX servers by the respondent to create email addresses for commercial emailing, spamming or phishing purposes (see Robertet SA v. Marie Claude Holler,WIPO Case No. D2018-1878). Besides, the Panel notes that many UDRP panels have held that bad faith use of a domain name by a respondent may also result from the fact its good faith use is in no way plausible (see Audi AG v. Hans Wolf, WIPO Case No. D2001‑0148), considering the specificity of the activity. The Panel finds it is not possible to imagine any plausible future active use of the disputed domain name that would not be illegitimate. The Panel also finds that using the disputed domain name to direct the public to a parking page displaying sponsored links, presumably for commercial gain, is further evidence of bad faith use. In this case, the Respondent has taken active steps to hide his identity and has submitted no evidence of any good faith use of the disputed domain name. The Panel also notes that although using a proxy service to hide the identity of the registrant is not per se conclusive of bad faith registration and use (see Trinity Mirror Plc and MGN Ltd. v. Piranha Holdings, WIPO Case No. D2008‑0004), the fact that the Respondent used a proxy service to hide his identity and contact details prevented the Complainant from contacting him. Prior UDRP panels have held that deliberate concealment of identity and contact information may in certain circumstances be indicative of registration in bad faith (see TTT Moneycorp Limited v. Diverse Communications, WIPO Case No. D2001-0725, and Schering Corporation v. Name Redacted, WIPO Case No. D2012-0729). Finally, some UDRP panels have held that in certain circumstances, registrants of domain names have an affirmative duty to abstain from registering and using a domain name which is either identical or confusingly similar to a prior trademark held by others and that contravening that duty may constitute bad faith. See Policy, paragraph 2(b); Nike, Inc. v. B. B. de Boer,WIPO Case No. D2000-1397; Nuplex Industries Limited v. Nuplex,WIPO Case No. D2007-0078; Mobile Communication Service Inc. v. WebReg, RN,WIPO Case No. D2005-1304; BOUYGUES v. Chengzhang, Lu Ciagao, WIPO Case No. D2007‑1325; Media General Communications, Inc. v. Rarenames, WebReg,WIPO Case No. D2006-0964; and, mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007‑1141. The Panel concludes in the light of all these circumstances that the Respondent’s registration and use of the disputed domain name constitute bad faith, and that the requirement of paragraph 4(a)(iii) of the Policy is also satisfied 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, Louis-Bernard Buchman
Sole Panelist
Date: March 3, 2021
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