The Complainant is Ile-de-France Mobilités, France, represented by De Gaulle Fleurance & Associés, France.
The Respondent is Wahib Simou, Morocco. 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 27, 2021. On January 27, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 28, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the 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 February 16, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 8, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 13, 2021. The Center appointed Anne-Virginie La Spada as the sole panelist in this matter on March 22, 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 State-owned entity located in Paris, France. It is in charge of operating public transportation services in Paris and its suburbs. It has an operating budget of EUR 10 billion. Among its subscription offers, the Complainant sells a transportation pass named Navigo. The Navigo pass, now called Navigo card, was launched 20 years ago and is widely used by passengers. In 2017, nearly 13 million Navigo cards were sold. The Complainant is the owner of several trademark registrations for NAVIGO. The Complainant owns in particular a French word mark filed on April 20, 2016 and registered under no.4266294 for goods and services of classes 9, 12, 16, 18, 35, 37, 38, 39, 41, and 42. Given the number of passengers using the Navigo pass, the Complainant considers that the NAVIGO trademark should be considered as well known in France. The Complainant registered the domain name The disputed domain name According to the Complainant, the disputed domain name used to redirect to a webpage reproducing the trademark NAVIGO and name of the Complainant. The disputed domain name currently resolves to a parked page. The Complainant sent a cease and desist email to the Respondent on May 20, 2020, asking the Respondent to shut down the website connected to the disputed domain name and to transfer the disputed domain name to the Complainant. By an email of the same date, the Respondent replied that he would shut down the website and agreed to the transfer. However, the Respondent subsequently explained that he was unable to make the said transfer due a sixty-day period required by the Registrar. The Complainant contacted the Respondent again after the sixty days had passed, but the Respondent did not respond. 5. Parties’ Contentions A. Complainant The Complainant contends that the disputed domain name is confusingly similar to its NAVIGO trademark. Indeed, the disputed domain name incorporates the trademark NAVIGO in its entirety, and the association of this trademark with the French generic words “mon” (meaning “my”) and “dedommagment” (a misspelling of the French word “dédommagement”, which means “refund”) does not obviate confusion. The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name, and that it has not authorized the Respondent to use the disputed domain name. The Complainant finally contends that the disputed domain name has been used and registered in bad faith. The Complainant contends in this respect that the disputed domain name used to resolve to a website giving the appearance of an official website featuring the Complainant’s name and trademark NAVIGO, and fraudulently presented as a space to file a claim for compensation. According to the Complainant, through registration and use of the disputed domain name, the Respondent intentionally attempts to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings According to paragraph 4(a) of the Policy, a complainant must assert and prove each of the following: (i) the domain name registered by the respondent 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 domain name; and (iii) the domain name registered by the respondent has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant owns trademark registrations for the trademark NAVIGO. The disputed domain name reproduces the Complainant’s trademark NAVIGO in its entirety with no alteration. The trademark is combined with the descriptive French terms “mon” (meaning “my”) and “dedommagment”, which is a misspelling of the French word “dédommagement” (meaning “refund”). As a rule, UDRP panels consider that the addition of a descriptive term does not prevent a finding of confusing similarity (see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). In the present case, the trademark NAVIGO is clearly recognizable in the disputed domain name. The mere addition of the descriptive terms “mon” and “dedommagment”, misspelled, does not change the overall impression produced by the disputed domain name and does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark (See for example DPDgroup International Services GmbH & Co. KG v. Whois Privacy Protection Foundation / Aurelius Mark,WIPO Case No. D2019-3141). UDRP panels also accept that a generic Top-Level Domain (“gTLD”), such as “.com”, should be disregarded when assessing whether a domain name is identical or confusing similar to a trademark (see section 1.11 of the WIPO Overview 3.0). The Complainant has thus satisfied the conditions set forth in paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Based on the information submitted by the Complainant, the Respondent does not appear to have rights or legitimate interests in respect of the disputed domain name, nor has the Complainant granted to the Respondent an authorization to use the disputed domain name. The Respondent does not appear to have operated any bona fide or legitimate business under the disputed domain name and is not making a noncommercial or fair use of the disputed domain name. Instead, the disputed domain name used to resolve to a website using the Complainant’s name and trademark NAVIGO, and presented as space to file a claim for refund. Upon receipt of the Complainant’s cease and desist email, the Respondent did not allege any rights or legitimate interests in the domain name but said that he agreed to transfer it to the Complainant. Finally, the Respondent did not file a response to the Complaint. The Panel may draw from the lack of a Response the inferences that it considers appropriate, according to the Rules, paragraph 14(b). Accordingly, the Panel finds that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, which has not been rebutted by the Respondent. Therefore, the Complainant has satisfied the condition set out in paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy requires the Complainant to prove both registration and use of the disputed domain name in bad faith. Given the distinctive character of the trademark NAVIGO and its reputation, the Panel considers that the Respondent could not ignore the Complainant’s NAVIGO trademark at the time of the registration of the disputed domain name. The fact that the disputed domain name is almost identical to the Complainant’s domain name According to evidence submitted by the Complainant, the disputed domain name resolved to an active website giving the appearance of an official website, as it featured the Complainant’s name and its trademark NAVIGO. In addition, the website was presented as a space to file a claim for compensation. Under these circumstances, the Panel considers it likely that the Respondent intended to use the disputed domain name as a support for a potential fraudulent activity, namely to impersonate the Complainant and extract personal or financial data from persons believing that the communication comes from the Complainant. Panels have found that such behavior amounts to use of a domain name in bad faith (see Marriott International, Inc., Marriott Worldwide Corporation and The Ritz-Carlton Hotel Company, LLC v. Van C Bethancourt Jr., Andre Williams,WIPO Case No. D2018-2428 and Accor v. Sangho Heo / Contact Privacy Inc.,WIPO Case No. D2014-1471. The Panel accepts therefore that the disputed domain name has been used in bad faith. By using the disputed domain name in such manner, the Respondent intentionally attempted to attract, for the purposes of commercial gain, Internet users to its web site by creating a likelihood of confusion with the Complainant’s mark as to the source and affiliation of its website. Such behaviour constitutes use in bad faith under paragraph 4(b)(iv) of the Policy. The fact that the disputed domain name currently resolves to a parked page does not alter the Panel’s findings. For the reasons set out above, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith, and that the Complainant has satisfied the condition set forth in paragraph 4(a)(iii) 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 Anne-Virginie La Spada
Sole Panelist
Date: April 6, 2021
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