The Complainant is Compagnie Francaise de l’Afrique Occidentale - C.F.A.O., France, represented by Nameshield, France.
The Respondent is Jennifer Cate, United States of America. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 11, 2021. On March 11, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 March 19, 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 March 19, 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 April 7, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 27, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 6, 2021. The Center appointed Zoltán Takács as the sole panelist in this matter on May 20, 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. The language of this administrative proceeding is English, that being the language of the Registration Agreement. 4. Factual Background With revenue of over EUR 5.5 billion, access to 46 of 54 countries of Africa and more than 22,000 employees, the Complainant is a key player in mobility, healthcare, consumer goods, infrastructure and energy. The Complainant’s distribution network comprises 153 subsidiaries and is the largest on the African continent. The Complainant is owner of several trademarks containing the “CFAO” name, including the International Trademark Registration (“IR”) No. 675029 for the mark CFAO and design element registered on May 27, 1997, in numerous classes of the Nice Agreement Concerning the International Classification of Good and Services for the Purpose of the Registration of Marks. The Complainant has online presence at “www.cfaogroup.com” and the corresponding domain name was registered on July 26, 1999. The disputed domain name that was registered on November 20, 2020, and used in relation to a phishing scheme is currently inactive. 5. Parties’ Contentions A. Complainant The Complainant contends that the disputed domain name, which fully incorporates its CFAO trademark is confusingly similar to it. The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name and is unable to rely on any of the circumstances set out in paragraphs 4(c)(i), (ii) or (iii) of the Policy. The Complainant submits that the disputed domain name was registered and is being used in bad faith in the context of a phishing scheme. The Complainant requests that the disputed domain name be transferred from the Respondent to the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 15(a) of the Rules requires that the Panel’s decision be made “on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. It has been a consensus view in UDRP decisions that a respondent’s default (i.e., failure to submit a response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). A complainant must evidence each of the three elements required by paragraph 4(a) of the Policy in order to succeed on the complaint, namely that; (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (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 Under paragraph 4(a)(i) of the Policy, there are two requirements which the Complainant must establish, first that it has rights in a trademark or service mark, and second that the disputed domain name is identical or confusingly similar to the trademark or service mark. It has been a consensus view among UDRP panels that if the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights. The Complainant produced proper evidence of having registered rights in the CFAO trademark and for the purpose of this proceeding the Panel establishes that the IR No. 675029 satisfies the requirement of having trademark rights for the purpose of the Policy. Having determined the presence of the Complainant’s trademark rights, the Panel next assessed whether the disputed domain name is identical or confusingly similar to the Complainant’s trademark. According to section 1.7 of the WIPO Overview 3.0, the standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name. This test typically involves a side-by-side comparison of the disputed domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. According to section 1.8 of the WIPO Overview 3.0, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. According to section 1.10 of the WIPO Overview 3.0, unless the design element of a trademark comprise the dominant portion of the relevant mark such that it effectively overtakes the textual elements in prominence, trademark registrations with design elements prima facie satisfy the requirement that the complainant show “rights in a mark” for assessment as to confusing similarity. According to section 1.11.1 of the WIPO Overview 3.0, the applicable Top-Level Domain (“TLD”) in a domain name (e.g., “.com”, “.club”, “.nyc”, or as in this case “.org”) is viewed as a standard registration requirement and as such is generally disregarded under the first element confusingly similar test. The Complainant’s trademark consists of a red and blue circular design element followed by the word element CFAO in upper case lettering (the abbreviation stands for the Complainant’s name, Compagnie Francaise de l’Afrique Occidentale). The design element of the trademark does not convey any relevant information (to this Panel at least). What stands out in the Complainant’s trademark is the word element CFAO that is evidently recognizable within the disputed domain name as a dominant element and the addition of the word “group” does not prevent a finding of confusing similarity. In view of the above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark and that requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests Under paragraph 4(c) of the Policy, a respondent may demonstrate its rights or legitimate interests in a domain name by showing any of the following circumstances, in particular but without limitation: (i) its use of, or demonstrable preparation to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services; (ii) it has been commonly known by the domain name; (iii) it is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue. In the present case, the Complainant has submitted sufficient and uncontested evidence that it holds well-established rights in the CFAO trademark. The Complainant has never authorized the Respondent to use its trademark in any way, and its prior rights in the trademark precede the date of registration of the disputed domain name. According to section 2.1 of the WIPO Overview 3.0, while the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with the relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. The Respondent defaulted and failed to respond, and by doing so failed to offer the Panel any type of evidence set forth in paragraph 4(c) of the Policy, or otherwise counter the Complainant’s prima facie case. The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name in accordance with paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy lists a number of factors which, if found by the panel to be present, shall be evidence of registration and use of a domain name in bad faith. This non-exclusive list includes: (i) circumstances indicating that you have registered or you have acquired the 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or (ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location. The Complainant provided evidence in Annex 7 to the Complaint showing that the Respondent has used the disputed domain name to send fraudulent email impersonating a financial officer of the Complainant in an attempt to receive payment. Previous UDRP panels have held that use of domain name to send deceptive emails to solicit fraudulent payments may constitute bad faith. See section 3.4 of the WIPO Overview 3.0. The Panel is convinced this is the case here. The fact that the disputed domain name currently resolves to a website displaying an error message does not alter the Panel’s conclusion. According to section 3.3 of the WIPO Overview, passive holding of a domain name does not prevent a finding of bad faith. The Respondent’s lack of any rights or legitimate interests in the disputed domain name absence of any conceivable good faith use of the disputed domain name by the Respondent, failure to react and respond to the compelling evidence submitted by the Complainant in view of the Panel support an undisputed presumption of the Respondent’s evident targeting of the Complainant’s trademark rights within the meaning of paragraph 4(a)(iii) of the Policy. 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 paragraph 4(a)(iii) of the Policy is satisfied. 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 Zoltán Takács
Sole Panelist
Date: June 3, 2021
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