The Complainants are Fondations Capital S.A., Luxembourg, and Fondations Capital France, France (collectively as the “Complainants”), represented by Cabinet Veil Jourde, France.
The Respondent is Domain Admin, Whoisprotection.cc, Malaysia / fondation capfrance, Luxembourg. 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 17, 2021. On March 18, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 19, 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 March 19, 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 March 24, 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 March 30, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 19, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 21, 2021. The Center appointed Christiane Féral-Schuhl as the sole panelist in this matter on April 28, 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 Complainants are European independent investment advisory firms focused on private equity and have been operating in this sector for more than 13 years, having been using the corporate name “Fondations Capital” ever since their respective incorporation. For the needs and purposes of their activities, the Complainant Fondations Capital S.A. registered the European Union figurative trademark FONDATIONS CAPITAL under the number 006732853 on March 17, 2009 for services in class 36, which has not been renewed and has therefore expired on March 6, 2018. The Complainants are both registered with Companies Houses, since 2003 regarding the Complainant Fondations Capital France and since 2013 regarding the Complainant Fondations Capital S.A., so that both hold rights over the corporate name “FONDATIONS CAPITAL”. The Complainants’ corporate names and non-renewed trademark are hereinafter referred to as the “FONDATIONS CAPITAL sign”. The Disputed Domain Name At the time of the Complaint as well as at the time of the decision, the Disputed Domain Name redirected to the website “www.fondations-capital.com”, which had been subject of a previous UDRP WIPO case (See Fondations Capital SA, Fondations Capital France v. Domain Admin, Whoisprotection.cc / Fondations Capital,WIPO Case No. D2020-3173), and which was used in order to get in touch with third parties and entice them to fill out a form and later make payments. The Panel is requested to transfer the Disputed Domain Name to one of the Complainants, i.e., Fondations Capital S.A. 5. Parties’ Contentions A. Complainant In accordance with paragraph 3(b)(ix) of the Rules, the legal and factual elements on which the Complaint relies are set out below. First of all, the Complainants claim that the Disputed Domain Name is identical or confusingly similar to its FONDATIONS CAPITAL sign, since it fully reproduces the term “fondations capital”, with only “france” as an additional word, which is one of the countries where the Complainants carry out their activities. The Complainants underline that the fact the FONDATIONS CAPITAL trademark has expired at the time of the proceedings does not have any incidence, since it has already been ruled that the fact the Complainants use such trademark in the commerce even though it expired is sufficient under the Policy. The Complainants also indicate that they both hold rights over the corporate name “FONDATIONS CAPITAL”, which serves as a distinctive source identifier, adding that according to the French Intellectual Property code, a trademark cannot be registered if it affects the right of a third party over a commercial or corporate name, so that the Complainants should be considered as having rights over an unregistered trademark. The Complainants then mention the previous UDRP WIPO case (See Fondations Capital SA, Fondations Capital France v. Domain Admin, Whoisprotection.cc / Fondations Capital, supra) in which the panel ruled that they had rights “over an unregistered trademark FONDATIONS CAPITAL for the purposes of the Policy”. Furthermore, the Complainants consider that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name, since the Respondent has never been authorized nor in any way licensed by the Complainants to use the FONDATIONS CAPITAL sign. Moreover, the Complainants argue that the redirection of the Disputed Domain Name to a website on which the FONDATIONS CAPITAL sign is reproduced, in order to get in touch with third parties and entice them to fill out a form and later make payments, is evidence that the Respondent has no legitimate rights and interests in the Disputed Domain Name and registered it with the sole purpose to try to extort money from third parties to the detriment of the Complainants’ reputation and interests. At last, the Complainants contend that the Respondent has registered and is using the Disputed Domain Name in bad faith, alleging that the website to which the Disputed Domain Name redirects was created in order to entice people to register by filling out a form and to invest money, which constitutes a scam that has actually been highlighted by French press. The Complainants claim that, in this context, the Respondent has reproduced the FONDATIONS CAPITAL sign on the website, created a logo that uses the font and colors which are similar to the ones used in the Complainants’ logo, and declared a fake address which is very close to the real address of the Complainants, which infer that the Respondent must have been aware of the Complainants and their trademark and corporate name. The Complainants also highlight that another domain name previously directed to the same website, so that they filed a previous complaint that gave rise to a UDRP WIPO case in which the Panel considered that the respondent was blatantly using that domain name with the intent for commercial gain and to misleadingly divert Internet users to its website, by creating a likelihood of confusion with the Complainants’ trademark and corporate name. The Complainants state that it is clear that the Respondent in the present case was involved in this previous case, since the registrar, contact information and website were the same as those in the present case, the Disputed Domain Name being used as an access to reach the illicit website in order to circumvent the decision ordered in the previous UDRP WIPO case. The Complainants finally underline that the Respondent declared a fake identity similar to the name of the Complainants and a fake address in Luxembourg to the Registrar, which confirms its bad faith. B. Respondent The Respondent did not reply to the Complainants’ contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the Disputed Domain Name, the Complainants shall prove the following three elements: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainants have 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. Identical or Confusingly Similar According to the Policy, paragraph 4(a)(i), the Complainants shall prove that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights. The FONDATIONS CAPITAL sign is the corporate name of both Complainants, and thus used as a distinctive source identifier for both of them. The Complainants have provided evidence of articles in different media that refer to the Complainants and their services provided as FONDATIONS CAPITAL. Moreover, as decided in the previous UDRP WIPO case (See Fondations Capital SA, Fondations Capital France v. Domain Admin, Whoisprotection.cc / Fondations Capital, supra) relating to the Complainants and to a domain name that was very similar to the Disputed Domain Name and that pointed to the website to which the Disputed Domain Name now redirects, “the Respondent’s use of the website at the disputed domain name targeting the Complainant and its services supports the Complainant’s assertion that FONDATIONS CAPITAL has achieved significance as a source identifier for the purposes of the Policy” (See Fondations Capital SA, Fondations Capital France v. Domain Admin, Whoisprotection.cc / Fondations Capital, supra). In view of the above, the Complainants must thus be considered has having rights over an unregistered FONDATIONS CAPITAL trademark for the purposes of the Policy. Then, the Panel notices that the Disputed Domain Name is composed of the exact reproduction of the FONDATIONS CAPITAL sign, to which have been added (i) the term “france” and (ii) the generic Top-Level Domain (“gTLD”) “.com”. The applicable gTLD in a domain name is viewed as a standard registration requirement and as such is disregarded for the purpose of determining whether a domain name is identical or confusingly similar to a trademark. The Panel wishes to remind that the first element of the UDRP serves essentially as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the domain name. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name. In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of the UDRP standing (see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDPR Questions, Third Edition (“WIPO Overview 3.0”)). The Panel believes that the full and identical reproduction in the Disputed Domain Name of the FONDATIONS CAPITAL sign makes the Disputed Domain Name confusingly similar to the FONDATIONS CAPITAL sign, the addition of the term “france”, which can be considered as referring to one of the countries where the Complainants carry out their activities, does not avoid such confusion. Therefore, the Panel holds that the Disputed Domain Name is confusingly similar to the unregistered trademark FONDATIONS CAPITAL in which the Complainants have rights and that the Complainants have established the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests According to the Policy, paragraph 4(a)(ii), the Complainants shall demonstrate that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Policy, paragraph 4(c), outlines circumstances that if found by the Panel to be proved shall demonstrate the Respondent’s rights or legitimate interests in the Disputed Domain Name. These circumstances are: - before any notice 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 According to prior UDRP panel decisions, it is sufficient that the complainant shows prima facie that the respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production to the respondent (see Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455). Indeed, while the overall burden of proof in UDRP proceedings is on the complainant, 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 the complainant makes out prima facie that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with 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 (see section 2.1 of the WIPO Overview 3.0). According to the Panel, the Complainants have shown prima facie that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name, since the Respondent has never been authorized nor in any way licensed by the Complainants to use the FONDATIONS CAPITAL sign. In addition, none of the circumstances set forth in paragraph 4(c) of the Policy appear to be met in this case. Furthermore, the Respondent did not reply to the Complainants’ contentions. Therefore, according to the Policy, paragraph 4(a)(ii) and 4(c), the Panel considers that the Respondent does not have rights or legitimate interests in the Disputed Domain Name According to the Policy, paragraph 4(a)(iii), the Complainants shall prove that the Disputed Domain Name has been registered and is being used in bad faith. Thus, paragraph 4(b) provides that any one of the following non-exclusive scenarios constitutes evidence of a respondent’s bad faith: (i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name 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 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 trademark 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 its 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. First of all, the Panel finds that it is established that the Complainants’ sign was used before the registration of the Disputed Domain Name, and that the Respondent could not have been unaware of the Complainants’ prior rights on the FONDATIONS CAPITAL sign at the time of the registration of the Disputed Domain Name, given that the Respondent reproduced the FONDATIONS CAPITAL sign not only identically and fully in the Disputed Domain Name, having only added the word “france” which can be considered as referring to one of the countries where the Complainants carry out their activities, but also on the website to which the Disputed Domain Name redirects, having even created a logo that uses font and colors which are similar to the ones used in the Complainants’ logo, and declared a fake address which is very close to the real address of the Complainants. The exact reproduction of the Complainants’ FONDATIONS CAPITAL sign is obviously aimed at misleading Internet users who seek information or wish to enter into a relationship with the Complainants to the website created by the Respondent, in order to then entice them to fill out a form and to invest in fake placements. The Panel notes that the website to which the Disputed Domain Name points seems to be the same as the one to which a previous domain name redirected, and that such previous domain name, which was very similar to the Disputed Domain Name, has finally been transferred to the Complainants by a previous panel decision that found that it had been registered and was used in bad faith. The Panel considers it very likely that the Respondent in the present case actually was the one involved in the previous case, and that the Disputed Domain Name has been registered and is being used to replace the previous domain name that was transferred to the Complainants, in order to allow access to the Respondent’s illicit website and thus circumvent the decision ordered in the previous UDRP WIPO case (See Fondations Capital SA, Fondations Capital France v. Domain Admin, Whoisprotection.cc / Fondations Capital, supra). Finally, the Panel finds that the Respondent registered and uses the Disputed Domain Name in order to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainants’ FONDATIONS CAPITAL sign as to the source of the Respondent’s website. Therefore, in view of all the circumstances of this case the Panel finds that the Respondent has registered and is using the Disputed Domain Name in bad faith according to the Policy, paragraph 4(a)(iii) and 4(b). 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 Christiane Féral-Schuhl
- the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
- the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Sole Panelist
Date: May 12, 2021
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