The Complainant is OVH, France, represented by Herald, France.
The Respondent is Mohamed Nagar, Egypt. 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 25, 2021. On March 25, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 26, 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 April 6, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 26, 2021. The Respondent submitted a Response on April 8, 2021. The Center notified the commencement of Panel appointment process on April 27, 2021. The Center appointed John Swinson as the sole panelist in this matter on May 4, 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 cloud-computing business located in France that operates internationally. It also provides domain name registration, Internet telephony and data hosting services. The Complainant’s primary website is located at “www.ovh.com”. The Complainant uses “OVHcloud” as the brand for its cloud-computing services on the Complainant’s website. The Complainant owns a registration trademark in the United States of America (“United States” or “U.S.”) for OVH, being U.S. Registration No. 4,177,556 with a registration date of July 24, 2012. The Complainant also owns a United States trademark registration for OVHCLOUD, being U.S. Registration No. 6,082,258 with a registration date of June 23, 2020. The Complainant has other trademark registrations and applications. The Respondent did not file a formal Response. However, he submitted an email on April 8, 2021 The disputed domain name was registered on January 28, 2020. The website at the disputed domain name promotes and sells cloud computing services. This website uses the terms “OVH-Managed” and “OVH MANAGED” as the apparent branding for the services offered on this website. On a page on this website, an address is provided which does not appear to be a real address (Walking Park, Angeles, NY). A telephone number is also provided which appears to be a United States telephone number. 5. Parties’ Contentions A. Complainant The Complainant is well-known in France and internationally for cloud computing, domain name registration, data hosting and Internet telephony services. The Complainant owns registered trademarks for OVH and OVHCLOUD (as set out above in section 4). The disputed domain name is confusingly similar to these trademark registrations. The disputed domain name incorporates the entirety of the Complainant’s distinctive OVH trademark. Adding a descriptive term to a trademark does not avoid confusing similarity of the disputed domain name and the trademark. The Respondent’s use of “managed” in the disputed domain name is likely to give rise to confusion because it points to a field of goods and services in which the Complainant’s marks are actually used. Initially, the website at the disputed domain name was a mere copy of the Complainant’s website. The Complainant took steps so that the infringing website was shut down, four times. However, the Respondent modified the content of the website, and it came back online. The new content still reproduces and imitates the Complainant’s registered trademarks. The Respondent is not affiliated with the Complainant and has not been authorised by the Complainant to use the Complainant’s trademarks. Trading upon the name, goodwill and reputation of the Complainant is not bona fide commercial or fair use within the meaning of paragraph 4(c)(i) of the Policy. The Respondent is making an illegitimate commercial and unfair use of the disputed domain name, with intent for commercial gain and is misleadingly diverting consumers to the Respondent’s website. Accordingly, the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant’s trademark is well-known. Registration of a domain name that is similar to a widely known or famous trademark can create a presumption of bad faith. Because the Respondent copied the content from the Complainant’s website, the Respondent was necessarily aware of the Complainant when the disputed domain name was registered. It is bad faith where a respondent creates a website that is nearly identical to the website of the complainant. The Respondent has been free riding on the reputation of the Complainant’s trademarks for commercial gain. B. Respondent The Respondent did not formally reply to the Complainant’s contentions. In his email of April 8, 2021, the Respondent is claiming that they are a “brand new company” which will not compete with OVH services and will offer Live streaming services. They are “still in launching progressing and working in very small scale”. He claims that they have invested a lot of money with developers and designers to launch the website. The Respondent is also inviting the Complainant to contact them directly if the Complainant wanted to purchase the domain name. 6. Discussion and Findings To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely: (i) the disputed domain name 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 disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. The onus of proving these elements is on the Complainant even though the Respondent failed to submit a formal Response. Paragraph 15(a) of the Rules directs the Panel to decide the Complaint 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. A. Identical or Confusingly Similar The Complainant has proven ownership of a registered trademark in the United States for OVH. The disputed domain name is confusingly similar to that trademark, disregarding the generic Top-Level Domain “.com”. The word “managed”, a common term used to describe a type or characteristic of a cloud service, has been added to the disputed domain name. The Respondent’s use of the Complainant’s registered trademark along with the word “managed” does not prevent the Complainant’s trademark from being recognizable in the disputed domain name. Accordingly, the Panel concludes that in the circumstances of this case the disputed domain name is confusingly similar to OVH being a trademark in which the Complainant has rights. The Complainant succeeds on the first element of the Policy in relation to the disputed domain name. B. Rights or Legitimate Interests The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name. Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name: (i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or (ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or (iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name. The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. There is no evidence that the Respondent is commonly known by the disputed domain name. The Respondent is not affiliated with the Complainant and has not been authorized by the Complainant to use the OVH trademark. The Respondent is making a commercial use of the disputed domain name by using it for an online website to promote and to sell products and services that compete with the Complainant’s products and services. The use of a complainant’s trademark to direct users to a competing site does not support a claim by a respondent to rights or legitimate interests in the disputed domain name. In these circumstances, the Complainant has established a clear prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent in his informal email was claiming that they are a “brand new company” which “will not compete with OVH services and will offer Live streaming services”. However it did not provide any evidence of such project. Accordingly, the Respondent has not sought to rebut that prima facie case. Accordingly, the Panel finds that the Complainant succeeds on the second element of the Policy in relation to the disputed domain name. C. Registered and Used in Bad Faith As stated above, the Respondent is using the disputed domain name to direct Internet traffic to the Respondent’s website which sells products and services that compete with the Complainant. At one point in time, the website at the disputed domain name was a copy of the Complainant’s website. This is strong evidence that the Respondent was aware of the Complainant and the Complainant’s trademarks when the Respondent registered the disputed domain name. The Complainant wrote to the RSA Security, and as a result the website at the disputed domain name was shut down four times. Emails from RSA Security refer to the website at the disputed domain name as being a “fraudulent website”. Currently, the website at the disputed domain name is not a copy of the Complainant’s website – rather, as stated above, it advertises and sells competing goods and services (and appears to provide false address details for the Respondent.) One inference that can be drawn from this conduct is that the Respondent selected the disputed domain name to trade off the reputation of the Complainant and to mislead Internet users into believing that they were visiting the Complainant’s website when in fact they were not. See for example Ebel International Limited v. Alan Brashear,WIPO Case No. D2017-0001. Thus, it is reasonable for the Panel to conclude that the Respondent intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark as to the source of the website. This is an indicator of bad faith under paragraph 4(b)(iv) of the Policy. The Complainant succeeds on the third element of the Policy in relation to the disputed domain name. 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 John Swinson
Sole Panelist
Date: May 10, 2021
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