The Complainant is Davey Bickford, France, represented by Tmark Conseils, France.
The Respondent is greg victor, Russian Federation. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 1, 2021. On April 6, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 7, 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 Complainant on April 12, 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 April 16, 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 20, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 10, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 11, 2021. The Center appointed Nicholas Weston as the sole panelist in this matter on May 19, 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 company that operates a demolition services business with around 650 employees worldwide and is a pioneer in detonators, firing systems, and explosive chain priming components dating back to 1831. Following the acquisition in 2015 of the Complainant by a Chilean based mining services company, Enaex, the Complainant changed its trade name from “Davey Bickford” to “Davey Bickford Enaex”. The Complainant holds a portfolio of registrations for the trademark DAVEY BICKFORD, and variations of it, in numerous geographies including the European Union and Russian Federation. International Trademark Registration No. 1222740, for example, was registered on March 6, 2014 designating inter alia the European Union and Russian Federation. The Complainant owns the domain names The Respondent registered the Disputed Domain Name The Complainant cites its International trademark registrations including Registration No. 1222740 registered on March 6, 2014 and numerous other registrations around the world, for the mark DAVEY BICKFORD as prima facie evidence of ownership. The Complainant submits that the mark DAVEY BICKFORD is well known and that its rights in that mark predate the Respondent’s registration of the Disputed Domain Name The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because inter alia it has never authorized the Respondent to use “Davey Bickford” and “Davey Bickford Enaex” as a domain name. Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, contrary to the Policy and Rules and submits that although the Disputed Domain Name does not currently resolve to any active website, passive holding does not preclude a finding of bad faith, and “it is impossible to think of any good faith use to which the disputed domain name could be put by the Respondent”. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, the Complainant has the burden of proving the following: (i) that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) that the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark DAVEY BICKFORD in numerous geographies including the European Union and Russian Federation. The requirements of the first element for purposes of the Policy may be satisfied by a trademark registered in any country (see Thaigem Global Marketing Limited v. Sanchai Aree,WIPO Case No. D2002-0358). Turning to whether the Disputed Domain Name is identical or confusingly similar to the DAVEY BICKFORD trademark, the Panel observes that the Disputed Domain Name comprises: (a) an exact reproduction of the Complainant’s trademark DAVEY BICKFORD; (b) followed by a misspelled version (“eneax”) of the name of its affiliated business “Enaex”; (c) followed by the gTLD “.com”. It is well-established that the gTLD used as technical part of a domain name may be disregarded (see Autodesk v. MumbaiDomains,WIPO Case No. D2012-0286). The relevant comparison to be made is with the second-level portion of the Disputed Domain Name, specifically: “daveybickfordeneax”. It is also well established that where a domain name incorporates a complainant’s well-known and distinctive trademark in its entirety, it would be confusingly similar to that mark despite the addition of a word or, in this case, the misspelled version (“eneax”) of the name of the Complainant’s affiliated business “Enaex” (see Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; Wal-Mart Stores, Inc. v. Kuchora, Kal,WIPO Case No. D2006-0033; Davey Bickford v. Solu Shon,WIPO Case No. D2018-1283). This Panel accepts the Complainant’s contention that the Disputed Domain Name The Panel finds that the Complainant has established paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy lists the ways that the Respondent may demonstrate rights or legitimate interests in the Disputed Domain Name. The Policy also places the burden on the Complainant to establish the absence of the Respondent’s rights or legitimate interests in the Disputed Domain Name. Because of the inherent difficulties in proving a negative, the consensus view is that the Complainant need only put forward a prima facie case that the Respondent lacks rights or legitimate interests. The burden of production then shifts to the Respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles,WIPO Case No. D2000-1306; WIPO Overview of WIPO Panel Views on Selected URDP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1). The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because (i) the Complainant’s DAVEY BICKFORD trademark was registered prior to the registration date of the Disputed Domain Name; and (ii) the Respondent has not acquired or owned any trademark or service mark rights in the name Davey Bickford or Davey Bickford Enaex, and has not been commonly known by the name Davey Bickford or Davey Bickford Enaex. The Complainant also contends that “[t]he Complainant has never licensed or otherwise authorized in any way the Respondent (no matter is disclosed identity is) to use ‘DAVEY BICKFORD’ and ‘DAVEY BICKFORD ENAEX’ protected names as domain name or as element of a domain name or for any other kind of purpose”. This Panel accepts this position in line with cases such as Guerlain S.A. v. PeiKang,WIPO Case No. D2000-0055 (“in the absence of any license or permission from the Complainant to use any of its trademarks or to apply for or use any domain name incorporating those trademarks, it is clear that no actual or contemplated bona fide or legitimate use of the domain name could be claimed by Respondent”). Further, the composition of the Disputed Domain Name where, as here, it consists of a misspelling of the trade name of the Complainant since the acquisition in 2015 of the Complainant by a Chilean based mining services company, Enaex, and includes its trademark, in this Panel’s view carries “a risk of affiliation” that other UDRP panels have not considered fair use as it “effectively impersonates or suggests sponsorship or endorsement by the trademark owner” (see WIPO Overview 3.0, section 2.5.1). This Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name and notes that the Disputed Domain Name resolves only to an inactive page. Therefore, the Disputed Domain Name has not been used in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use. The Panel finds for the Complainant on the second element of the Policy. C. Registered and Used in Bad Faith The third element of the Policy requires that the complainant must also demonstrate is that the disputed domain name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both of these conjunctive requirements. The examples of bad faith registration and use in the Policy, paragraph 4(b) are not exhaustive of all circumstances from which such bad faith may be found (see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). The objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. (See Match.com, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230). The Panel finds that the evidence in the case shows the Respondent registered and has used the Disputed Domain Name in bad faith. On the issue of registration, the name “Davey Bickford Enaex Europe” is a registered company (in France) directly related to the Complainant. The Complainant owns the domain name In addition, a gap of more than 40 years between registration of the Complainant’s trademark DAVEY BICKFORD and the Respondent’s registration of the Disputed Domain Name (containing the trademark) can in certain circumstances be an indicator of bad faith. (See Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415). In this case, the Complainant’s rights in its trademark predate any rights that could possibly flow from the Respondent’s registration of the Disputed Domain Name on March 12, 2021, for example, International registration No. 436083 for the device mark DAVEY BICKFORD, registered on January 16, 1978 by 44 years. On the issue of use, the Complainant’s evidence is that the Disputed Domain Name does not currently resolve to an active website. Previous UDRP panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. “While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the ‘passive holding’ doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put” (See WIPO Overview 3.0, section 3.3). This Panel notes that the evidence is that all four of these factors are present in this proceeding. In the absence of any evidence to the contrary, this Panel accepts the Complainant’s evidence and finds that the Respondent has taken the Complainant’s trademark DAVEY BICKFORD and incorporated it in the Disputed Domain Name along with a misspelling of the name of its affiliated entity “Enaex”, without the Complainant’s consent or authorization, for the very purpose of capitalizing on the reputation of the trademark to infringe upon the Complainant’s rights. Accordingly, the Panel finds that the Complainant has satisfied the requirements of 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 Nicholas Weston
Sole Panelist
Date: May 31, 2021
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