The Complainant is Paris Saint-Germain Football, France, represented by Plasseraud IP, France.
The Respondent is Contact Privacy Inc. Customer 1248956775, Contact Privacy Inc. Customer 1248956775, Canada / Ismail Bulut Gonulalan, Turkey. 2. The Domain Names and Registrars
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 29, 2021. On April 29, 2021, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On April 29, 2021 and April 30, 2021, the Registrars transmitted by email to the Center their verification responses disclosing registrant and contact information for the disputed domain names, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 30, 2021, providing the registrant and contact information disclosed by the Registrars, and inviting the Complainant to submit an Amended Complaint. The Complainant filed an Amended Complaint on April 30, 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 May 3, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 23, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 25, 2021. The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on May 31, 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, registered on July 5, 1991, is the French company that operates the management of the sports activities of the Paris Saint Germain Football Club association. It is the owner of the following, amongst others, trademark registrations (Annex 6 to the Amended Complaint): - European Union trade mark registration No. 000314336 for the word mark P.S.G. PARIS-SAINT-GERMAIN, registered on November 9, 1998, and successively renewed, in International classes 25, 28 and 41; and - European Union trade mark registration No. 016666836 for the word mark PARIS-SAINT-GERMAIN, registered on January 18, 2018, in International classes 3, 9, 12, 14, 16, 18, 24, 25, 28, 28, 30, 32, 34, 35, 36, 38, 39, 41; and - International trademark registration No. 620085 for the word & device mark PSG PARIS SAINT-GERMAIN, registered on May 27, 1994, and successively renewed, in International classes 09, 25, 35 and 41. The disputed domain names The Complainant asserts to operate the famous Paris Saint Germain Football Club, established in 1970 and based in Paris, enjoying a considerable reputation in the area of professional football all over the world, being the owner of several rights over the PARIS SAINT GERMAIN denomination be it as its company name, trademark or domain names. Under the Complainant’s view, the disputed domain names reproduce its trademark in its entirety and are thus confusingly similar therewith. Moreover, the Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain names given that: (i) the disputed domain names do not correspond to the name of the Respondent, nor to any trademark registered in the name of the Respondent (Annexes 10-1, 10-2 and 10-3 to the Amended Complaint); (ii) the Respondent has not been commonly known by the disputed domain names, nor has he ever asked for, of been given any permission by the Complainant to use the PARIS-SAINT-GERMAIN trademark in any way; (iii) there is no evidence of any fair or noncommercial or bona fide use of the disputed domain names which are presently used in connection with webpages offering them for sale. Lastly, the Complainant asserts that the bad faith of the Respondent is evident given that the Respondent should be deemed to have constructive notice of the Complainant’s famous PARIS SAINT-GERMAIN trademark, which it has targeted to unduly profit by selling the disputed domain names in excess of any out-of-pocket expenses directly incurred in registering them, having no genuine use of the disputed domain names been made throughout the entire period of their registration. This leads to the conclusion that the Respondent registered them for the sole purpose of selling them to make an unlawful financial profit in view of the high reputation and very substantial goodwill associated with the Complainant’s trademark. In addition to the above, the Respondent’s choice to retain a privacy proxy service and the lack of reply to a cease and desist letter and subsequent reminders sent prior to this procedure (Annex 19 to the Amended Complaint) are further indicatives of the Respondent’s bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy sets forth the following three requirements, which have to be met for this Panel to order the transfer of the disputed domain names to the Complainant: (i) the disputed domain names are 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 names; and (iii) the disputed domain names have been registered and are being used in bad faith. The Complainant must prove in this administrative proceeding that each of the aforementioned three elements is present in order to obtain the transfer of the disputed domain names. In accordance with paragraph 14(a) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint. A. Identical or Confusingly Similar The Complainant has established its rights in the registered P.S.G. PARIS-SAINT-GERMAIN trademark. The core element of the Complainant’s trademark is entirely reproduced in both of the disputed domain names. It is a well-accepted understanding that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7). The first element of the Policy has therefore been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that indicate a respondent’s rights to or legitimate interests in a disputed domain name. These circumstances are: (i) before any notice 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, in spite of not having acquired 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. The Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights to or legitimate interests in the disputed domain names. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden of proof is still on the Complainant to make a prima facie case against the Respondent. In that sense, the Complainant indeed states that it has never authorized nor given the Respondent permission to use the PSG PARIS SAINT-GERMAIN trademark in any way. Also, the lack of evidence as to whether the Respondent is commonly known by the disputed domain names, or the absence of any trademarks registered by the Respondent corresponding to the disputed domain names (Annexes 10-1, 10-2 and 10-3 to the Amended Complaint), corroborate the absence of a right or legitimate interest in the disputed domain names. Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain names. The second element of the Policy has therefore been established. C. Registered and Used in Bad Faith The Policy indicates in paragraph 4(b) that bad faith registration and use can be found in view of: (i) circumstances indicating that the Respondent has registered or acquired the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring the disputed domain names to the Complainant who is the owner of a trademark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain names; or (ii) the Respondent has registered the disputed domain names 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 disputed domain names primarily for the purpose of disrupting the business of a competitor; or (iv) by using the disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other 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. The registration and use of the disputed domain names in bad faith can be found in the present case in view of the following circumstances: (i) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use of the disputed domain names; (ii) the Respondent is offering the disputed domain names for sale for the amounts of USD 24,000 and USD 48,000 which are amounts in excess of out-of-pocket costs incurred in the registration of the disputed domain names; (iii) the well-known status of the Complainant’s trademark, the nature of the disputed domain names (reproducing the entirety of the Complainant’s trademark), and the Respondent’s intention to unduly profit from the value of the Complainant’s trademark, are a clear indication of the Respondent’s registration and holding of the disputed domain names in bad faith, with the implausibility of any good faith use to which the disputed domain names may be put; (iv) the Respondent’s choice to retain a privacy proxy service; and (v) the lack of reply to a cease and desist letter, and to subsequent reminders sent prior to this procedure (Annex 19 to the Amended Complaint). For the reasons stated above, the Panel finds that the disputed domain names were registered and are being used in bad faith pursuant to paragraph 4(a)(iii) of the Policy. The third element of the Policy has therefore been established. 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 names Wilson Pinheiro Jabur
Sole Panelist
Date: June 9, 2021
Full & Egal Universal Law Academy