The Complainant is Spie Batignolles, France, represented by Nameshield, France.
The Respondent is MORAD MORIME, PLAQUIELECTRO, France. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 26, 2021. On May 27, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 28 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 May 28, 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 May 28, 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 31, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 20, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 21, 2021. The Center appointed Christiane Féral-Schuhl as the sole panelist in this matter on June 25, 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 construction company that provides building and infrastructure construction in France, Germany, the United Kingdom, Spain, Portugal, and Switzerland. For the purposes of its activities, the Complainant is the owner of several trademarks (thereafter the “SPIE BATIGNOLLES trademarks”) such as: - the French semi-figurative trademark SPIE BATIGNOLLES n°1494661, registered on October 19, 1988, for products and services in classes 1, 4, 6, 7, 8, 9, 11, 12, 16, 17, 19, 28, 35, 37, 38, 39, 40, 41, 42 and 45 and duly renewed. - the International semi-figurative trademark SPIE BATIGNOLLES n°535026, registered on February 17, 1989, for products and services in classes 1, 4, 6, 7, 8, 9, 11, 12, 16, 17, 19, 35, 37, 38, 39, 40, 41 and 42 and duly renewed; - the European Union semi-figurative trademark SPIE BATIGNOLLES n°003540226, registered on December 5, 2006, for products and services in classes 1, 2, 6, 19, 37 and 42 and duly renewed; The Complainant is also the owner of several domain names such as: - The disputed domain name was registered on May 18, 2021. At the time of the Complaint as well as at the time of the Decision, the disputed domain name points to an index page resolving to inactive links. The Panel is requested to transfer the disputed domain name to the Complainant. 5. Parties’ Contentions A. Complainant In accordance with paragraph 3(b)(ix) of the Rules, the legal and factual elements on which the Complainant relies are set out below. First, the Complainant states that the disputed domain name is identical to its SPIE BATIGNOLLES trademark, since it includes it in its entirety, with the addition of a dash and the generic Top-Level-Domain (“gTLD”) “.com” does not change the overall impression of the designation as being connected to its trademark. Moreover, the Complainant considers that the Respondent has no rights or legitimate interests in respect of the disputed domain name, since the Respondent is not identified in the WhoIs database as the disputed domain name so that the Respondent is not commonly known by the disputed domain name. The Complainant adds that the Respondent is not affiliated with nor authorized by the Complainant in any way and is not related to its business in any way either, and that the fact the disputed domain name resolves to an index page shows that the Respondent did not make any use of the disputed domain name since its registration, confirming that the Respondent has no demonstrable plan to use it and thus no legitimate interest in respect of it. Finally, the Complainant argues that the disputed domain was registered and is being used in bad faith, arguing that the Respondent has registered it several years after the registration of the SPIE BATIGNOLLES trademarks. The Complainant also underlines that all the results for the denomination “spie batignolles” refer to the Complainant, so that the use of its trademark in the disputed domain name gives rise to the inference that the Respondent must have registered the disputed domain name for its trademark value. Furthermore, the Complainant contends that the Respondent has not demonstrated any activity in respect of the disputed domain name, which resolves to an index page, and that it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name that would not be illegitimate. The Complainant finally highlights that the disputed domain name has been set up with MX records, which suggests that it may be actively used for email purposes. B. Respondent The Respondent did not reply to the Complainant’s 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 Complainant 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 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. A. Identical or Confusingly Similar According to the Policy, paragraph 4(a)(i), the Complainant shall prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. First, the Panel finds that the Complainant has provided evidence that it has rights on the SPIE BATIGNOLLES trademark. Then, the Panel notices that the disputed domain name exclusively, wholly and exactly reproduces the SPIE BATIGNOLLES trademark, to which have only been added (i) a hyphen between “spie” and “batignolles” and (ii) the 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 disputed 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 (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 exclusive, whole and exact reproduction of the SPIE BATIGNOLLES trademark in the disputed domain name makes it identical to the SPIE BATIGNOLLES trademarks, and that the addition of the hyphen between “spie” and “batignolles” does not avoid finding of such identity. Therefore, the Panel holds that the Complainant has established the first element of paragraph 4(a) of the Policy and that the disputed domain name is identical to the Complainant’s trademarks. B. Rights or Legitimate Interests According to the Policy, paragraph 4(a)(ii), the Complainant 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 did. 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 a 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 Complainant has shown prima facie that the Respondent has no rights or legitimate interests in respect of the disputed domain name, since the Respondent is not commonly known by the disputed domain name nor affiliated with the Complainant in any way and has never been authorized by the Complainant to make any use of the SPIE BATIGNOLLES trademark. In addition, none of the circumstances set forth in paragraph 4(c) of the Policy appear to be met in this case. However, the Respondent did not reply to the Complainant’s contentions to rebut the prima facie case. 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 Complainant 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. Section 3.3 of the WIPO Overview 3.0 provides that different factors are relevant in determining a finding of bad faith under the doctrine of passive holding, including: (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. First, the Panel finds that it is established that the Complainant’s trademarks were registered before the registration of the disputed domain name, and considers that, given the distinctiveness of the SPIE BATIGNOLLES trademark and the fact that the disputed domain name exclusively, wholly and exactly reproduces it, it is unlikely that the Respondent was unaware of its existence. Moreover, why all the results for the denomination “spie batignolles” refer to the Complainant, the exclusive, whole and exact reproduction of its trademark within the disputed domain name necessarily results in the misleading of Internet users seeking information or wishing to enter into a relationship with the Complainant (see, for example Puravankara Projects Limited v. Saurabh Singh,WIPO Case No. D2014-2054). Moreover, the Panel finds that the disputed domain name has been set up with MX records, which suggests that it may be actively used for email purposes, and recalls that bad faith use may result from the threat of an abusive use of the disputed domain name by the Respondent. Finally, the Panel finds that the disputed domain name is not currently used, given that it points to an index page, but wishes to remind that such “passive holding” does not prevent a finding of bad faith, since according to prior UDRP panel decisions the panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith (See section 3.3 of the WIPO Overview 3.0 and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). Indeed, the Panel considers that the passive holding of the disputed domain name proves that the Respondent acts in bad faith. The particular circumstances of this case, which lead to this conclusion are: - the fact that there is no evidence of any intent of the Respondent to use the disputed domain name, nor of any beginning of such use in good faith; 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
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- 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.
- the lack of rights or legitimate interests of the Respondent in respect of the disputed domain name;
- the fact that the Respondent has not provided any answer to the Complainant’s contentions;
- taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name by the Respondent that would not be illegitimate.
Sole Panelist
Date: July 9, 2021
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