The Complainants are EDF Energy Limited, United Kingdom (“the First Complainant”) and Électricité de France S.A., France (“the Second Complainant”), represented by Demys Limited, United Kingdom.
The Respondent is Withheld for Privacy Purposes, Privacy Service Provided by Withheld for Privacy ehf, Iceland / Rick Snow, United Kingdom. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 7, 2021. On July 7, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 7, 2021, the Registrar transmitted by email to the Center its verification response 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 Complainants on July 12, 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 July 12, 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 July 19, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 8, 2021. The Respondent did not submit any formal response. Accordingly, the Center notified the Respondent’s default on August 13, 2021. On August 24, 2021 and August 27, 2021, the Respondent sent informal emails. The Center appointed Antony Gold as the sole panelist in this matter on August 24, 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 First and Second Complainants (collectively “the Complainant”) are each corporate entities within the EDF (Électricité de France) group of companies. The First Complainant is the group’s operating company in the United Kingdom and provides electrical power to over 3.5 million British homes and businesses. Its sales for the year 2020 amounted to GBP 8.074 million. The First Complainant operates a website from “www.edfenergy.com”, which provides information about its services in addition to enabling Internet users to sign up to them and thereafter to manage their accounts. The Second Complainant acts as the group’s parent company. It operates 56 nuclear power reactors in France and also holds its intellectual property. It operates a website at “www.edf.fr” which has similar functionality to the website of the First Complainant, as outlined above. The Complainant uses “EDF” as its principal trading style and the Second Complainant owns a large international portfolio of registered trade marks for this brand. These include, by way of example only, European Trade Mark for EDF, registration number 002467652, registered on June 27, 2005 in multiple classes. The first and second disputed domain names were registered on May 6, 2021 and the third disputed domain name was registered on May 8, 2021. On May 8 2021, the First Complainant was alerted via a post on Twitter that the first and third disputed domain names were being used in connection with phishing activities. Phishing emails were sent from the email address associated with the third disputed domain name purporting to advertise investment opportunities connected with the Complainant and inviting recipients to visit the website to which the first disputed domain name resolved, which at that time, comprised a phishing website. The websites to which each of the disputed domain names resolved have now been suspended. However the disputed domain names remain configured with Mail eXchanger (“MX”) records, which means that they can be used in order to receive emails. 5. Parties’ Contentions A. Complainant The Complainant says that the disputed domain names are confusingly similar to trade marks or service marks in which it has rights. The Complainant refers to its trade mark registrations for EDF, full details of one of these registrations being set out above, and says that the disputed domain names are confusingly similar to its mark in that each of them differs from that mark only by the addition of the dictionary words “bond”, “bond offer” and “savings” respectively. These words are associated with the Complainant’s activities and increase the potential for confusion to Internet users. Moreover, viewed as a whole, the Complainant’s mark is the most prominent, dominant and distinctive element of each of the disputed domain names and they are accordingly confusingly similar to its EDF mark. The Complainant says also that the Respondent has no rights or legitimate interests in respect of the disputed domain names. There is no evidence that the Respondent has been commonly known by any of the disputed domain names, nor by any combination of their component parts. The Respondent is not a licensee of the Complainant and has not received any permission, consent or acquiescence from it to use its mark or name in association with the registration of the disputed domain names. The Complainant has found no evidence that the Respondent owns any trade marks that incorporate, or are similar or identical to, the words which comprise the disputed domain names, nor that the Respondent has ever traded or operated as “EDF”, or as any combination of the words which comprise the disputed domain names. The Complainant has established that two of the disputed domain names have used for phishing and fraud, an independent third party having drawn attention to them in a Twitter post. The use of the disputed domain names for criminal activity could never give the Respondent a legitimate interest in them; see TELUS Corporation v. Domain Admin, Privacy Protect, LLC / Mayur Mangesh Rege, Mayur Consultants,WIPO Case No. D2018-0388 Furthermore, it is highly unlikely that the Respondent intended to use the disputed domain names for any legitimate or fair use, nor can the Complainant conceive of any use to which the disputed domain names could be put that would not infringe its rights. Lastly, the Complainant says that the disputed domain names were registered and are being used in bad faith. The fraudulent purposes to which the disputed domain names have been put cannot be considered a bona fide use of them. Moreover, having regard to the fact that the disputed domain names are still configured with both MX and also Sender Policy Framework records, any use of them for sending further phishing emails would be inherently confusing, given the incorporation of the Complainant’s mark as the most dominant element in them. Notwithstanding that none of the websites previously associated with the disputed domain names are active, the Respondent’s passive holding of them constitutes bad faith; see the factors set out at section 3.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). In particular, the Complainant’s EDF mark is distinctive and widely known, the disputed domain names have been used for criminal purposes, the Respondent’s details have been redacted from the public WhoIs record and it is inconceivable that the Respondent could have registered the disputed domain names without the Complainants’ EDF mark in mind and with good faith intentions. B. Respondent The Respondent did not reply to the Complainant’s contentions, albeit, it sent two short emails to the Center on August 24, 2021 and August 27, 2021, neither of which had any bearing on, or relevance to, the Complaint. 6. Discussion and Findings Dealing, first, with the Respondent’s failure to file a response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission, as it considers appropriate. Paragraph 4(a) of the Policy provides that the Complainant proves each of the following three elements in order to succeed in its Complaint: (i) the disputed domain names are identical or confusingly similar to a trade mark 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. A. Preliminary issue: Joint complaints The First and Second Complainants have asserted that it is appropriate for their respective complaints to be dealt with within a single Complaint. In support of this contention, they have referred to section 4.11.1 of the WIPO Overview 3.0, which considers the position of multiple complainants filing against a single respondent and explains that; “In assessing whether a complaint filed by multiple complainants may be brought against a single respondent, panels look at whether (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation”. In circumstances where both Complainants are members of the same group of companies and have advanced essentially the same complaint against the Respondent arising from the same conduct, it is appropriate for their assertions to be dealt with within the same proceedings under the Policy and the Panel therefore accepts that the Complaint is properly brought in its current form. B. Identical or Confusingly Similar The information provided by the Complainant in relation to its trade mark registrations for EDF, including the mark in respect of which full details are provided above, establish its rights in this mark. For the purpose of determining whether the disputed domain names are identical or confusingly similar to this mark, the generic Top-Level Domain (“gTLD”), that is “.com”, is disregarded as this is a technical requirement of registration. The first, second and third disputed domain names comprise the Complainant’s EDF service mark in full, followed by the words “bond”, “bond offer” and “savings” respectively. None of the additional words precludes the disputed domain names from being considered confusingly similar to the Complainant’s trade mark. As explained at section 1.8 of the WIPO Overview 3.0: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.” The Complainant’s EDF mark is clearly recognizable within, each of the disputed domain names and the Panel accordingly finds that they are confusingly similar to a trade mark in which the Complainant has rights. C. Rights or Legitimate Interests Paragraph 4(c) of the Policy sets out circumstances, without limitation, by which a respondent might demonstrate that it has rights or legitimate interests in a domain name. These are, summarized briefly: (i) if the respondent has been using the domain name in connection with a bona fide offering of goods and services; (ii) if the respondent has been commonly known by the domain name; or (iii) if the respondent has been making a legitimate noncommercial or fair use of the domain name. Having regard to the fact that all the disputed domain names are presently inactive, the Panel considers the second and third elements of the Policy primarily by reference to their current status. However, as it is possible that any of the disputed domain names might in future resolve to an active website, or the email addresses associated with them be used for fraudulent purposes, the Panel additionally considers the position by reference to the previous uses of them. The inactive status of the disputed domain names self-evidently does not comprise use in connection with a bona fide offering of goods and services. Moreover there is no evidence that the Respondent has been commonly known by any of the disputed domain names. Nor is the Respondent making a legitimate noncommercial or fair use of them, not least when their composition is such that Internet users will be apt to assume that they are connected with the Complainant and its activities. Where a domain name consists of a trade mark used in combination with an additional term, this would not generally be considered capable of amounting to fair use if the combination (as here) effectively impersonates or suggests sponsorship or endorsement by the trade mark owner. The evidence submitted by the Complainant that that the disputed domain names have been used for fraudulent purposes is clearest in respect of the first disputed domain name. However, all of the disputed domain names were registered within a two day period by the same Respondent, each of them incorporates the Complainants’ EDF mark in conjunction with words associated with opportunities for investing in the Complainants’ group of companies and the Respondent has plainly intended that each disputed domain name be used for similar fraudulent purposes. Such uses are not capable of comprising a bona fide offering of goods and services; see TELUS Corporation v. Domain Admin, Privacy Protect, LLC / Mayur Mangesh Rege, Mayur Consultants (supra). There is nothing in the evidence available to the Panel to suggest that the Respondent might be able to establish rights or legitimate interests in the disputed domain names on any other basis and, indeed, it has not attempted to do so. The Panel accordingly finds that the Respondent has no rights or legitimate interests with respect to the disputed domain names. D. Registered and Used in Bad Faith The disputed domain names contain the Complainant’s EDF trade mark in full together with a word or words which is apt to be associated with the Complainant. Moreover, at least one of the three disputed domain names has been used for the purpose of impersonating the Complainant very shortly after registration. This points both to an awareness by the Respondent of the Complainant and its EDF mark as at the date of registration of the disputed domain names and an intention on its part to profit unfairly in some manner from those registrations. As the panel found in Herbalife International, Inc. v. Surinder S. Farmaha, WIPO Case No. D2005-0765, “the registration of a domain name with the knowledge of the Complainant’s trademark registration amounts to bad faith”. The fact that each of the disputed domain names is presently inactive does not preclude a finding of bad faith use under the doctrine of passive holding. As first considered in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, 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 and (iv) the implausibility of any good faith use to which the domain name may be put. All of these factors are applicable to the current circumstances. First, the Complainant’s mark is distinctive and very widely known. Second, the Respondent has not submitted a response nor provided any evidence of good faith use. Third, the Respondent has sought to conceal its identity through use of a privacy service. Fourth, having regard to the characteristics of each of the disputed domain names, as outlined earlier, it is impossible to conceive of any good faith use to which they could be put by the Respondent. The passive holding by the Respondent therefore comprises bad faith use of each of the disputed domain names. Finally, the Panel considers the position in the event that the Respondent’s phishing website was to be reactivated or the disputed domain names used for the purpose of sending further phishing emails. Paragraph 4(b) of the Policy sets out, without limitation, circumstances which, if found by a panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The circumstance at paragraph 4(b)(iv), in summary, is that, by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website. Using domain name for purposes other than to host a website, such as to send emails or phishing, may also constitute bad faith; see section 3.4 of the WIPO Overview 3.0. The composition of each of the disputed domain names will suggest to Internet users that any website to which it resolves or any emails which are sent using the corresponding email address are likely to be associated with the Complainant. The Respondent has impersonated the Complainant for fraudulent purposes and this necessarily means that its previous use of the disputed domain names has been in bad faith; see, by way of example, Hanai Capital, LLC v. Domain Administrator, See PrivacyGuardian.org / Nike Nolan,WIPO Case No. D2020-0846. The Panel therefore finds that the disputed domain names were both registered and are being used in bad faith. 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, Antony Gold
Sole Panelist
Date: September 7, 2021
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