The Complainant is Hager Electro SAS, France, represented by Fieldfisher France LLP, France.
The Respondent is Withheld for Privacy Purposes, Privacy Service Provided by Withheld for Privacy ehf, Iceland / Weber Daniel, Hager, France.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 13, 2021. On August 13, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 September 7, 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 September 9, 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 September 10, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 30, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 1, 2021.
The Center appointed Christiane Féral-Schuhl as the sole panelist in this matter on October 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 BackgroundThe Complainant is one of the leading providers of solutions and services for electrical installation.
For the purpose of its activities, the Complainant holds several trademarks, including the international trademark HAGER, registration No. 309129B, registered on August 13, 1964.
The Complainant also owns several domain names, amongst which the
The disputed domain name
At the time the Complaint was filed, the disputed domain name was used to send fraudulent emails. At the time of the decision, the disputed domain name directs to an error page.
The Complainant is requesting the transfer the disputed domain name to the Complainant.
5. Parties’ Contentions A. ComplainantIn 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 stands that the disputed domain name is identical or confusingly similar to its registered HAGER trademark, since it reproduces it with the addition of “electro” which is a reference to the Complainant’s corporate name.
The Complainant considers that the risk of confusion thus found between its HAGER trademark and the disputed domain name is highly detrimental to the Complainant and its consumer’s safety, since they will falsely believe the disputed domain name is linked to the Complainant’s activities.
Furthermore, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name, given that the Complainant did not authorize its registration and has no connection with the Respondent whatsoever.
The Complainant insists on the fact that, while the disputed domain name was registered in the name of “Hager” along with the registered address of the Complainant, no legal representative nor any employee of the Complainant did register the disputed domain name, and the disclosed name of the Respondent has no relation with the Complainant.
The Complainant underlines that there is no evidence of the Respondent’s use of, or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, or that the Respondent has been commonly known by the disputed domain name, or that the Respondent is making a legitimate noncommercial or faire use of the disputed domain name, without intent for commercial gain.
The Complainant also highlights that the Respondent’s only use of the disputed domain name is its associated email address <[...]@hagerelectro.com>, which the Respondent operates for the sole purpose of identity theft in order to gain an unlawful financial advantage.
At last, the Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith, since it is stealing the identity of the Complainant in order to trade with third-party companies, and in particular to place orders for the delivery of products, via emails sent on July 19, 20, and 21, 2021, in the name of the commercial manager of the Complainant, targeting several providers of the Complainant and requesting deferred payment methods and the opening of a credit line in the name of the Complainant for the purchase of various goods.
The Complainant adds that the Respondent also used the registered office details of the Complainant when registering the disputed domain name, filed online forms on third-party companies’ websites, and even provided a fake first demand guarantee to secure payment of a sum of EUR 61,000 relating to the purchase of thousands of nitrile rubber gloves, as well as a fake order with a forged stamp and signature in relation with the purchase of at least 4,000 USB keys for a total sum of EUR 10,080.
The Complainant finally indicates that the Respondent attempted to place purchase orders with at least eight companies, and that the Complainant’s commercial manager, testified to French Police that he had been contacted by several companies asking whether the email address <[...]@hagerelectro.com> was legitimate, to which he answered that it was not.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsParagraph 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 SimilarAccording 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 of all, the Panel finds that the Complainant has provided evidence that it has rights in the HAGER trademark.
Then, the Panel notices that the disputed domain name
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”)).
Regarding the disputed domain name, the Panel finds that it incorporates the entirety of the HAGER trademark, to which has only been added the term “electro”. See section 1.8 of the WIPO Overview 3.0.
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 confusingly similar to the Complainant’s trademarks.
B. Rights or Legitimate InterestsAccording 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
- 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.
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, UDRP 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 Complainant did not authorize its registration and has no connection with the Respondent whatsoever.
Moreover, the Panel finds that there is no evidence of the Respondent’s use of, or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, or that the Respondent has been commonly known by the disputed domain name, or that the Respondent is making a legitimate noncommercial or faire use of the disputed domain name, without intent for commercial gain.
On the contrary, the Panel notes that the Respondent’s only use of the disputed domain name is associated with the use of an email address that is operated for the sole purpose of identity theft in order to gain unlawful financial advantages.
In any case, the Respondent did not reply to the Complainant’s contentions.
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 online 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.
First, the Panel finds that it is established that the Complainant’s HAGER trademark was registered before the registration of the disputed domain name, and that the Respondent could not be unaware of the Complainant’s prior trademarks at the time of the registration of the disputed domain name, given the fact that the Respondent used it through an email address operated for the purpose of impersonating one of the Complainant’s employees, referring to the registered office details of the Complainant, in order to place orders related to the Complainant’s activities.
Then, the Panel considers that the Complainant demonstrated that the Respondent used the disputed domain name in order to place orders with companies related to the Complainant’s activities by means of identity theft, allowing the Respondent to impersonate one of the Complainant’s employees, and thus the Complainant itself, consequently with the purpose of benefitting from unlawful financial advantages, which is evidence of bad faith use.
Consequently, the Panel holds that the Respondent has registered and used the disputed domain name in bad faith according to the Policy, paragraph 4(a)(iii) and 4(b)(iv).
7. DecisionFor 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
Sole Panelist
Date: November 2, 2021