The Complainant is World Trade Centers Association, Inc., United States of America (“United States”), represented by Dorsey & Whitney, LLP, United States.
The Respondent is Ralph Ouensanga, France.
2. The Domain Names and RegistrarThe disputed domain names
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on September 29, 2021. On the following day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 1, 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 October 6, 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 in English on October 8, 2021.
The Center also sent an email communication to the Parties in French and English on October 6, 2021 regarding the language of proceeding. The Complainant requested that English be the language of proceedings on October 8, 2021. The Respondent did not submit any comments on the language of the proceeding.
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 October 14, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 3, 2021. The Respondent sent an email communication to the Center in English on October 14, 2021 in which he asked what he had to do and whether the problem could be the subject of a “handy resolution”. The Complainant sent an email communication to the Center on October 19, 2021 requesting the suspension of the administrative proceeding. On the same day, the administrative proceeding was suspended until November 10, 2021 in order to enable the Parties to explore a possible settlement. The Complainant requested an extension of the suspension period on November 18, 2021 in order to enable the Parties to pursue further a settlement. The Respondent sent another email communication to the Center in English on November 19, 2021 in which he stated that he did not understand why he should give up his work for free due to an issue that had nothing to do with “itching”. The Complainant sent an email communication on December 8, 2021 confirming that the Parties had not reached a settlement and requesting reinstatement of the administrative proceeding. On the same day, the administrative proceeding was reinstated and the new date for Response was December 23, 2021. The Respondent did not submit any formal response. The Center notified the commencement of the Panel appointment process on December 30, 2021.
The Center appointed Matthew Kennedy as the sole panelist in this matter on January 11, 2022. 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 a non-profit trade association formed in 1969 to promote international business relationships and encourage participation in world trade. The Complainant was formerly headquartered in the New York World Trade Center. The Complainant holds multiple trademark registrations in multiple jurisdictions, including United States trademark registration number 1469489 for WORLD TRADE CENTER, registered on December 15, 1987, with a claim of first use in commerce in March 1961, specifying services in class 42. That trademark registration remains current. The Complainant and its licensees use the trademark WORLD TRADE CENTER with association services, providing business information via a website and education services in the area of business and international trade. The Complainant has more than 300 members worldwide that it licenses to operate WORLD TRADE CENTER-branded facilities or WTC-branded facilities, or both. The Complainant has also registered the domain name
The Respondent is an individual described on his websites in many laudatory terms. His address in the Registrar’s WhoIs database refers to a software company named “Atef Technology”. His business addresses shown on his websites and in the Registrar’s WhoIs database are in the city and region of Paris, France. His contact email address, as shown on his websites, is in the domain name
The disputed domain names were all registered on October 10, 2020. The disputed domain names
The Complainant’s letters of demand to the Respondent are not on the record but the Respondent sent a reply to the Complainant in English on May 29, 2021, which is reproduced in Section 5.B below.
“One World Trade Center” is the name of the main building in the rebuilt New York World Trade Center complex.
5. Parties’ Contentions A. ComplainantThe disputed domain names are confusingly similar to the Complainant’s WORLD TRADE CENTER mark.
The Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent is not a licensee of the Complainant, nor has the Complainant otherwise authorized the Respondent to register the disputed domain names or otherwise use the Complainant’s WORLD TRADE CENTER mark. The Respondent has not been commonly known as “World Trade Center”.
The disputed domain names were registered and are being used in bad faith. It is inconceivable that the Respondent registered one, let alone five, disputed domain names containing the Complainant’s well-known and distinctive WORLD TRADE CENTER mark without the intent of capitalizing on the goodwill that the Complainant owns in that mark. The Respondent registered the disputed domain names with the specific intent to cause consumer confusion and to free ride on the goodwill associated with the Complainant’s WORLD TRADE CENTER mark and/or for the purpose of creating the false impression that the Respondent is a member, licensee, or representative of the Complainant.
B. RespondentIn pre-Complaint correspondence with the Complainant, the Respondent stated as follows: “In response to your many messages and so that it does not become harassment, I want to reassure you, your company does not have to worry. Everything is in order. We respect each other and strive to keep the best possible relationships between professionals in the world. We know your wonderful company. Our affairs have nothing in common with yours. We assure you that we will take care to protect these domain names in your favor. You can be at ease.” He then listed the disputed domain names and repeated that the Complainant could be reassured.
In an informal email communication to the Center during this proceeding, the Respondent submitted that he did not understand why he should give up his work for free due to an issue that had nothing to do with “itching”.
6. Discussion and Findings 6.1 Language of the ProceedingParagraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The Registrar confirmed that the Registration Agreements for the disputed domain names are in French.
The Complainant requests that the language of the proceeding be English. Its main arguments are that the Respondent has demonstrated a clear grasp of the English language, as is evident from the fact that the active websites associated with the disputed domain names are in English and correspondence received by the Complainant from the Respondent was also in English, while the Complainant would incur substantial expense if it had to translate the Complaint into French.
Paragraphs 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd.,WIPO Case No. D2008-0293.
The Panel observes that the Complaint and amended Complaint were filed in English. The Respondent’s informal communications to the Center and his pre-Complaint correspondence with the Complainant were also in English, as are his four websites associated with disputed domain names, all of which indicates that the Respondent is able to communicate in that language. Despite the fact that the Center sent an email to the Parties in English and French regarding the language of the proceeding, the Respondent did not comment on the issue of language. Therefore, the Panel considers that requiring either Party to translate its submissions into French would create an undue burden and delay, whereas accepting all communications in their original English versions will not cause unfairness to either Party.
Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English. The Panel would have accepted a formal Response in French, but none was filed.
6.2 Substantive IssuesParagraph 4(a) of the Policy provides that the Complainant must prove each of the following elements with respect to each disputed domain name:
(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 SimilarBased on the evidence submitted, the Panel finds that the Complainant has rights in the WORLD TRADE CENTER mark.
All the disputed domain names incorporate the WORLD TRADE CENTER mark, omitting only the spaces between the words for technical reasons. All the disputed domain names also incorporate the words “the” and “one” before the mark. However, the mark remains clearly recognizable within each disputed domain name.
The only other additional element in the disputed domain names is a generic Top-Level Domain (“gTLD”) suffix (variously “.com”, “.consulting”, “.exchange”, “.market” or “.trade”). As a mere technical requirement of domain name registration, this element may be disregarded in the comparison between the disputed domain names and the Complainant’s mark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.
Therefore, the Panel finds that the disputed domain names are confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to [the respondent] 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, even if [the respondent has] acquired no 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.
As regards the first and third circumstances set out above, the disputed domain names
As regards the second circumstance set out above, the Respondent’s name is set out on his websites and in the Registrar’s WhoIs database as “Ralph Ouensanga”, not the disputed domain names. His contact details in the Registrar’s WhoIs database refer to a company named “Atef Technology”, not the disputed domain names. Neither that contact address, nor the one shown on his websites, is in “One World Trade Center” in New York. There is no evidence that the Respondent has been commonly known by any of the disputed domain names.
In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain names.
Turning to the Respondent’s arguments, he argued in pre-Complaint correspondence that the Parties’ respective affairs had nothing in common. However, that submission is contradicted by the claims on his websites regarding his consulting activities. In any case, it is not an allegation that would create rights or legitimate interests for the purposes of the second element of paragraph 4(a) of the Policy. Accordingly, the Respondent has failed to rebut the Complainant’s prima facie case.
Therefore, based on the record of this proceeding, the Panel finds that the Complainant has satisfied the second element in paragraph 4(a) of the Policy.
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. These circumstances are not exhaustive. The fourth circumstance is as follows:
(iv) by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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.
As regards registration, the disputed domain names were registered in 2020, many years after the registration of the Complainant’s WORLD TRADE CENTER mark. The disputed domain names incorporate that mark, adding only the words “the” and “one” before the mark. Even though the mark is composed of dictionary words, it is not a dictionary phrase and the Respondent has reproduced the words in the same order as in the mark. The Respondent claims to be operating a business network or consulting firm, from which it may be inferred that he knew or should have known of the Complainant’s mark in the same or a related sector. The Respondent actually admitted in pre-Complaint correspondence that he knew the Complainant’s company. In these circumstances, the Panel finds that the Respondent had the Complainant’s mark in mind when he registered the disputed domain names.
As regards use, the disputed domain names
The disputed domain name
The Respondent argued in an informal communication to the Center that he had no reason to give up the disputed domain names. However, the Panel disagrees for the reasons set out above.
Therefore, the Panel finds that the disputed domain names have been registered and are being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the Policy.
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 names
Matthew Kennedy
Sole Panelist
Date: January 17, 2022