The Complainant is Woodbrass.com, France, represented by Inlex IP Expertise, France.
The Respondent is Domain Administrator, See PrivacyGuardian.org, United States of America / Bernard Chaussee, France.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 4, 2021. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. Also 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 October 5, 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 October 7, 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 October 11, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 31, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 1, 2021.
The Center appointed Alexandre Nappey as the sole panelist in this matter on November 4, 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.
The Complainant is a French company registered since 1999 and specialized in retail of musical equipment and apparatus.
The Complainant owns numerous trademark containing the term WOODBRASS, among which:
- French trademark WOODBRASS No. 3324386 filed in classes 9, 11 and 15 on November 10, 2004.
- French trademark WOODBRASS No. 3926016 filed in classes 16, 20, 35, 37, 39 and 41 on June 11, 2012.
- International trademark WOODBRASS No. 1292631 registered in classes 9, 15, 16, 35 and 41 on November 17, 2015, under priority of the French trademark No. 4226357 and claiming protection in the following jurisdictions: China, the European Union and the United States of America.
The disputed domain name
According to the Complaint, the disputed domain name used to resolve an index page with folders and subfolders.
At the time of the drafting of the decision it resolves a page indicating “This account has been suspended”.
5. Parties’ Contentions A. ComplainantThe Complainant first alleges that the disputed domain name is confusingly similar to its trademark WOODBRASS.
Indeed, the trademark WOODBRASS is included in its entirety in the disputed domain name, in association with the term “partenaire” placed in leading position.
According to the Complainant, the sign WOODBRASS has no meaning and is highly distinctive, and the term “partenaire” is descriptive; consequently, this term will not catch the public’s attention and this addition before the term WOODBRASS has no other purpose than misleading the consumer and make them believe that the disputed domain name is affiliated with the Complainant or at least, that it is a partner.
Secondly, the Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant also contends that the Respondent has no rights, including trademark rights in respect of the name WOODBRASS, in any country whatsoever. Moreover, he registered the disputed domain name after the Complainant has registered its trademark and domain name
The Complainant asserts that it has never authorized nor licensed the Respondent to use its trademarks in any way.
According to the Complainant, a search on the Google engine does not feature any link between the Respondent and the term “woodbrass”.
Finally, the Complainant claims that the disputed domain name was registered and is being used in bad faith.
- Registered in bad faith:
The Complainant claims that the trademark WOODBRASS is well-known.
When registering the disputed domain name, the Respondent employed a privacy service in order to hide its identity and to avoid being notified of a UDRP proceeding and provided false contact information.
According to the Complainant, these elements are an obvious evidence of bad faith registration.
- Use in bad faith:
Before the filing of the Complaint, the disputed domain name resolved to a webpage displaying an Index with folders and subfolders, with the appearance of internal documents with sensible information for the Complainant.
The Complainant also claims that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding.
According to the Complainant, as WOODBRASS trademarks are highly distinctive and well-known in the field of musical equipment and apparatus’ retailing and as the Complainant has never granted any rights to the Respondent to use the WOODBRASS mark, it is implausible that the disputed domain name could be used in good faith.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsNotwithstanding the default of the Respondent, it remains up to the Complainant to make out its case in accordance with paragraph 4(a) of the Policy, and to demonstrate that:
(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 names has been registered and is being used in bad faith.
However, under paragraph 14(b) of the Rules, where a Party does not comply with any provision of the Rules, the Panel “shall draw such inferences therefrom as it considers appropriate”.
Having considered the Parties’ contentions, the Policy, the Rules, the Supplemental Rules and applicable law, the Panel’s findings on each of the above-mentioned elements are the following.
A. Identical or Confusingly SimilarThe Panel is satisfied that the Complainant owns exclusive trademark rights in WOODBRASS, which predate the registration of the disputed domain name.
The Panel finds that the disputed domain name is confusingly similar to the registered WOODBRASS trademark owned by the Complainant.
Indeed, the disputed domain name incorporates the entirety of the Complainant’s WOODBRASS trademark with the mere addition of a hyphen, and the dictionary term “partenaire” (French word for “partner”), which does not avoid a finding of confusing similarity with the Complainant’s trademark.
See in similar circumstances: Lufin Partners AG & Co. KG v. Techman Resources,
WIPO Case No. D2020-2155: “This trademark is entirely reproduced in the disputed domain name, which causes the disputed domain name to be identical to the trademark at least in that respect. The fact that there is a hyphen between “lufin” and “partners” is of minor relevance and does not change the conclusion by this Panel that the disputed domain name is identical to the trademark of the Complainant.”
Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s marks under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsThe second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(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 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.
Considering the difficulty to demonstrate a negative, UDRP panels generally find that if the complainant raises a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the policy, then the burden of production shifts to the respondent to demonstrate its rights or legitimate interests. See De Beers Intangibles Limited v. Domain Admin, Whois Privacy Corp.,
WIPO Case No. D2016-1465.
Here, the Complainant has stated that it has not authorized, licensed or consented to the Respondent any use of its WOODBRASS trademark.
It results from the circumstances of this case that the Respondent does not own any right in the trademark WOODBRASS and is not commonly known by the disputed domain name.
In light of the above, the Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
As the Respondent has not provided otherwise, the Panel finds from the available record that the second element of paragraph 4(a) of the Policy is fulfilled.
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy sets out examples of circumstances that will be considered by a panel to be evidence of bad faith registration and use of a domain name.
It provides that:
“For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.”
Since there is no evidenced relationship between the Parties, and since the disputed domain name is a combination of the trademark WOODBRASS, a hyphen, and the word “partenaire” which directly refers to a partnership, it may be assumed that the Respondent was aware of the Complainant’s trademark at the time it registered the disputed domain name.
At the present time, the disputed domain name resolves to a suspended webpage, but the Panel cannot conceive any use that the Respondent could make of the disputed domain name that would not interfere with the Complainant’s trademark rights.
It appears therefore that the Respondent, by making reference to the WOODBRASS trademark, has been trying to create a likelihood of confusion in order to attract, for commercial gain, Internet users to its website and collect sensitive personal data from unsuspecting Internet users searching for the Complainant. The Panel finds that the Respondent’s use of the disputed domain name cannot therefore confer rights or legitimate interests on the Respondent and constitutes evidence of bad faith. See sections 3.1.4 and 3.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Panel finds that the Respondent registered the disputed domain name with the Complainant in mind and with the intention of capitalizing on the reputation of the Complainant within the meaning of paragraph 4(b)(iv) of the Policy.
The Panel finds that the above constitutes registration and use in bad faith pursuant to the third requirement of 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 name
Alexandre Nappey
Sole Panelist
Date: November 23, 2021