The Complainant is NRJ Group, France, represented by IPSILON, France.
The Respondent is Qin Xian Sheng, Singapore.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 6, 2021. On October 6, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 7, 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 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 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 2, 2021.
The Center appointed Lynda M. Braun as the sole panelist in this matter on November 9, 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 a French multimedia group of companies founded in 1981 with the creation of the NRJ radio station. Since then, the Complainant has grown to 33 radio stations, broadcasting mostly across Europe, particularly in France, with more than 10 million listeners daily. The Complainant also operates the NRJ12 television channel in France as well as television channels broadcasting in Lebanon, Switzerland, and Belgium.
The Complainant owns several registered trademarks, including: NRJ, European Union Reg. No. 000136150, registered on March 9, 1999 in international classes 35, 38, and 41; and NRJ 12, European Union Reg. No. 004445573, registered on June 1, 2006 in international classes 9, 16, 25, 35, 38 and 41. Hereinafter, the NRJ mark is referred to as the “NRJ Mark” and the NRJ and NRJ 12 marks are collectively referred to as the “NRJ Marks”.
The Complainant also owns several domain names -
The Disputed Domain Name was registered on June 9, 2021, and resolves to a website in Chinese that contains online advertisements and pornography.
5. Parties’ Contentions A. ComplainantThe following are the Complainant’s contentions:
- the Disputed Domain Name is confusingly similar to the Complainant’s NRJ Marks.
- the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
- the Disputed Domain Name was registered and is being used in bad faith as it resolves to a website with advertisements and pornography.
- the Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings A. Identical or Confusingly SimilarThis element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark. The Panel concludes that the Disputed Domain Name is confusingly similar to the NRJ Mark.
It is uncontroverted that the Complainant has established rights in the NRJ Marks based on its years of use as well as its registered trademarks for the NRJ Marks in the European Union. The general rule is that “registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive”. See CWI, Inc. v. Domain Administrator c/o Dynadot,WIPO Case No. D2015-1734. The Respondent has not rebutted this presumption, and therefore the Panel finds that the Complainant has rights in the NRJ Marks.
The Disputed Domain Name consists of the NRJ Mark in its entirety along with the number “8”, followed by the generic Top-Level Domain (“gTLD”) “.com”. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy despite the addition of other terms. As stated in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“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”.
Finally, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva,WIPO Case No. D2012-0182 and WIPO Overview 3.0, section 1.11. Thus, the Disputed Domain Name is confusingly similar to the Complainant’s NRJ Mark.
Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant.
B. Rights or Legitimate InterestsUnder the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of production of evidence that demonstrates rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1.
In this case, the Panel finds that the Complainant has made out a prima facie case. The Respondent has not submitted any arguments or evidence to rebut the Complainant’s prima facie case. Furthermore, the Complainant has not authorized, licensed or otherwise permitted the Respondent to use its NRJ Marks. There is also no evidence that the Respondent is commonly known by the Disputed Domain Name or by any name similar to it, nor any evidence that the Respondent was making demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services. See Policy, paragraph 4(c). Moreover, the Panel finds that the Disputed Domain Name carries a risk of implied affiliation. See WIPO Overview 3.0, section 2.5.1.
Moreover, the Complainant does not have any type of business relationship with the Respondent. Based on the use made of the Disputed Domain Name to resolve to a website with advertisements and pornography, the Panel finds that the Respondent is not making a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Disputed Domain Name. On the contrary, the Respondent has used the NRJ Mark in the Disputed Domain Name to promote its website for illegitimate commercial gain. Specifically, the Respondent intentionally attempted to create a likelihood of confusion by using the Disputed Domain Name containing the NRJ Mark to increase Internet user traffic to its pornographic and advertising website.
Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant.
C. Registered and Used in Bad FaithThe Panel finds that based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith pursuant to paragraph 4(b) of the Policy.
First, the Respondent’s use of the Disputed Domain Name to offer pornographic content is a significant indicator of bad faith. See VIVENDI v. Guseva Svetlana,WIPO Case No. D2018-2631; CHRISTIAN DIOR COUTURE v. Paul Farley,WIPO Case No. D2008-0008. Such conduct is known as “pornosquatting”, the practice whereby a well-known trademark is used to divert customers to a pornographic website for commercial gain. See Prada S.A. v. Roberto Baggio,WIPO Case No. D2009-1187. Here the Respondent created a Disputed Domain Name that incorporated the well-known NRJ Mark to capitalize on its fame and had the Disputed Domain Name resolve to a pornographic website to realize financial gain. Specifically, the Respondent intentionally attempted to attract, for commercial gain, Internet users to its pornographic website by creating a likelihood of confusion with the Complainant’s NRJ Marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and thus generate revenue through the unauthorized use of the NRJ Mark. See WIPO Overview 3.0, section 3.1 and paragraph 4(b)(iv) of the Policy.
Second, based on the circumstances here, the Panel concludes that the Respondent registered and is using the Disputed Domain Name in bad faith in an attempt to attract Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s NRJ Marks as to the source, sponsorship, affiliation or endorsement of the Disputed Domain Name’s resolving webpage. The Respondent’s registration and use of the Disputed Domain Name indicate that such registration and use has been done for the specific purpose of trading on the name and reputation of the Complainant and its NRJ Marks. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”,WIPO Case No. D2000-0847 (“[t]he only plausible explanation for Respondent’s actions appears to be an intentional effort to trade upon the fame of Complainant’s name and trademark”).
Finally, in certain circumstances the registration of a domain name that is confusingly similar to a trademark by an entity that has no relationship to that mark may be sufficient evidence of opportunistic bad faith. See Ebay Inc. v. Wangming,WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163. Based on the available record, the Panel finds that the Respondent registered and is using the Disputed Domain Name in bad faith to target the Complainant’s NRJ Marks for commercial gain.
Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant.
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
Lynda M. Braun
Sole Panelist
Date: November 23, 2021