The Complainant is Hager Electro SAS, France, represented by Fieldfisher France LLP, France.
The Respondent is weber daniel, HAGER ELECTRO SAS, 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 7, 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. On October 8, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 12, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 1, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 1, 2021.
The Center appointed Isabelle Leroux as the sole panelist in this matter on November 15, 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 subsidiary of Hager Group, one of the leading providers of solutions and services for electrical installation.
The Complainant is the owner of several trademarks in particular the international trademark HAGER No. 309129B registered on August 13, 1964 and duly renewed, designating Germany and France.
The Complainant’s corporate name is “Hager Electro SAS” as registered with the French Company Registry since its incorporation on April 25, 1959 and uses the domain name
The Disputed Domain Name was registered on August 23, 2021 by “REDACTED FOR PRIVACY” and HAGER ELECTRO SAS was registered as the registrant organization. According to the registrant and contact information disclosed by the Registrar, the Respondent is an individual in France whose address is the same as that of the Complainant and whose company name is the same as that of the Complainant, i.e. “HAGER ELECTRO SAS”.
The Disputed Domain Name is active and resolves to a nameserver parking page of the Registrar.
In this regard, the Complainant produced evidence that an email address is configured with the Disputed Domain Name, by which several emails have been sent to different suppliers of a special category of goods by an individual whose name corresponds to that of a commercial manager of the Complainant, in order to place orders for the purchase and the delivery of various goods in the name of the Complainant (Annex 8).
According to these emails, the Respondent used a delivery address in Bagnolet, France, associated with a company called “HAGER EMBALLAGE” that is not an entity known to or associated with the Complainant and to the destination of an individual whose name is also unknown to the Complainant, being specified that the Complainant affirms not to have any warehouse or storage units at the said address.
The Complainant further provided evidence that the employee whose name has been used by the Respondent in its emails has filed a criminal complaint with the French police for being the victim of an identity theft (Annex 10).
Furthermore, the Complainant has provided evidence that the Respondent has registered another domain name
The Complainant considers that the Disputed Domain Name is identical or confusingly similar to the Complainant’s prior trademark as it reproduces the HAGER trademark in its entirety and the Complainant’s corporate name “Hager Electro SAS” and highly similar to the Complainant’s domain name
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. According to the Complainant, it has not authorized or permitted the registration of the Disputed Domain Name and has no connection with the Respondent who has registered it fraudulently.
In addition, the use of the Disputed Domain Name as a parking page is not in connection with a bona fide offering of goods or services or with a legitimate noncommercial or fair use without intent for commercial gain misleadingly to divert consumers or to tarnish the Complainant’s prior rights.
Finally, the Complainant contends that the Respondent is currently stealing the identity of the Complainant by registering and using the Disputed Domain Name to trade with third-party companies in the name of the Complainant and to place orders for the delivery of certain products, which would allow the Respondent to wrongfully gain a financial interest in this process.
The Complainant contends that all these elements lead to the conclusion that the Respondent registered the Disputed Domain Name in bad faith, as it was used to send fraudulent emails, which satisfies the paragraph 4(a)(iii) of the Policy.
The Complainant therefore requests that the Disputed Domain Name be transferred to the Complainant.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsParagraph 4(a) of the Policy requires the Complainant to prove each of the following elements in order to obtain relief:
(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.
These elements will be examined in turn below.
A. Identical or Confusingly SimilarThe Disputed Domain Name incorporates entirely the Complainant’s prior trademark HAGER which is typically considered sufficient to satisfy the requirements of the first element.
The addition of the term “electro” with the HAGER trademark by using a hyphen in-between does not avoid a finding of confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”). This additional term refers to the goods and services offered by the Complaint and refers also to the company name of the Complainant, Internet users are highly likely to believe that the Disputed Domain Name is associated with the Complainant.
The Panel therefore finds that the Disputed Domain Name is confusingly similar to a trademark in which the Complainant has rights.
The Panel finds that the first element of the Policy has been satisfied.
B. Rights or Legitimate InterestsNumerous previous UDRP panels have found that, even though the Complainant bears the general burden of proof under paragraph 4(a)(ii) of the UDRP, the burden of production shifts to the Respondent once the Complainant makes a prima facie showing that the Respondent lacks rights or legitimate interests (see Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
Hence after the Complainant has made a prima facie showing that the Respondent has no rights or legitimate interests in the Disputed Domain Name, it will be deemed to have satisfied paragraph 4(a)(ii) of the UDRP when the Respondent fails to submit a response. See section 2.1 of the WIPO Overview 3.0.
In this case, the Complainant brings forward the following elements:
- No license or authorization has been granted by the Complainant to the Respondent for the registration of the Disputed Domain Name;
- It has no relationship whatsoever with the Respondent;
- There is no indication that the Respondent is known under the Disputed Domain Name.
The Respondent has not proved otherwise.
In addition, the Complainant has provided evidence (including in particular the criminal complaint filed by its employee whose name was used fraudulently in relation to the Disputed Domain Name) that the Respondent is using the email address configured on the Disputed Domain Name to pretend to be an employee of the Complainant acting in the name of the Complainant in order to pursue commercial gain and misleads the Complainant’ suppliers. Such behavior constitutes a practice of impersonation and fraud. UDRP panels have categorically held that the use of a domain name for illegal activity (including for example, impersonation/passing off or other types of fraud) can never confer rights or legitimate interests on a respondent. See section 2.13 of the WIPO Overview 3.0.
Taking into account all the above elements, the Panel finds that the Respondent lacks rights or legitimate interests in the Disputed Domain Name.
Given these circumstances, the Panel finds that the second element of the Policy has been satisfied.
C. Registered and Used in Bad FaithGiven that the Respondent was sending fraudulent emails in the name of the Complainant and its employees, the Panel finds that it is impossible to believe that the Respondent chose to register the Disputed Domain Name randomly with no knowledge of the trademark or the activity of the Complainant.
Furthermore, the Complainant has provided evidence that the Respondent is using the corresponding email address to place orders in the name of the Complainant.
Panels have held that the use of a domain name for purposes other than to host a website may constitute bad faith. Such purposes include in particular sending email, phishing or identity theft. Many such cases involve the respondent’s use of the domain name to send fraudulent emails. See section 3.4 of the WIPO Overview 3.0.
This is clearly the case here as the Respondent has attempted to attract third-party suppliers for commercial gain by creating a likelihood of confusion with the Complainant as to its activity, and that such use is constitutive of bad faith and even fraud.
Furthermore, the Panel finds that the Respondent’s efforts to conceal its identity through the use of a WhoIs proxy service is a further indication that the Disputed Domain Name was registered in bad faith.
By failing to respond to the Complaint, the Respondent ignored its possibility to comment on the contrary and provide any good explanations to prove its good faith while registering and using the Disputed Domain Name.
Therefore, the Panel finds that the Complainant has satisfied paragraph 4(a)(iii) 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
Isabelle Leroux
Sole Panelist
Date: December 3, 2021