The Complainant is Association française d’épargne et de retraite (AFER), France, represented by Cabinet Delucenay & Staeffen, France.
The Respondent is Withheld For Privacy Purposes, Privacy Service Provided by Withheld for Privacy ehf, Iceland/ Idrissa Diarra, 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 October 8, 2021, 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 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 11, 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 15, 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 19, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 8, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 9, 2021.
The Center appointed Fabrice Bircker as the sole panelist in this matter on November 18, 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 association which has been registered in 1976 and has invented the life insurance model contract (which became the insurance industry standard in France).
It provides savings services and solutions within the best possible fiscal, legal and financial framework, to over 760,000 members, representing EUR 55 billion in savings under management.
The Complainant’s activities are protected by several trademark registrations consisting in the AFER acronym, such as:
- AFER, French trademark registration filed on June 16, 2003, registered under No. 3230785, regularly renewed since then, and designating services of classes 36, 42 and 45,
- , European Union trademark registration filed on November 8, 1996, registered under No. 395020, duly renewed since then, and designating services of class 36.
The disputed domain name,
It resolves to a website promoting investments services, in particular in the field of real estate.
This website and the related investment services are presented as run by a French company named AFER.
However, it results from the record of the case that:
- while the company named AFER which contact details and elements of identification appear on the website associated with the disputed domain name, genuinely exists, it is actually not active in the field of the offering of investment services,
- several people have sign-up to the investment programs proposed by the Respondent with the erroneous belief they were contracting with the Complainant. Indeed, when the Respondent ceased to reply to these people, after having received their payments, these people have spontaneously contacted the Complainant because they were convinced that the Respondent was a financial advisor working for the latter,
- by all appearances the investment programs proposed by the Respondent turns out to be swindles, as the victims of the Respondent have paid sums of money without receiving the agreed counterpart.
Besides, the disputed domain name has also been used to create an email address, which has been used to communicate with the people to whom these investment programs were sold.
In this context, the Complainant and the homonymous “Afer company” have notably filed criminal complaints in France, in particular on the ground of identity theft.
5. Parties’ Contentions A. ComplainantIdentical or Confusingly Similar
In substance, the Complainant contends that the disputed domain name is confusingly similar to its trademarks because i) it reproduces them, ii) the presence of the non-distinctive term “group” refers to the Afer group of companies, which increases the likelihood of confusion, and iii) the “.com” generic Top-Level Domain (“gTLD”) has to be disregarded when assessing the first element of the Policy.
Rights or Legitimate Interests
The Complainant claims that the Respondent has no rights nor legitimate interests in respect of the disputed domain name because it has not granted any authorization to anyone to register domain names containing its trademark.
Besides, the Complainant puts forward that the Respondent is not known under the disputed domain name.
The Complainant also argues that the Respondent has provided the Registrar with a postal address corresponding (except of a minor typo) to the address of the homonymous Afer company.
Registered and Used in Bad Faith
The Complainant contends that the disputed domain name is registered through a privacy protection service that masks the identity of the Respondent, what is an indication of bad faith registration and use.
The Complainant adds that the registration of a domain name that reproduces a trademark in its entirety, what is the case of the disputed domain name, by someone that has no relationship with the trademark’s owner, and without any reasonable explanation on the motives for the registration, may be suggestive of opportunistic bad faith.
The Complainant also prevails itself of the fact that its AFER trademark is well-known in France because it is used for more than 40 years and because it is one of the leaders in the insurance and retirement market.
In addition, the Complainant contends that the use of the disputed domain name to intentionally attempt to attract Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website demonstrates registration and use in bad faith.
In this respect, the Complainant argues that the Respondent registered and is using the disputed domain name in bad faith to target the AFER trademark and to divert on its website the Internet users looking for the services related with this trademark.
The Complainant also states that the Respondent was aware of its prior trademark when he registered the disputed domain name.
Then, the Complainant recalls that the website available through the disputed domain name appears edited by a homonymous Afer company which identity has been theft.
The Complainant also contends that the Respondent is using the disputed domain name and the related website to offer investment services in senior residences to extort money from individuals. In this scheme, the Respondent has also forged documents falsely presented as issued by a bank.
Considering the above, the Complainant asserts that the disputed domain name was registered and is being used in bad faith.
Further, the Complainant also puts forward that victims of this scheme were convinced to deal with the latter.
The Complainant concludes that all these elements demonstrate that the Respondent knows the French association Afer and its financial services in the field of real estate investments.
The Complainant adds that in any case a mere search on the Internet would have immediately revealed its prior rights. Therefore, the Respondent could not ignore these rights.
B. RespondentThe Respondent did not formally reply to the Complainant’s contentions.
6. Discussion and Findings 6.1. Procedural Issue: Other legal proceeding, the criminal complaint filed by the Complainant in FranceFurther to the use of the disputed domain name in the conditions described in Section 4, the Complainant has filed a criminal complaint in France on the ground of trademark infringement, attempt of fraud and identity theft.
According to paragraph 18(a) of the Rules “In the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision”.
In this case, the Panel finds that:
- both the criminal complaint and the present procedure have been introduced by the Complainant;
- the criminal complaint does not contain any demand regarding the disputed domain name, and even draw the attention of the Public Prosecutor on the present procedure;
- the Respondent, by remaining silent, has not put forward any argument in favor of the suspension or the termination of the present procedure because of the filing of the criminal complaint.
In this context, the Panel finds that the filing of the criminal complaint in France and referring to the French legislation does not prevent it to proceed to a decision in the present procedure in accordance with the UDRP.
6.2. Substantive IssuesParagraph 4(a) of the Policy provides that for obtaining the transfer or the cancellation of the disputed domain name, the Complainant must establish each of 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.
Besides, paragraph 15(a) of the Rules provides that “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Paragraphs 10(b) and 10(d) of the Rules also provide that “[i]n all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case” and that “[t]he Panel shall determine the admissibility, relevance, materiality and weight of the evidence”.
Besides, the Respondent’s failure to reply to the Complainant’s contentions does not automatically result in a decision in favor of the Complainant, although the Panel is entitled to draw appropriate inferences therefrom, in accordance with paragraph 14(b) of the Rules (see section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
Taking the foregoing provisions into consideration the Panel finds as follows.
A. Identical or Confusingly SimilarPursuant to paragraph 4(a)(i) of the Policy, the Complainant must firstly establish rights in a trademark or service mark and secondly establish that the disputed domain name is identical or confusingly similar to its trademark.
Annexes 4 and 5 to the Complaint show trademark registrations for AFER in the name of the Complainant, namely those detailed in Section 4 above.
The AFER trademark is identically reproduced in its entirety within the disputed domain name,
Besides,the addition of the dictionary term “groupe-” to the Complainant’s trademark cannot dispel the confusing similarity of the disputed domain name to the Complainant’s trademark. Indeed, there is a consensus view among UDRP panels that where the relevant trademark is recognizable within the disputed domain name, the addition of other terms would not prevent a finding of confusing similarity under the first element of the Policy (see WIPO Overview 3.0, section 1.8; or Kabbage, Inc. v. Name Redacted,WIPO Case No. D2020-0140).
As far as the gTLD “.com” is concerned, it consists of a standard registration requirement, and may therefore be disregarded when determining identity or confusing similarity under the first element.
As a result of all the above, the Panel concludes that the requirements of paragraph 4(a)(i) of the Policy are satisfied.
B. Rights or Legitimate InterestsUnder the Policy, the Complainant is required 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 demonstrating rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (WIPO Overview 3.0, section 2.1; or for instance Applied Materials, Inc. v. John Warren,WIPO Case No. D2020-0950).
In this case, the Respondent has not been authorized by the Complainant to register and to use the disputed domain name.
In addition, there is nothing in the record of the case likely to indicate that the Respondent may genuinely be commonly known by the disputed domain name.
Besides, the disputed domain name appears used by the Respondent in a context of frauds. In particular, it resolves to a website falsely presented as edited by a company which identity has been usurped (this company has filed a criminal complaint in this respect) and said disputed domain name has been used to sell fraudulent investment programs by deceiving people (the latter being convinced that the Respondent was connected with the Complainant).
Obviously, such use of the disputed domain name, which was not rebuted by the Respondent, does not amount to a legitimate noncommercial or fair use. In this respect, panels have categorically held that the use of a domain name for illegal activity (such as impersonation or any types of fraud) can never confer rights or legitimate interests on a respondent (see WIPO Overview 3.0, section 2.13; or Colas, Société Anonyme v. Concept Bale,WIPO Case No. D2020-2733).
Taken all the above into consideration, the Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Respondent has had an opportunity to rebut the Complainant’s arguments but has not done so.
Consequently, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name, and accordingly that the second element in paragraph 4(a) of the Policy is satisfied.
C. Registered and Used in Bad FaithParagraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the disputed domain name in bad faith.
The circumstances listed in paragraph 4(b) of the Policy are only examples and therefore are not exhaustive of the situation of bad faith.
Registration in Bad Faith
The Panel notes that:
- the disputed domain name reproduces the Complainant’s AFER trademark in its entirety and the presence of the “group” term can reinforce the confusion with the Complainant’s trademark;
- “afer” is a coined term;
- the use of the Complainant’s AFER trademark predates the registration of the disputed domain name by decades;
- the Respondent concealed its identity through the use of a privacy service at the time of registering the disputed domain name;
- in France, the Complainant is extremely well-known in the field of financial investments;
- the disputed domain name has been used in relation with the subscription of financial investments, what corresponds with the Complainant’s activity.
In these circumstances, it is not reasonably conceivable for this Panel that the Respondent may have registered the disputed domain name without being aware of the Complainant’s prior rights.
Besides and for sake of completeness, it will be added that, for this Panel, the fact that the disputed domain name resolves to a website presented as edited by a third party named “Afer” which actually exists, does not change the above finding of bad faith registration. Indeed, this homonymous Afer third party is not active in the field of investments, on the contrary of the Complainant and of the activity run through the disputed domain name. As a consequence, the circumstances of this case conduct to consider that the Respondent has been using the name and the contact details of this homonymous Afer company to add confusion, precisely because it bears the same name than the Complainant, and therefore to further “cover the tracks” by making the fraudulent scheme more complex.
Use in Bad Faith
It clearly results from the records of the case that the disputed domain name has been used:
- in a context of identity theft (in particular to the extent where the website to which the disputed domain name redirects is falsely presented as being edited by a company which identity has been usurped),
- to resolve to a website promoting fraudulent investments products and services,
- to create an email address used to exchange with people to deceive them in view of obtaining sums of money through the subscription of fake products of investment.
Such use is deceptive and illegal, and therefore made in bad faith. Indeed, it is consistently held that the use of a domain name for illegitimate activity, such as identity theft or phishing, is considered as manifest evidence of bad faith (see WIPO Overview 3.0, sections 3.1.4 and 3.4; or Wärtsilä Technology Oy Ab v. McKeith Powers,WIPO Case No. D2020-1525).
As a conclusion, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith, so paragraph 4(a)(iii) of the Policy is satisfied.
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
Fabrice Bircker
Sole Panelist
Date: November 30, 2021