The Complainant is Safran, France, represented internally.
The Respondent is Cheng Chan, United States of America.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 11, 2021. On October 12, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 13, 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 20, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 9, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 10, 2021.
The Center appointed Zoltán Takács as the sole panelist in this matter on November 22, 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 language of this administrative proceeding is English, that being the language of the Registration Agreement.
4. Factual BackgroundThe Complainant is a French multinational corporation operating in the aircraft propulsion and equipment, space and defense markets.
The Complainant, headquartered in Paris employs over 79,000 people and has generated 16.5 billion euros in sales in 2020.
Among others, the Complainant owns the following trademarks:
- International Trademark Registration (“IR”) No. 884321 for the word mark SAFRAN, registered since August 5, 2005, for multiple goods and services of the Nice Agreement Concerning the International Classification of Good and Services for the Purpose of the Registration of Marks (“Nice Agreement”), and
- European Union Trademark Registration (“EUTM”) No. 004535209 for the word mark SAFRAN, registered since August 17, 2009, for multiple goods and services of the Nice Agreement.
Since February 25, 2005, the Complainant owns the domain name
The disputed domain name, registered on December 2, 2019, does not resolve to an active website.
5. Parties’ Contentions A. ComplainantThe Complainant contends that the disputed domain name fully incorporates its SAFRAN trademark and is therefore confusingly similar to it. The difference between the disputed domain name and its trademark is the Respondent’s addition of the misspelled generic word “group” by replacing the letter “o” to the number “0”.
The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain names and is unable to rely on any of the circumstances set out in paragraphs 4(c)(i), (ii), or (iii) of the Policy.
The Complainant claims that the disputed domain name was registered and is being used in bad faith and requests that the disputed domain names be transferred from the Respondent to the Complainant.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsParagraph 15(a) of the Rules requires that the Panel’s decision be made “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”.
It has been a consensus view in previous UDRP decisions that a respondent’s default (i.e., failure to submit a response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
A complainant must evidence each of the three elements required by paragraph 4(a) of the Policy in order to succeed on the complaint, namely that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(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 SimilarUnder paragraph 4(a)(i) of the Policy, there are two requirements which the complainant must establish, first that it has rights in a trademark or service mark, and second that the disputed domain names are identical or confusingly similar to the trademark or service mark.
It has been a consensus view among previous UDRP panels that if the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights.
The Complainant produced evidence of having registered rights in the SAFRAN trademark.
For the purpose of this administrative proceeding the Panel finds that the IR No. 884321 and EUTM No. 004535209 for the word mark SAFRAN satisfies the requirement of having trademark rights for the purpose of the Policy.
Having determined the presence of the Complainant’s trademark rights in the SAFRAN trademark, the Panel next assesses whether the disputed domain name
According to section 1.7 of the WIPO Overview 3.0, the standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name. This test typically involves a side-by-side comparison of the disputed domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. In cases where a domain name incorporates the entirety of a trademark the domain name is normally considered confusingly similar to that mark for purposes of UDRP standing.
According to section 1.11.1 of the WIPO Overview 3.0, the applicable generic Top-Level Domain (“gTLD”) in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is generally disregarded under the first element confusingly similar test.
The disputed domain name
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark. The mere addition of the misspelled dictionary word “group” is not sufficient to eliminate confusion.
The Panel finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate InterestsUnder paragraph 4(c) of the Policy, a respondent may demonstrate its rights or legitimate interests in a domain name by showing any of the following circumstances, in particular but without limitation:
(i) its use of, or demonstrable preparation to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services;
(ii) it has been commonly known by the domain name;
(iii) it is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
In the present case, the Complainant has submitted sufficient and uncontested evidence that it holds well-established rights in the SAFRAN trademark.
The Complainant has never authorized the Respondent to use its SAFRAN trademark in any way, and its prior rights in the SAFRAN trademark precede the date of registration of the disputed domain name.
According to section 2.1 of the WIPO Overview 3.0, while the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent.
As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with the relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.
The Respondent defaulted and failed to respond, and by doing so failed to offer the Panel any type of evidence set forth in paragraph 4(c) of the Policy, or otherwise counter the Complainant’s prima facie case. The Panel finds, also noting the circumstances described below as regards bad faith, that the Respondent has no rights or legitimate interests in the disputed domain name in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy lists a number of factors which, if found by the panel to be present, shall be evidence of registration and use of a domain name in bad faith. This non-exclusive list includes:
“(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 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 your website or location or of a product or service on your website or location.”
A basic Internet search against the disputed domain name returns solely the Complainant and its businesses.
The Respondent has registered a disputed domain name that fully incorporates the Complainant’s distinctive SAFRAN trademark in conjunction with the misspelled variant of the word “group” (replacing the letter “o” with the number “0”), a combination used by the Complainant.
The Respondent defaulted and thus failed to provide any explanation for its inclusion of the Complainant’s trademark in the disputed domain name.
In absence of any such explanation, the Panel infers on balance that the Respondent knew of the Complainant’s business and its trademark when registering the disputed domain name.
The fact that the disputed domain name does not resolve to an active website does not alter the Panel’s conclusions. According to section 3.3 of the WIPO Overview 3.0, passive holding of a domain name does not prevent a finding of bad faith.
In addition, the Panel cannot conceive of any legitimate use of the disputed domain name by the Respondent other than targeting the Complainant’s business and its SAFRAN trademark, which establishes bad faith.
For the reasons set out above, the Panel finds that the Respondent has registered and is using the disputed domain name in bad faith and that 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,
Zoltán Takács
Sole Panelist
Date: November 25, 2021