The Complainant is L’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 / Afer Immo, AFER, 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 12, 2021. On October 13, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 13, 2021, the Registrar transmitted by email to the Center its verification response, disclosing registrant and contact information for the 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 14, 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 22, 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 26, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 15, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 16, 2021.
The Center appointed Vincent Denoyelle as the sole panelist in this matter on December 3, 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 following facts are based on the submissions in the Complaint and the Annexes to the Complaint.
The Complainant is a French association of savers registered in 1976.
The Complainant is the owner of several trade marks including AFER including the following:
- French Trade Mark AFER IMMO No. 3975527, filed on January 18, 2013 and registered on May 10, 2013.
The Domain Name was registered on June 30, 2021 and used to resolve to a webpage containing pay-per-click (“PPC”) links. At the time of this Decision, the Domain Name does not resolve to an active website.
5. Parties’ Contentions A. ComplainantThe Complainant contends that the Domain Name is confusingly similar to the AFER IMMO trade mark in which the Complainant has rights as the Domain Name incorporates both terms “afer” and “immo” but in reverse order, with the addition of a hyphen “-”, which makes the Domain Name substantially similar to the Complainant’s AFER IMMO trade mark.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant contends that it has not granted any authorisation to the Respondent to register or use the Domain Name. The Complainant adds that there is no indication that the Respondent is commonly known by the Domain Name. Finally, the Complainant submits that the use of the Domain Name to point to a parking page with targeted PPC links is not using or preparing to use the Domain Name in connection with a bona fide offering of goods or services.
The Complainant contends that the Respondent has registered the Domain Name with full knowledge of the Complainant’s trade mark and the Respondent could not have ignored the Complainant’s trade mark AFER IMMO and that it registered the Domain Name in bad faith. The Complainant also alleges that the Respondent is using the Domain Name in bad faith as the Complainant has provided evidence showing that the Domain Name was used to point to a Registrar parking page with PPC links to third party websites including competitors of the Complainant.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsIn order to prevail the Complainant must substantiate that the three elements of paragraph 4(a) of the Policy have been met, namely:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
In the case of default by a party, as is the case here, paragraph 14(b) of the Rules makes it clear that if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.
In the absence of a Response from the Respondent whereby the Respondent did not object to any of the contentions from the Complainant, the Panel will have to base its decision on the basis of the Complaint and supporting Annexes.
A. Identical or Confusingly SimilarIn light of the evidence provided by the Complainant, the Panel is satisfied that the Complainant has substantiated that it holds valid trade mark rights in AFER IMMO and that both terms “afer” and “immo” of the trade mark are reproduced in the Domain Name but in reverse order.
The second point that has to be considered is whether the Domain Name is identical or confusingly similar to the trade mark AFER IMMO in which the Complainant has rights.
At the second level, the Domain Name incorporates both terms “afer” and “immo” of the Complainant’s AFER IMMO trade mark but in reverse order with the addition of a hyphen “-”. The inversion of the two terms composing the Complainant’s AFER IMMO trade mark and the addition of a hyphen “-” do not prevent a finding of confusing similarity between the Complainant’s trade mark and the Domain Name as the Complainant’s trade mark is still recognizable in the Domain Name. In addition, recognizability of the Complainant’s trade mark in the Domain Name is also confirmed by technological means as, when searching for the term “immo-afer” via Google, top results triggered relate to the trade mark AFER IMMO and the Complainant.
Then there is the addition of the generic Top-Level-Domain (“gTLD”) “.com”. As is generally accepted, the addition of a gTLD such as “.com” is merely a technical registration requirement and as such is typically disregarded under the first element of confusing similarity test.
Thus, the Panel finds that the Domain Name is confusingly similar to a trade mark or service mark in which the Complainant has rights.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy sets out relevant circumstances that could demonstrate that a respondent has rights or legitimate interests in a domain name, namely:
Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [the respondent’s] rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) [the respondent] (as an individual, business, or other organization) ha[s] been commonly known by the domain name, even if [the respondent] ha[s] acquired no trade mark or service mark rights; or
(iii) [the respondent] is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Numerous previous panels have found under the UDRP that once the Complainant makes a prima facie showing that the Respondent does not have rights or legitimate interests in the domain name, the burden of production shifts to the Respondent to rebut the showing by providing evidence of its rights or interests in the domain name.
Having reviewed the Complainant’s assertions and evidence, the Panel is satisfied that the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in the Domain Name.
The Complainant has stated that it does not know the Respondent and that it has not licensed or otherwise authorised the Respondent to make any use of its trade mark AFER IMMO. There is no indication that the Respondent is commonly known by the Domain Name.
The current absence of use of the Domain Name and the past use of the Domain Name to point to a Registrar parking page with PPC links targeting the Complainant’s sector cannot be considered bona fide, legitimate or fair.
Thus, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy sets out a number of relevant non-exhaustive circumstances, which can be deemed to constitute evidence of registration and use of a domain name in bad faith, namely:
(i) circumstances indicating that [the respondent has] registered or acquired [a disputed] 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 trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) [the respondent has] registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.
Given the circumstances described in the Complaint and the documentary evidence provided by the Complainant, the Panel finds that the Domain Name was registered in bad faith.
The Domain Name reproduces both terms composing the trade mark of the Complainant but in reverse order and this cannot be a coincidence given the overall circumstances of the present case including: (i) the goodwill and reputation of the Complainant’s AFER IMMO trade mark in France where the Respondent is based, as substantiated by the Complainant and (ii) the fact that the Domain Name was registered relatively recently and many years after the registration of the trade mark AFER IMMO.
Thus, the Panel finds that the Domain Name was registered in bad faith.
As for use of the Domain Name in bad faith, given the circumstances described in the Complaint and the evidence provided by the Complainant, the Panel considers that the Domain Name is used in bad faith.
The Domain Name appears to be passively held at the time of the Decision. Passive use itself would not cure the Respondent’s bad faith given the overall circumstances here, specifically the previous use of the Domain Name, the goodwill and reputation of the Complainant’s AFER IMMO trade mark, especially in the country where the Respondent appears to be based and the Respondent’s default to file a Response.
Furthermore, the past use of the Domain Name to point to a Registrar parking page with PPC links targeting the Complainant’s sector is persuasive evidence of the Respondent’s bad faith use of the Domain Name.
The fact that the Respondent chose not to object to the Complainant’s assertions can only reinforce the Panel’s view that the Domain Name is used in bad faith.
Finally, this is further supported by the fact that the Respondent deliberately chose to conceal its identity by means of a privacy protection service, which, in the circumstances, is an additional indication of the Respondent’s bad faith and intent to use the Domain Name in a way which may be abusive or otherwise detrimental to the Complainant and its rights.
Thus, the Panel finds that the Domain Name has been registered and is also being used in bad faith.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name
Vincent Denoyelle
Sole Panelist
Date: December 17, 2021