The Complainant is Cofra AG, Switzerland, represented by Ports Group AB, Sweden.
The Respondent is Privacy Service Provided by Withheld for Privacy ehf, Iceland / Name Redacted1 .
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 10, 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. Also on the same day, 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 November 12, 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 November 15, 2021 reporting possible identity theft. In fact, from the information disclosed by the Registrar the disputed domain name was registered using the name of one of the Complainant’s employees.
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 November 17, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 7, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 9, 2021.
The Center appointed Federica Togo as the sole panelist in this matter on December 20, 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 the registered owner of several trademarks worldwide consisting and/or containing COFRA, e.g. International trademark registration No. 1130512 COFRA registered on August 27, 2012 for goods and services in classes 16, 35, 36, 41 and 45 and designating several countries. The Complainant is active in the fields of retail, real estate, asset management, private equity and renewable energy and has operations spanning Europe, America, and Asia.
It results from the information disclosed by the Registrar that the disputed domain name was registered on February 20, 2021. Moreover, it resolves to an inactive webpage.
The Complainant sent a cease-and-desist letter to the Respondent on August 10, 2021, to which the Respondent never replied, despite many reminders.
5. Parties’ Contentions A. ComplainantIt results from the Complainant’s undisputed allegations that the Complainant is a privately held group of companies established in 2001 in Zug, Switzerland. The Complainant is active in the fields of retail, real estate, asset management, private equity and renewable energy and has operations spanning Europe, America, and Asia. The Complainant has 51,000 employees circa and is managed by members of the Brenninkmeijer family. The Complainant is composed of, amongst others, the fashion retail company C&A, the commercial retail and residential real estate business company Redevco, and the platform of private equity and fund investment vehicles Bregal Investments. The Complainant is active in corporate philanthropy and is working with manufacturers, government, charities, and major brands to promote sustainability throughout the fashion industry.
In addition, the Complainant operates the domain names
The Complainant contends that its trademark COFRA is distinctive and has a strong reputation.
The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trademark, since it incorporates its trademark in its entirety, with the addition of the elements “holding” and “AG”. As the trademark is clearly recognizable within the disputed domain name, they should be considered confusingly similar.
The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name. According to the Complainant, it has not been authorized by the Complainant to use the trademark and does not own any trademark rights in the name “Cofra Holding AG”. There is no evidence that the Respondent is commonly known by the disputed domain name. In addition, the disputed domain name does not resolve to a website from which any interest in its use by the Respondent may be inferred.
Finally, the Complainant contends that the disputed domain name was registered and is being used in bad faith. In fact, the Complainant’s rights in the trademark have been registered many years before the creation of the disputed domain name. It is obvious that the Respondent was fully aware of the Complainant’s activity and trademark, given that the trademark is distinctive by nature.
The Complainant further contends that it results from the information disclosed by the Registrar that the disputed domain name was registered using the name of one of the Complainant’s employees, allegedly located in Rapid City, United Kingdom. The city Rapid City is however located in the United States of America and not in the United Kingdom. The Respondent has thus deliberately used the name of one of the Complainant’s employees to register the disputed domain name, probably in order to set up a phishing scheme. Therefore, the Complainant asked the Panel to redact the Respondent’s name in the decision.
Moreover, the Complainant asserts that the passive holding doctrine applies in the present proceeding, as the Complainant’s trademark has a strong reputation, there is no evidence of any actual or contemplated good faith use by the Respondent of the disputed domain name, and the Respondent did not reply to the cease-and-desist letter sent on August 10, 2021, and followed by several reminders.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsParagraph 15(a) of the Rules instructs this Panel to “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”. Paragraph 4(a) of the Policy requires a complainant to prove each of the following three elements in order to obtain an order that the disputed domain name be transferred or cancelled:
(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.
The Panel will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied.
A. Identical or Confusingly SimilarPursuant to paragraph 4(a)(i) of the Policy, the Complainant must establish rights in a trademark or service mark and secondly establish that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
The Complainant is the registered owner of several trademarks worldwide consisting and/or containing COFRA, e.g. International trademark registration No. 1130512 COFRA registered on August 27, 2012 for goods and services in classes 16, 35, 36, 41 and 45 and designating several countries.
UDRP panels have found that a disputed domain name is confusingly similar to a complainant’s trademark where the disputed domain name incorporates the complainant’s trademark in its entirety (e.g., Compagnie Générale des Etablissements Michelin v. Milen Radumilo,WIPO Case No. DCO2020-0090; LEGO Juris A/S v. ken Teo,WIPO Case No. D2020-2380; Sanofi v. WhoisGuard Protected, WhoisGuard, Inc. / Todd Peter,WIPO Case No. D2020-2060; Virgin Enterprises Limited v. Domains By Proxy LLC, Domainsbyproxy.com / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2020-1923; F. Hoffmann-La Roche AG v. Jason Barnes, ecnopt,WIPO Case No. D2015-1305; Compagnie Générale des Etablissements Michelin v. Christian Viola,WIPO Case No. D2012-2102; Volkswagen AG v. Nowack Auto und Sport - Oliver Nowack,WIPO Case No. D2015-0070; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies,WIPO Case No. D2015-0812; Rhino Entertainment Company v. DomainSource.com, Inc.,WIPO Case No. D2006-0968; SurePayroll, Inc. v. Texas International Property Associates,WIPO Case No. D2007-0464; and Patagonia, Inc. v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico,WIPO Case No. D2019-1409). This Panel shares this view and notes that the Complainant’s registered trademark COFRA is fully included in the disputed domain name, followed by the terms “holding” and “ag”. Furthermore, it is the view of this Panel that the addition of these terms in the disputed domain name cannot prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark since the Complainant’s trademark is clearly recognizable in the disputed domain name.
Finally, the Top-Level Domain “.info” of the disputed domain name may be disregarded under the first element confusing similarity test (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 1.11.1).
In the light of the above, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate InterestsPursuant to paragraph 4(a)(ii) of the Policy, the Complainant must secondly establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interests to the disputed domain name. In the Panel’s view, based on the undisputed allegations stated above, the Complainant has made a prima facie case that none of these circumstances are found in the case at hand and, therefore, that the Respondent lacks rights or legitimate interests in the disputed domain name.
According to the Complaint, which has remained unchallenged, the Complainant has no relationship in any way with the Respondent and did, in particular, not authorize the Respondent’s use of the trademark COFRA, e.g., by registering the disputed domain name comprising the said trademark entirely.
Furthermore, the Panel notes that there is no evidence showing that the Respondent might be commonly known by the disputed domain name in the sense of paragraph 4(c)(ii) of the Policy.
In addition, no content is displayed on the website to which the disputed domain name resolves. Such use can neither be considered as a bona fide offering of goods or services nor a legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue in the sense of paragraphs 4(c)(i) and (iii) of the Policy (see, e.g., Banca Mediolanum S.p.A. v. Domains By Proxy, LLC / Marzia Chiarello,WIPO Case No. D2020-1955; KOC Holding A.S. v. VistaPrint Technologies Ltd,WIPO Case No. D2015-1910; and Deutsche Lufthansa AG v. Mustermann Max, Muster AG, WIPO Case No. D2015-1320). Moreover, the Panel notes that the disputed domain name is clearly constituted by the Complainant’s registered trademark COFRA and the terms “holding” and “ag”, which clearly refer to the Complainant’s business and tradename, tending to suggest sponsorship or endorsement by the Complainant. The Panel finds it most likely that the Respondent selected the disputed domain name with the intent to attract Internet users for commercial gain.
It is acknowledged that once the Panel finds a prima facie case is made by a complainant, the burden of production under the second element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. Since the Respondent in the case at hand failed to come forward with any allegations or evidence, this Panel finds, in the circumstances of this case, that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant has therefore satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithAccording to paragraph 4(a)(iii) of the Policy, the Complainant must thirdly establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the disputed domain name’s registration and use in bad faith.
Based on the evidence submitted by the Complainant, this Panel has no doubt that the Respondent positively knew or should have known that the disputed domain name consisted of the Complainant’s trademark when it registered the disputed domain name. This is underlined by the fact that the disputed domain name is clearly constituted by the Complainant’s registered trademark COFRA and the terms “holding” and “ag”, which clearly refer to the Complainant’s business and trade name (It results from the information disclosed by the Registrar that the disputed domain name was registered using the name of one of the Complainant’s employees). Registration of the disputed domain name in awareness of the COFRA mark and in the absence of rights or legitimate interests in this case amounts to registration in bad faith.
The disputed domain name does not resolve to an active website. In this regard, the Panel notes that the current passive holding does not preclude a finding of bad faith (see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). In fact, the further circumstances surrounding the disputed domain name’s registration and use confirm the findings that the Respondent has registered and is using the disputed domain name in bad faith: (1) the Respondent failed to submit a formal response or to provide any evidence of actual or contemplated good-faith use; (2) the Respondent used a privacy service hiding its identity and using false contact details; and (3) the implausibility of any good faith use to which the disputed domain name may be put (see WIPO Overview 3.0 at section 3.3).
In the light of the above, the Panel finds that the disputed domain name has been registered and is being used in bad faith pursuant to 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,
Federica Togo
Sole Panelist
Date: January 3, 2022
1 “The Respondent appears to have used the name and contact details of a third party when registering the disputed domain name. In light of the potential identity theft, the Panel has redacted the Respondent’s name from this decision, see Virgin Enterprises Limited v. Registration Private, Domains by Proxy, LLC / Name Redacted,WIPO Case No. D2018-0645. However, the Panel has attached as Annex 1 to this decision an instruction to the Registrar regarding transfer of the disputed domain name, which includes the name of the Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this decision shall not be published due to the exceptional circumstances of this case. See Banco Bradesco S.A. v. FAST-12785241 Attn. Bradescourgente.net / Name Redacted,WIPO Case No. D2009-1788.”