The Complainants are Sistemas Técnicos del Accesorio y Componentes S.L., Spain (“First Complainant”) and Systèmes Techniques, AC, Morocco (“Second Complainant”), represented by PONS IP, Spain.
The Respondent is Rahmani Youssef, MarocWebo, Morocco.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 22, 2021. On November 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 23, 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 November 25, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 15, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 17, 2021. On December 17, 2021, the Center received an email communication in response to the Notification of Respondent Default from an email address different to the one provided by the Registrar for the Respondent in its verification response, offering to sell the disputed domain name. On December 21, 2021, the Center asked the sender of the email communication to identify herself or himself, clarifying her/his relationship (if any) to the Respondent. On December 22, 2021, the Center received another email communication in French from this person stating that he is the owner of the disputed domain name (“Bonjour, Je suis Youssef Rahmani le propriétaire du nom de domaine stacbondmaroc.com”). On the same date, the Center invited the Respondent to provide its comments on the aforementioned email communication using one of two email addresses: [...]@marocwebo.com or [...]@stacbondmaroc.com). No response was received from the Respondent.
The Center appointed Nayiri Boghossian as the sole panelist in this matter on December 30, 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 Complainants operate in the field of solutions for building coverings and facades. The First Complainant was founded in 2001 and created its presence in Morocco in 2012 through establishing the Second Complainant. The Complainants’ products have been sold under the trademark STAC BOND in Morocco since 2010.
The Complainants own many trademark registrations for STAC BOND such as:
1. Morocco trademark registration No. 155836 for STAC BOND registered on November 22, 2013 in the name of the Second Complainant.
2. European Union trademark registration No. 017287491 for STAC BOND registered on February 7, 2018 in the name of the First Complainant.
3. International trademark registration No. 1383027 for STAC BOND registered on October 30, 2017 in the name of the First Complainant.
The disputed domain name was registered on February 27, 2020. The disputed domain name resolves to a webpage which offers aluminum composite panels and more generally facades including products of the Complainants.
5. Parties’ Contentions A. ComplainantThe Complainants contend that the disputed domain name is confusingly similar to a trademark or service mark in which the Complainants have rights. The Complainants own the trademark STAC BOND and have registered it in many countries. The Complainants’ trademark STAC BOND has been advertised on social media and advertised specifically in Morocco. The Complainants rely on article 6bis of the Paris Convention for the Protection of Industrial Property, article 9 of the EU Regulation 2015/2424 of the European Parliament and of the Council of 16 December 2015 and article 34 of the Spanish Law 17/2001 on Trademarks to argue that they enjoy the exclusive right to use the trademark STAC BOND. The disputed domain name incorporates the Complainants’ trademark in its entirety. The trademark STAC BOND consists of the association of “stac”, which is the acronym of the First Complainant, and “bond”.
The Complainants contend that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not authorized or licensed by the Complainants to use their trademark nor is it affiliated with the Complainants. There is no evidence that the Respondent owns any trademark or service mark rights identical or similar to the disputed domain name. The use of the trademark by the Complainants precedes the registration of the disputed domain name. The Respondent is not commonly known by the disputed domain name. The disputed domain name directs to a page, which offers the Complainants’ products and services.
The Complainants contend that the disputed domain name was registered and is being used in bad faith. The Respondent knew of the Complainants’ trademark as the disputed domain name incorporate the Complainants’ trademark in its entirety and as the Complainants’ trademark has been present in Morocco for a long time. The Complainants’ trademark is being used together with its figurative elements and in connection with the sale of the Complainants’ products and services with the risk of creating confusion in the mind of the public. The disputed domain name was registered with the intent to mislead consumers by creating confusion with the Complainants’ trademark and products. Prior UDRP panels have found that including a complainant’s trademark in its entirety in the disputed domain name may lead consumers to believe that the disputed domain name is associated with the complainant. The registration of the disputed domain name postdates the use and registration of the Complainants’ trademark in Morocco.
B. RespondentThe Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings A. Identical or Confusingly SimilarThe Complainants own trademark registrations for STAC BOND. The Panel is satisfied that the Complainants have established their ownership of the trademark STAC BOND.
It is established by prior UDRP panels that when a domain name incorporates a complainant’s registered trademark, such incorporation is sufficient to establish identity or confusing similarity for the purposes of the Policy even if other words are added as part of the disputed domain name. E.g., Oki Data Americas, Inc v. ASD, Inc.,WIPO Case No. D2001-0903 (“Oki Data”). The disputed domain name incorporates the Complainants’ trademark STAC BOND in its entirety. The word “maroc” means Morocco and does not alter the fact that the disputed domain name is confusingly similar to the Complainants’ trademark. The generic Top-Level Domain “.com” should generally be ignored when assessing confusing similarity as established by prior UDRP decisions.
Consequently, the Panel finds that the disputed domain name is confusingly similar to the trademark of the Complainants and that the Complainants have satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsUnder paragraph 4(a)(ii) of the Policy, a complainant must make at least a prima facie showing that a respondent does not have any rights or legitimate interests in the disputed domain name. Once such showing is made, the burden of production shifts to the respondent. In the instant case, the Complainants assert that the Respondent is not affiliated with nor authorized by the Complainants to use their trademark. The Respondent should prove that it has rights or legitimate interests.
According to the Policy, the use of the disputed domain name would be legitimate if it is used in connection with a bona fide offering of goods or services. The website to which the disputed domain name resolves seems to offer products of the Complainants. Therefore, there may be an argument that the disputed domain name is being used in connection with a bona fide offering of products. In line with the Oki Data test, a number of requirements have to be met (see Oki Data,supra):
1. “Respondent must actually be offering the goods or services at issue”;
2. “Respondent must use the site to sell only the trademarked goods”;
3. “The site must accurately disclose the registrant’s relationship with the trademark owner”; and
4. “The Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name”.
The Panel analyzes each of these requirements below:
a. Requirement no. 1: This requirement is met in the instant case as the disputed domain name resolves to a website which offers Complainants’ products.
b. Requirement no. 2: The Respondent is offering primarily the Complainants’ products but there is also mention on the website of competing products branded “Alucobond”. There is reference to Alucobond more than once and there is a link “Habillage en Alucobond” to another site relating to Alucobond. Therefore, it appears that that products competing to those of the Complainants are also being offered. Such use has been found by prior UDRP panels as not being bona fide (see Experian Information Solutions, Inc v. Credit Research, Inc.,WIPO Case No. D2002-0095).
c. Requirement no. 3: This requirement is not met as the website does not include a statement demonstrating that it does not belong or is not affiliated with the Complainants.
d. Requirement no. 4: This requirement is met as there are no numerous registrations by the Respondent of domain names containing the trademark of the Complainants.
Requirements no. 2 and 3 have not been met. Therefore, it is the Panel’s view that the requirements of the Oki Data test have not been met.
Moreover, the Panel finds that the nature of the disputed domain name carries a risk of implied affiliation with the Complainants. See section 2.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Consequently, the Panel finds that the Complainants have met the requirement under the Policy of showing that the Respondent does not have any rights or legitimate interests in the disputed domain name. Accordingly, the Complainants have satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithThe Respondent clearly knew of the Complainants’ business and trademark as the disputed domain name resolves to a website offering the products of the Complainants. The nature of the disputed domain name suggests affiliation with the Complainants as it incorporates the Complainants’ trademark in full. The use of the geographical term “maroc” reinforces the impression that the disputed domain name is the Complainants’ website for the Moroccan market.
The disputed domain name resolves to a website, which offers the Complainants’ products. It offers other products as well of the same nature, i.e. aluminum composite panels. Offering competing products is an indication of bad faith use. As such, the disputed domain name suggests affiliation with the Complainants in order to attract consumers and offer competing services. This is an act of bad faith (see Intex Recreation Corp. v. RBT, Inc., Ira Weinstein,WIPO Case No. D2010-0119; MasterCard International Incorporated v. Global Access,WIPO Case No. D2008-1940).
Such conduct falls squarely within the meaning of paragraph 4(b)(iv) of the Policy, and accordingly, the Panel finds that the Complainants have 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
Nayiri Boghossian
Sole Panelist
Date: January 7, 2022