The Complainant is Sofi Groupe, France, represented by ETNA Avocats & CPI, France.
The Respondent is Privacy service provided by Withheld for Privacy ehf, Iceland / Charles Dupuis, France.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 9, 2021. On December 9, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 9, 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 December 13, 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 December 14, 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 December 15, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 4, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 5, 2022.
The Center appointed Vincent Denoyelle as the sole panelist in this matter on January 19, 2022. 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 BackgroundGiven that no Response was filed, the following facts are based on the submissions in the Complaint and the Annexes to the Complaint.
The Complainant operates an online marketplace selling refurbished mobile phones, with its headquarters in France.
The Complainant is the owner of several trade marks for SMAAART including the following:
- French Trade Mark No. 4354133, SMAAART, filed on April 12, 2017;
- French Trade Mark No. 4385081, SMAAART, filed on August 30, 2017; and
- European Union Trade Mark No. 018160080, SMAAART, filed on February 12, 2019.
The Complainant is also the owner of several domain names reflecting its trade mark, including the domain names
The Domain Name was registered on September 16, 2021. The Domain Name directs to a website in direct competition with the Complainant.
5. Parties’ Contentions A. ComplainantThe Complainant contends that the Domain Name is confusingly similar to the SMAAART trade mark in which the Complainant has rights. According to the Complainant, the Domain Name is a deliberate misspelling of the Complainant’s SMAAART trade mark as it only differs from the SMAAART trade mark by omitting one “a” and adding the letter “y” at the end. The Complainant also highlights that the addition of the generic Top-Level Domain (“gTLD”) “.store” is merely a registration requirement and that it should be disregarded for the purpose of assessing similarity.
The Complainant contends that the Respondent has no rights or legitimate interests in the Domain Name. The Complainant asserts that the Respondent has no rights in the term “smaarty” and that it is not a licensee of, or otherwise affiliated with, the Complainant. The Complainant also points to the use of the Domain Name to redirect Internet users to a website in direct competition with the Complainant and misleadingly suggesting an affiliation with the Complainant, to conclude that such use is not a bona fide offering of goods or services under the Policy.
The Complainant submits that the Domain Name was registered and is being used in bad faith. The Complainant points to the use by the Respondent of incorrect street address for the registration of the Domain Name and to the subsequent use of the Domain Name by the Respondent to create a clone of the Complainant’s website. The Complainant infers from these circumstances that the Domain Name was registered in bad faith. The Complainant also submits that the Domain Name is being used in bad faith given that it is used (i) to direct visitors to a website purporting to be in direct competition with the Complainant and (ii), as evidenced by the Complainant, to defraud Internet users by impersonating the Complainant. The Complainant also points to a previous transfer decision under the Policy relating to the Domain Name and based on very similar facts.
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 SMAAART.
The second point that has to be considered is whether the Domain Name is identical or confusingly similar to the trade mark SMAAART in which the Complainant has rights.
At the second level, the Domain Name consists of the term “smaarty”. The Panel finds that upon carrying out a side-by-side comparison of the Domain Name and the textual components of the trade mark SMAAART, the Domain Name is confusingly similar to the Complainant’s trade mark. The only difference is the omission of one “a” (the letter “a” thus being repeated twice in the Domain Name as opposed to thrice in the trade mark SMAAART) and the addition of the letter “y” at the end. Overall, both the Domain Name and the trade mark SMAAART consist of seven letters and start with the same four letters. The Panel finds that the small differences between the SMAAART trade mark of the Complainant and the Domain Name do not prevent a finding of confusing similarity between the Complainant’s trade mark and the Domain Name. In addition, given that the letter “y” is next to the letter “t” on both QWERTY and AZERTY keyboards, the Panel finds that a misspelling by an Internet user is even more likely. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.9.
Then there is the addition of the gTLD “.store”. As is widely accepted, the addition of a gTLD such as “.store” is merely a technical registration requirement and as such is typically disregarded under the first element confusing similarity test.
Thus, the Panel finds that the Domain Name is identical or 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 non-commercial 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 a complainant makes a prima facie showing that the respondent does not have rights or legitimate interests in a domain name, the burden of production shifts to the respondent to rebut the showing by demonstrating its rights or legitimate 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 does not have rights or legitimate interests in the Domain Name.
The Complainant has stated that the Respondent does not own any rights in the term “smaarty” and that the Complainant has never licensed the Respondent to use the SMAAART trade mark. There is no evidence that the Respondent is commonly known by the Domain Name especially given that the Respondent chose not to respond.
The Domain Name is used to redirect to a website which (i) appears to be in direct competition with the Complainant and (ii) misleadingly refers to the Complainant and some of its corporate details in an effort to impersonate the Complainant and defraud Internet users. This use of the Domain Name cannot be seen as a legitimate noncommercial or fair use of the Domain Name nor can it be seen as a bona fide offering of goods or services. See section 2.13.1 of the WIPO Overview 3.0. The Panel is satisfied that the Respondent is using the Domain Name to exploit the goodwill of the Complainant’s trade mark, with an intent for commercial gain and to mislead consumers.
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 on-line 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 is confusingly similar to the trade mark SMAAART of the Complainant and this cannot be a coincidence.
The trade mark SMAAART of the Complainant is not a descriptive or common term and the Complainant has substantiated, including by reference to numerous newspapers and specialized media articles about the Complainant (mainly in French and Spanish publications), that the website it operates under the SMAAART trade mark has acquired substantial goodwill and renown. The Panel thus finds that it is highly likely that the Respondent, who is based in the country where the Complainant is headquartered, deliberately registered the Domain Name to specifically target the Complainant. The Panel also infers from the use of the Domain Name that it was registered in bad faith.
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, the documentary evidence provided by the Complainant and the brief verification carried out by the Panel of the website associated with the Domain Name, the Panel is satisfied that the Domain Name is used in bad faith.
The Domain Name appears to be used to direct to a website which (i) is in direct competition with the Complainant and (ii) misleadingly refers to the Complainant and some of its corporate details in an effort to impersonate the Complainant and defraud Internet users. This type of use is conclusive evidence of bad faith on the part of the Respondent. The Panel thus considers that by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s trade mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of a product on the Respondent’s website.
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 being used in bad faith.
Further, the fact that the Respondent chose to (i) conceal its identity by means of a privacy protection service and (ii) provide incorrect registration details, is an additional indication of the Respondent’s bad faith and its intent to use the Domain Name in a way which may be abusive or otherwise detrimental to the Complainant and its rights.
Finally, the Panel’s finding is also supported by a previous transfer decision under the Policy relating to the Domain Name and based on very similar facts (and possibly involving the Respondent), see Sofi Groupe v. Whoisguard, Inc. / smaarty smarty,WIPO Case No. D2020-2362.
Thus, the Panel finds that the Domain Name is 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: February 2, 2022