The Complainant is Institut de Radioprotection et de Sûreté Nucléaire, France, represented by Cabinet Regimbeau, France.
The Respondent is Domain Admin, FindYourDomain, United States of America (“United States”), represented by Grant Carpenter, United States.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 23, 2021. On December 23, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 23, 2021, 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 January 11, 2022 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 January 11, 2022.
The Registrar also indicated that the language of the Registration Agreement was English. The Complaint was filed in French. The Center sent an email communication to the Complainant on January 5, 2022, inviting the Complainant to provide sufficient evidence of an agreement between the Parties for French to be the language of proceeding, a Complaint translated into English, or a request for French to be the language of proceedings. The Center also invited the Respondent to submit comments. On January 5, 2022, the Complainant confirmed its request for the language of proceedings to be French. On January 19, 2022, the Respondent requested the Complaint to be translated into English.
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 in both French and English, and the proceedings commenced on January 19, 2022, indicating that the Response will be accepted in either French or English. In accordance with the Rules, paragraph 5, the due date for Response was February 8, 2022. The Response was filed with the Center in English on February 8, 2022.
The Center appointed Edoardo Fano as the sole panelist in this matter on February 14, 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.
The Panel has not received any requests from the Complainant or the Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the Parties.
The language of the proceeding is English, being the language of the Registration Agreement, as per paragraph 11(a) of the Rules.
4. Factual BackgroundThe Complainant is Institut de Radioprotection et de Sûreté Nucléaire, a French public body operating in the field of research and expertise about nuclear and radiation risks, that owns several trademark registrations for IRSN, including the following:
- French Trademark Registration No. 4186540 for IRSN, registered on June 5, 2015;
- International Trademark Registration No. 1290146 for IRSN, registered on December 2, 2015, also extended to United States.
The Complainant also operates on the Internet, owning the domain name
The Complainant provided evidence in support of the above.
According to the WhoIs records, the disputed domain name was registered on April 16, 2021. The disputed domain name resolves to a parking page with sponsored links and it is offered for sale at the website “www.perfectdomain.com” for USD 29,999.
5. Parties’ Contentions A. ComplainantThe Complainant states that the disputed domain name is identical to its trademark IRSN.
Moreover, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name since it has not been authorized by the Complainant to register the disputed domain name or to use its trademark within the disputed domain name, it is not commonly known by the disputed domain name and it is not making either a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. The Respondent, in the website at the disputed domain name, has a parking page with sponsored links to the same field of activity of the Complainant.
The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith, since the latter was bought by the Respondent essentially in order to make a profit either from the pay-per-click links or by selling it to the Complainant or to a competitor of the Complainant for a consideration higher to the documented fees directly in relation to the disputed domain name. Finally, the Complainant notes that the Respondent owns almost 1500 domain names, some of them corresponding to famous third parties’ trademarks.
B. RespondentThe Respondent concedes that the disputed domain name is identical to the Complainant’s trademark.
The Respondent asserts to have rights or legitimate interests in respect of the disputed domain name since the latter was bought in connection with its legitimate business of buying and selling short, generic, otherwise appealing and inherently valuable domain names, without claiming the pay-per-click advertising as its legitimate use of the disputed domain name: the latter consist of an acronym used to identify many organizations, individuals, and concepts.
The Respondent submits that the disputed domain name was not registered and is not being used in bad faith, since the Respondent was not aware of the Complainant’s trademark at the time it registered the disputed domain name, nor was the disputed domain name registered with an intent to profit from or otherwise abuse the Complainant’s trademark rights, but instead in order to sell it in the ordinary course of its legitimate business in good faith. The Respondent adds that it owns more than 1,500 domain name registrations and even if a few of them violate third parties’ trademark rights, that would not suffice as evidence of the Respondent’s pattern of bad faith domain name registration. When the Respondent parked and displayed pay-per-click ads on the disputed domain name, it was completely unaware that any ads were being displayed related to the Complainant’s industry, since the Respondent was unaware of the Complainant’s trademark and the United States version of the parking page does not list ads related to the Complainant’s sector. Moreover, the Respondent asserts that the list price of USD 29,999 for the disputed domain name is not an unusually high price for a four-letter “.com” domain name.
Finally, the Respondent requires the Panel to declare the existence of reverse domain name hijacking.
6. Discussion and Findings 6.1 Language of ProceedingThe Complaint has been filed in French, while the Response has been filed in English.
The Registration Agreement for the disputed domain name is in English.
According to paragraph 11(a) of the Rules, “Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
The Complainant has requested the language of the proceeding to be French because French is the language of the Complainant and the content of the website at the disputed domain name is in French.
The Respondent first has requested the Complaint to be translated into English and then has filed the Response in English.
According to paragraph 10(b) of the Rules, “In all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.”
The Panel decides that the language of the proceeding will be English, since the language of the Registration Agreement is English, there is not an agreement between the parties to change it and the reasons provided by the Complainant for the language of the proceeding to be French have to be considered as not applicable to the present case. In fact, the Respondent expressed disagreement and the language of the content of the website at the disputed domain name is French when viewed in France, since it consists of a parking page with pay-per-click links automatically generated, as it will be discussed further ahead.
6.2 Substantive IssuesParagraph 4(a) of the Policy lists three elements, which the Complainant must satisfy in order to succeed:
(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 finds that the Complainant is the owner of the trademark IRSN and that the disputed domain name is identical to the trademark IRSN.
It is well accepted that a generic Top-Level Domain (“gTLD”), in this case “.com”, is ignored when assessing the similarity between a trademark and a domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), section 1.11.
The Panel finds that the Complainant has therefore met its burden of proving that the disputed domain name is identical to the Complainant’s trademark, pursuant to the Policy, paragraph 4(a)(i).
B. Rights or Legitimate InterestsParagraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following circumstances, in particular but without limitation:
“(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
According to paragraph 4(a) of the Policy, the Complainant has the burden of proving the three elements of the Policy. However, satisfying the burden of proving a lack of the Respondent’s rights or legitimate interests in respect of the disputed domain name according to paragraph 4(a)(ii) of the Policy is potentially difficult, since proving a negative circumstance is more complicated than establishing a positive one.
As such, it is well accepted that it is sufficient for the Complainant to make a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name in order to shift the burden of production on the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1.
The Complainant in its Complaint, and as set out above, asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name since the Respondent is a company that resells domain names and it registered the disputed domain name in order to make a profit either from the pay-per-click links or by selling it to the Complainant or to a competitor of the Complainant for a consideration higher to the documented fees directly in relation to the disputed domain name.
The Respondent claims to have rights or legitimate interests in the disputed domain name because its business is buying and selling short, generic, otherwise appealing and inherently valuable domain names, and the disputed domain name is such a domain name. The Panel recognizes that the business of buying and selling domain names containing an acronym is not per se illegitimate under the Policy and that it can establish a right or legitimate interest in a disputed domain name. That does not mean, however, that a company conducting such a business will have rights or legitimate interests in every domain name it buys and sells: each case will have to be analyzed by considering the nature of the complainant’s trademark, the characteristics of the disputed domain name and the particular circumstances of its acquisition, and the specific respondent’s use of the disputed domain name (as to the latter, see section 2.10.2 of the WIPO Overview 3.0: “For a respondent to have rights or legitimate interests in a domain name comprising an acronym, the respondent’s evidence supporting its explanation for its registration (and any use) of the domain name should indicate a credible and legitimate intent which does not capitalize on the reputation and goodwill inherent in the complainant’s mark”).
The Respondent is using the disputed domain name in relation to a parking page with automatically generated pay-per-click links that, at least in France, may in some instances relate to the Complainant’s field of activity. Moreover, the disputed domain name is offered for sale at a price of USD 29,999. In the case of a four-letter (acronym) domain name, there may be a range of potential parties interested in its acquisition, which may include the Complainant. The Complainant has provided no evidence or arguments as to why it believes it is being targeted. Instead it merely focuses on the fact that it has not authorized the Respondent to use its mark (or to acquire the disputed domain name) and that there is a risk of user confusion. The Panel is of the opinion that buying for reselling a domain name that is identical to a trademark in which a third party has rights, cannot be considered a purpose that, of itself, gives rise to rights or legitimate interests in the domain name, even if the domain name is a four-letter acronym.
The Respondent has stated that the acronym “irsn” is used to identify many organizations, individuals and concepts, and that it is therefore entitled to buy the domain name corresponding to that acronym. While this fact alone does nothing to support a claim of the Respondent itself to have rights or legitimate interests in the disputed domain name, it does raise a question as to whether the Complainant was being targeted – which the Complainant has not proven.
In light of the Panel’s finding in relation to the third element below, it is not necessary for the Panel to decide whether the Respondent has rights to or legitimate interests in the disputed domain name.
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy provides that “for the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that [the respondent has] registered or has 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 the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) that [the respondent has] 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 [the respondent has] engaged in a pattern of such conduct; or
(iii) that [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) that 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.”
The Complainant claims that the Respondent registered the domain name in bad faith as the Complainant is a well-known government agency in France, that it was registered seven years after the Complainant’s trademark, that the Respondent has been using a privacy service, and that it seemed that the email used by the Respondent to register the disputed domain name had been also used to register other domain names involving third party trademarks.
The Respondent submits that the disputed domain name was not registered and is not used in bad faith, since the Respondent was not aware of the Complainant’s trademark at the time it registered the disputed domain name, nor was the disputed domain name registered with an intent to profit from or otherwise abuse the Complainant’s trademark right, but instead in order to sell it in the ordinary course of its legitimate business in good faith.
The Respondent claims that it was not aware of the Complainant’s trademark as it consists of a French government agency whose mandate does not extend to United States. The Panel acknowledges that the Complainant is a French government agency.
While a number of prior UDRP cases have explored screening obligations on domainers (which may indeed be appropriate in certain cases), the Panel is unable to apply that notion here given that the arguments presented by the Complainant do nothing to create even an inference that it was being targeted. The Panel also takes note here of section 3.2.2 of the WIPO Overview 3.0 which states that where the Complainant’s mark is not inherently distinctive and […] is otherwise inherently attractive as a domain name (e.g., it is a short combination of letters), if a respondent can credibly show that the complainant’s mark has a limited reputation and is not known or accessible in the respondent’s location, panels may be reluctant to infer that a respondent knew or should have known that its registration would be identical or confusingly similar to the complainant’s mark.
In this case, it appears on balance, that the Respondent, has demonstrated that it was not aware of the Complainant when it registered the disputed domain name, and that it acquired the domain name according to its 4-letter value rather by reference to the Complainant.
With regard to the other registrations of domain names including third party trademarks (which appear to be rather famous marks), the Complainant has not pointed out any notable features of the present case that would be evidence of any particular pattern of cybersquatting activities incorporating the disputed domain name. See Cloudfm Group Limited v. Barry Garner, MyMailer Ltd,WIPO Case No. D2021-3251.
In light of the Panel’s finding in relation to the bad faith registration, it is not necessary for the Panel to decide whether the Respondent is using the domain name in bad faith.
The Panel therefore finds the Complainant has not proved that the domain name was registered in bad faith and finds that paragraph 4(a)(iii) of the Policy has not been satisfied.
7. DecisionFor the foregoing reasons, the Complaint is denied.
Edoardo Fano
Sole Panelist
Date: March 14, 2022