The Complainant is Dalkia, France, represented by IP Twins, France.
The Respondent is john lamba, Inter Data Systems GmbH, Germany.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 29, 2021. On December 30, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 31, 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 January 4, 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 6, 2022.
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 January 25, 2022. In accordance with the Rules, paragraph 5, the due date for Response was February 14, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 15, 2022.
The Center appointed Piotr Nowaczyk as the sole panelist in this matter on February 25, 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 BackgroundDalkia, the Complainant in the present proceedings, is a part of EDF Group. The Complainant offers customers expertise in developing, building, and managing energy solutions for cities and companies. It is present in several countries including France, the United States of America, the Russian Federation, Poland, and the United Kingdom.
Dalkia Air Solutions is a subsidiary of the Complainant which specializes in solutions for reducing energy consumption related to pressurized air in production sites.
The Complainant is the owner of numerous DALKIA and DALKIA AIR SOLUTIONS trademark registrations, including:
- French trademark registration No. 4493346, DALKIA AIR SOLUTIONS, registered on October 22, 2018;
- French trademark registration No. 98717437, DALKIA, registered on February 11, 1998;
- International trademark registration No. 700874, DALKIA, registered on June 19, 1998.
The Complainant also owns numerous domain names incorporating its DALKIA and DALKIA AIR SOLUTIONS trademarks, including the domain names
The Domain Name was registered on July 2, 2021.
At the time of drafting the Complaint, the Domain Name redirected either to an error page or a waiting page. As of the date of this Decision, the Domain Name resolves to an inactive website.
5. Parties’ Contentions A. ComplainantThe Complainant requests that the Domain Name be transferred to the Complainant. According to the Complainant, each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case.
First, the Complainant submits that the Domain Name is either identical or confusingly similar to the trademark registrations of the Complainant.
Second, the Complainant argues that the Respondent has neither rights nor legitimate interests in the Domain Name.
Third, the Complainant submits that the Domain Name was registered and is being used in bad faith.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsParagraph 4(a) of the Policy places a burden on the Complainant to prove the presence of three separate elements, which can be summarized as follows:
(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 the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The requested remedy may only be granted if the above criteria are met.
At the outset, the Panel notes that the applicable standard of proof in UDRP cases is the “balance of probabilities” or “preponderance of the evidence”. See section 4.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
A. Identical or Confusingly SimilarThe first element that the Complainant must establish is that the Domain Name is identical or confusingly similar to the Complainant’s trademark rights.
The Complainant holds several valid DALKIA and DALKIA AIR SOLUTIONS trademark registrations.
The Domain Name incorporates the Complainant’s DALKIA and DALKIA AIR SOLUTIONS trademarks in their entirety. As numerous UDRP panels have held, incorporating a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to a registered trademark (see PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS),WIPO Case No. D2003-0696).
The generic Top-Level Domain (“gTLD”) “.xyz” in the Domain Name is viewed as a standard registration requirement and as such is typically disregarded under the first element. See WIPO Overview 3.0, section 1.11.1.
Given the above, the Panel finds that the Domain Name is identical or confusingly similar to the Complainant’s trademarks. Thus, the Complainant has proved the requirements under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsThe second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the Domain Name.
A respondent may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
(a) that it has made 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 prior to the dispute; or
(b) that it is commonly known by the domain name, even if it has not acquired any trademark rights; or
(c) that it 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 trademark.
Although given the opportunity, the Respondent has not submitted any evidence indicating that any of the circumstances foreseen in paragraph 4(c) of the Policy are present in this case.
On the contrary, it results from the evidence in the record that the Complainant holds DALKIA and DALKIA AIR SOLUTIONS trademark registrations, which predate the Respondent’s registration of the Domain Name. There is no evidence in the case that the Complainant has licensed or otherwise permitted the Respondent to use the DALKIA or DALKIA AIR SOLUTIONS trademarks or to register the Domain Name incorporating any of these trademarks. There is also no evidence to suggest that the Respondent has been commonly known by the Domain Name.
Moreover, it does not result from the evidence in the record that the Respondent is making a legitimate, noncommercial or fair use of the Domain Name without intent for commercial gain.
The Panel also finds that the Domain Name carries a high risk of implied affiliation with the Complainant. See WIPO Overview 3.0, section 2.5.1.
Thus, the Complainant has proved the requirements under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithThe third requirement the Complainant must prove is that the Domain Name has been registered and is being used in bad faith.
Bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark. See WIPO Overview 3.0, section 3.1.
Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include without limitation:
(i) circumstances indicating the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the domain name was registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, provided it is a pattern of such conduct; or
(iii) circumstances indicating that the domain name was registered primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the domain name has intentionally been used in an attempt to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with a trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on a website or location.
As indicated above, the Complainant’s rights in the DALKIA and DALKIA AIR SOLUTIONS trademarks predate the registration of the Domain Name, and are wholly incorporated in the Domain Name. It has been proven to the Panel’s satisfaction that the Complainant’s DALKIA and DALKIA AIR SOLUTIONS trademarks are well-known and unique to the Complainant. Thus, the Respondent in all likelihood registered the Domain Name in bad faith.
Moreover, the Domain Name is being used in bad faith by the Respondent. As previously noted, the Domain Name resolves to an inactive website. In the overall circumstances of this case, the Panel finds that the Respondent’s passive holding of the Domain Name supports the finding of bad faith. As numerous UDRP panels have held, passive holding, under the totality of circumstances of the case, can constitute a bad faith use under the Policy. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 and Novo Nordisk A/S v. CDMS Invest,WIPO Case No. D2012-0676. In this regard, the Panel notes the failure of the Respondent to provide any evidence of actual or contemplated good faith use and the implausibility of any good faith use to which the Domain Name, which is identical to the Complainant’s DALKIA AIR SOLUTIONS trademark, may be put that would not take unfair advantage of the Complainant’s trademarks.
For the reasons discussed above, the Panel finds that the Complainant has proved the requirements under 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 Domain Name
Piotr Nowaczyk
Sole Panelist
Date: March 2, 2022