ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION EURAZEO v. Registration Private, Domains By Proxy, LLC / Richard lhomer Case No. D2022-2915 1. The Parties The Complainant is EURAZEO, France, represented by IP Twins, France. The Respondent is Registration Private, Domains By Proxy, LLC, United States of America / Richard Lhomer, France. 2. The Domain Name and Registrar The disputed domain name is registered with GoDaddy.com, LLC (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 8, 2022. On August 8, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 9, 2022, 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 August 10, 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 August 16, 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 August 17, 2022. In accordance with the Rules, paragraph 5, the due date for Response was September 6, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 14, 2022. The Center appointed Christophe Caron as the sole panelist in this matter on September 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. page 2 4. Factual Background The Complainant is EURAZEO, a global investment group. The Complainant owns the International verbal trademark EURAZEO No.759748 registered on April 25, 2001, and duly renewed. The Complainant also owns the domain name registered on November 13, 2000. The disputed domain name was registered on May 26, 2022. At the time of the filing of the Complaint, the disputed domain name resolved to a website with pay-per-click ("PPC") links. At the time of this decision, the disputed domain name appears to be inactive. 5. Parties' Contentions A. Complainant The Complainant makes the following contentions. Identical or Confusingly Similar First, the Complainant contends that the disputed domain name is highly similar to its earlier trademarks since it reproduces its trademark EURAZEO together with the term "groupe". Then, the Complainant states that the addition of a generic term to a well-known trademark in a domain name does nothing to diminish the likelihood of confusion arising from that domain name and that the incorporation of a well-known trademark in its entirety may be sufficient to establish that the domain name is identical or confusingly similar to the trademark. For the above-mentioned reasons, the Complainant states that the disputed domain name is identical or highly similar to its trademarks. Rights or Legitimate Interests First, the Complainant asserts that the Respondent has acquired no trademark in the name EURAZEO which could have granted the Respondent rights in the disputed domain name. Secondly, the Complainant states that the Respondent reproduces its earlier registered trademarks in the disputed domain name without any license or authorization, which is a strong evidence of the lack of rights or legitimate interest. Thirdly, the Complainant contends that the Respondent has not, before the original filing of the Complaint, used or made preparations to use the disputed domain name in relation to a bona fide offering of goods or services since the disputed domain name resolves to a website with PPC links. Fourthly, the Complainant submits that it has made a prima facie case of the Respondent's lack of right or legitimate interest in the disputed domain name, in light with the Policy. Considering these elements, the Complainant contends that the Respondent has no rights or legitimate interest in respect of the disputed domain name. Registration and Use in Bad Faith First, the Complainant states that the Respondent necessarily had the Complainant's earlier trademarks in mind when registering the disputed domain name and that the Respondent's choice of the disputed domain page 3 name cannot have been accidental and must have been influenced by the fame of the Complainant and its earlier trademarks. Secondly, the Complainant submits that it is highly likely that the Respondent chose the domain name because of its identity with or similarity to a trademark in which the Complainant has rights and legitimate interest. Thirdly, the Complainant states that a quick trademark search would have revealed to the Respondent the existence of the Complainant and its trademarks and that the Respondent's failure to do so is a contributory factor to its bad faith. Fourthly, the Complainant contends that the disputed domain name resolves to a website with PPC links and that the use of such links cannot constitute a good faith use of the disputed domain name by the Respondent. In addition, the Complainant states that the disputed domain name appears to be linked to an email service and creates confusion in the mind of the Internet user of average attention, who will likely believe that emails originating from the disputed domain name are either originated from, affiliated with or endorsed by the Complainant. Moreover, the Complainant states that the Respondent's efforts to conceal its identity through the use of a WhoIs proxy service as well as of the use of fanciful contact details can be construed as further evidence that the disputed domain name was registered in bad faith. For the above-mentioned reasons, the Complainant concludes that the disputed domain name was registered and is being used in bad faith by the Respondent. B. Respondent The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely: (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. A. Identical or Confusingly Similar Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to trademarks in which the Complainant has rights. The Complainant is the owner of the International verbal trademark EURAZEO No.759748 (see Section 4 above). The trademark EURAZEO is entirely reproduced in the disputed domain name . The addition of ".com" in the disputed domain name does not prevent confusing similarity. This is also the case for the addition of the term "groupe" (French term which means "group" in English). page 4 The Panel therefore finds that the disputed domain name is confusingly similar to the registered trademark EURAZEO in which the Complainant has rights. Thus, the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name. This Panel is satisfied that the Respondent has no relationship with the Complainant and that this latter has not granted any rights of use of its trademarks EURAZEO to the Respondent. Furthermore, the Respondent is not currently using the disputed domain name in connection with a bona fide offering of goods or services since the disputed domain name resolved to a website with PPC links and currently appears to be inactive. Hence, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and that the requirement of paragraph 4(a)(ii) of the Policy is also satisfied. C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent has registered and is using the disputed domain name in bad faith. Regarding the distinctive nature of the Complainant's EURAZEO trademark and its prior registration, the Panel finds that the Respondent knew or should have known the Complainant's EURAZEO trademark at the time of registering the disputed domain name. Indeed, a quick trademark search would have revealed to the Respondent the existence of the Complainant and its trademarks. Then, the fact that the disputed domain name used to resolve to a website with PPC links supports a finding of bad faith. Moreover, the fact that the Respondent is not currently using the disputed domain name supports the finding of bad faith further. UDRP panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding (see section 3.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, ("WIPO Overview 3.0")). The Panel finds so under the circumstances of this case, particularly considering the distinctiveness of the Complainant's prior registered trademark EURAZEO. For all these reasons, the Panel finds that the disputed domain name incorporating the term "eurazeo" which has no meaning, and is confusingly similar to the Complainant's trademark EURAZEO has been registered and is being used in bad faith. The Panel therefore finds that paragraph 4(a)(iii) of the Policy is also satisfied. 7. Decision For 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 be transferred to the Complainant. /Christophe Caron/ Christophe Caron Sole Panelist Date: September 28, 2022
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