ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Legrand France, Novateur Electrical & Digital Systems Private Limited v. Ram Kumar, 32AAHFL0553A1Z1 Case No. D2023-2210 1. The Parties The Complainants are Legrand France, France, (the "First Complainant") and Novateur Electrical & Digital Systems Private Limited, India (the "Second Complainant"), both represented by Inttl Advocare, India. The Respondent is Ram Kumar, 32AAHFL0553A1Z1, India. 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 May 22, 2023. On May 23, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 23, 2023, 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 (Anonymous/Registration Private Through Domains by Proxy LLC) and contact information in the Complaint. The Center sent an email communication to the Complainants on May 26, 2023, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amendment to the Complaint on May 30, 2023. The Center verified that the Complaint together with the amendment to 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 June 6, 2023. In accordance with the Rules, paragraph 5, the due date for Response was June 26, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 27, 2023. page 2 The Center appointed Assen Alexiev as the sole panelist in this matter on July 4, 2023. 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 Background The First Complainant is a global specialist in electrical and digital building infrastructures, having nearly 38,000 employees around the world. The Second Complainant is an Indian subsidiary of the First Complainant, and manufactures and distributes UPS systems, home power products, special power systems, energy storage systems, and power distribution systems. The First Complainant is the owner of the Indian trademark LEGRAND with registration no. 462276, registered on October 27, 1986 for goods in International Class 9 (the "LEGRAND trademark"). The First Complainant is also the owner of the domain names , registered on December 22, 1995, which resolves to its global website, and , registered on May 31, 2004, which resolves to its website for the Indian market. The disputed domain name was registered on August 17, 2022. At the time of filing of the Complaint, the Complainants put forward that the disputed domain name directed to a parked webpage and that the disputed domain name has been used in connection to a fraudulent scheme. 5. Parties' Contentions A. Complainants The Complainants submit that the disputed domain name is confusingly similar to their LEGRAND trademark, because it reproduces the trademark in its entirety with an addition of the dictionary word "career" which can be misunderstood by Internet users as denoting a website of the Complainants addressing career related queries. According to the Complainants, the Respondent has no rights or legitimate interests in respect of the disputed domain name. They maintain that they have adopted the distinctive LEGRAND trademark in 1904 and have used it extensively since then, as a result of which the trademark has achieved global fame long before the registration of the disputed domain name. The Complainants note that the Respondent has no business connection with them and has not received their consent to use the LEGRAND trademark as part of the disputed domain name. The Complainants state that the disputed domain name resolves to a parked webpage, and Internet users may believe that communications from email accounts at the disputed domain name originate from the Complainants. The Complainants claim in this regard that they have received a complaint from an aggrieved person claiming to have been led to believe that he had secured a job with the Complainants and had paid money in this regard. The Complainants contend that the disputed domain name was registered and is being used in bad faith. According to them, the disputed domain name was registered by the Respondent with the intention to falsely imply a nexus with the Complainants. The Complainants submit that the dictionary word "careers" was included in the disputed domain name to deceive the public into believing that it provides employment opportunities with the Complainants, and point out that the Respondent has actually used the disputed domain name to introduce itself as the Human Resources Director of the Complainants and has taken money from a person under the guise of an employment opportunity with the Complainants. B. Respondent The Respondent did not reply to the Complainants' contentions. page 3 6. Discussion and Findings 6.1. Procedural issue - Consolidation of the Complainants Under paragraph 10(e) of the Rules, a Panel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules. As discussed in section 4.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), a complaint may be brought by multiple complainants where (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion; and (ii) it would be equitable and procedurally efficient to permit the consolidation. In this proceeding, the Complaint has been submitted jointly by the two Complainants. They claim that they have a common interest in the LEGRAND trademark and describe a common grievance against the Respondent where it has engaged in common conduct that has affected their rights in a similar fashion. The Second Complainant is described as a subsidiary of the First Complainant. The Respondent has not expressed any views on the issue of consolidation. It appears to the Panel that it would be procedurally efficient and equitable for the Complainants to be consolidated. Taking the above into account, and on the basis of paragraph 10(e) of the Rules, the Panel allows the consolidation of the Complainants in this proceeding. A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant's trademark and the disputed domain name. WIPO Overview 3.0, section 1.7. Based on the available record, the Panel finds the Complainants have shown rights in respect of the LEGRAND trademark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1 The Panel finds that the LEGRAND trademark is recognizable within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to this trademark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. While the addition of other terms (here, "careers") may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the LEGRAND trademark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. Based on the available record, the Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of "proving a negative", requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to page 4 come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Having reviewed the record, the Panel finds the Complainants have established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainants' prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name. The Panel considers that the record of this case reflects that: - before any notice to the Respondent of the dispute, the Respondent did not use, nor has it made demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. Paragraph 4(c)(i) of the Policy, and WIPO Overview 3.0, section 2.2. - the Respondent (as an individual, business, or other organization) has not been commonly known by the disputed domain name. Paragraph 4(c)(ii) of the Policy, and WIPO Overview 3.0, section 2.3. - the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. Paragraph 4(c)(iii) of the Policy, and WIPO Overview 3.0, section 2.4. - the record contains no other factors demonstrating rights or legitimate interests of the Respondent in the disputed domain name. - Panels have held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1. The composition of the disputed domain name is likely to create an impression in Internet users that it is related to an official website of the Complainants offering employment opportunities with them. There is no active website at the disputed domain name. However, the Complainants submit a copy of a complaint received from a person who claims being the victim of a fraud committed through the use of an email account at the disputed domain name by a person claiming to be the Human Resources Director of the Complainants. The Respondent does not comment on this complaint and does not deny the statements contained therein. In view of the above, the Panel accepts as more likely than not that the Respondent has registered the disputed domain name to impersonate the Complainants and carry out fraudulent activities through the disputed domain name. Such activity cannot give rise to rights or legitimate interests in the disputed domain name. Based on the available record, the Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular but without limitation, that if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent's registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1. page 5 Panels have found that the non-use of a domain name (including a blank or "coming soon" page) would not prevent a finding of bad faith under the doctrine of passive holding. Having reviewed the record, the Panel finds the non-use of the disputed domain name does not prevent a finding of bad faith in the circumstances of this proceeding. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant's mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent's concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put. WIPO Overview 3.0, section 3.3. Having reviewed the record, the Panel notes the distinctiveness or reputation of the Complainant's trademark, and the composition of the disputed domain name, and finds that in the circumstances of this case the passive holding of the disputed domain name does not prevent a finding of bad faith under the Policy. Panels have held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) constitutes bad faith. WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel finds the Respondent's registration and use of the disputed domain name constitutes bad faith under the Policy. As discussed in the section on rights and legitimate interests, the Complainants claim and submit evidence for the use of an email account at the disputed domain name for fraudulent activities through impersonation of the Complainants. Such use would be facilitated by the composition of the disputed domain name which creates an appearance of an official website of the Complainants for recruitment of new employees. These circumstances, coupled with the lack of a Response and an explanation for the choice of the disputed domain name by the Respondent and for its plans how to use it, lead the Panel to the conclusion that the disputed domain name is likely to have been registered targeting the Complainants with an intent for its use for their impersonation for fraudulent purposes. Such activity supports a finding that the disputed domain name was registered and is being used in bad faith. Based on the available record, the Panel therefore finds the third element of the Policy has been established. 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 First Complainant, Legrand France. /Assen Alexiev/ Assen Alexiev Sole Panelist Date: July 18, 2023
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