ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Covea v. Responsable Finance Case No. D2023-2984 1. The Parties The Complainant is Covea, France, represented by Laurent & Charras, France. The Respondent is Responsable Finance, France 2. The Domain Name and Registrar The disputed domain name (the "Disputed Domain Name") is registered with Wild West Domains, LLC (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 12, 2023. On July 12, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 13, 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 (Domains By Proxy, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on July 27, 2023, 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 July 28, 2023. 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 1, 2023. In accordance with the Rules, paragraph 5, the due date for Response was August 21, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 28, 2023. The Center appointed Christiane Féral-Schuhl as the sole panelist in this matter on September 5, 2023. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and page 2 Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background The Complainant is a well-known French company in the field of insurance and has provided its services for more than twenty years. The Complainant is the owner of sixty registered trademarks (hereinafter the "COVEA Trademarks") including the following: - the European Union wordmark COVEA No. 002612521, registered on January 29, 2004, and duly renewed for products and services in classes 9, 35, 36, 37, 38, 39, 41, 42, 44 and 45; - the European Union wordmark COVEA No. 002018729, registered on January 24, 2002, and duly renewed for products and services in class 36; - the European Union figurative mark 11 VI. Factual and Legal Grounds (Policy, Paragraphs 4(a), (b), (c); Rules, Paragraph 3) [12.] This Complaint is based on the following grounds: A. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (Policy, Paragraph 4(a)(i); Rules, Paragraphs 3(b)(viii), (b)(ix)(1)) The Complainant owns among others the following trademarks, all prior to the registration date of the domain names at issue: : European union trademark registration COVEA No. 002612521, filed on March 11, 2022 and registered on January 29, 2004 in classes 9, 35, 36, 37, 38, 39, 41, 42, 44 and 45 duly renewed; : European union trademark registration COVEA No. 002018729, filed on December 26, 2000 and registered on January 24, 2002 in class 36 duly renewed; : European union trademark registration No. 005775747, filed on March 21, 2007 and registered on January 10, 2008 in classes 35, 36 and 41 duly renewed; : French trademark registration COVEA No. 3148945 filed on February 20, 2002 and registered on July 26, 2002 in classes 9, 35, 36, 37, 38, 41, 42, 44 and 45 duly renewed; : French trademark registration COVEA No. 4693413 filed on October 20, 2020 and registered on February 26, 2021 in class 42 duly renewed; : French trademark registration COVEA No. 99830034 filed on December 15, 1999 and registered on May 26, 2000 in class 36 duly renewed; No.005775747 registered on January 10, 2008, and duly renewed for products and services in classes 35, 36 and 41; - the French wordmark COVEA No. 3148945 registered on February 20, 2002, and duly renewed for products and services in classes 9, 35, 36, 37, 38, 41, 42, 44 and 45; - the French wordmark COVEA No. 4693413 registered on October 20, 2020, for products and services in class 42; and - the French wordmark COVEA No. 99830034 registered on December 15, 1999, and duly renewed for products and services in class 36. The Disputed Domain Name was registered on February 6, 2023, and resolves to a parking page containing several links to third-party websites for services similar to those of the Complainant. 5. Parties' Contentions A. Complainant First, the Complainant asserts that the Disputed Domain Name is identical or confusingly similar to its prior COVEA Trademarks since it reproduces the COVEA Trademarks in their entirety. The Complainant considers that the mere addition of the word "patrimoine" and of a hyphen does not prevent a finding of confusing similarity since the COVEA Trademarks are highly distinctive and are the distinctive element of the Disputed Domain Name. Then, the Complainant submits that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant explains that the Disputed Domain Name resolves to a parking page displaying links to third-party websites. For the Complainant, this is evidence that the purpose of the registration of the Disputed Domain Name was to mislead Internet users into thinking that they will be directed to a website affiliated with the Complainant. Finally, the Complainant stands that the Disputed Domain Name was registered and is being used in bad faith. The Complainant demonstrates that the registration of its COVEA Trademarks predates by several decades the registration of the Disputed Domain Name. The Complainant then submits that despite its efforts it was not able to contact the Respondent due to a lack of contact information in the parking page linked to the Disputed Domain Name. The Complainant highlights that there is no exigence of the actual page 3 existence of the Respondent since the contact details provided to the Registrar do not refer to a name but only to a job position. The Complainant then concludes by explaining that it is a well-known company in its field and that the purpose of the registration of the disputed domain name reflects the obvious bad faith of the Respondent whose only goal is to mislead internet users. B. Respondent The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy provides that the Complainant shall prove the following three elements: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (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 According to the Policy, paragraph 4(a)(i), the Complainant shall prove that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. First of all, the Panel finds that the Complainant has provided evidence that it has rights in the COVEA Trademarks. Then, the Panel wishes to remind that the first element of the UDRP serves essentially 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. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name. In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of the UDRP (see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDPR Questions, Third Edition ("WIPO Overview 3.0")). Regarding the Disputed Domain Name, the Panel finds that it is composed of: - the COVEA Trademarks; - a hyphen; - the French word "patrimoine" which means "estate"; and - the generic Top-Level Domain ".com". The applicable gTLD in a domain name is viewed as a standard registration requirement and as such is disregarded for the purpose of determining whether a domain name is identical or confusingly similar to a trademark. According to prior UDRP decisions, it is sufficient that the disputed domain name incorporates the entirety of a trademark, in order to consider the domain name as confusingly similar to that mark for purposes of UDRP standing. The mere addition of descriptive or geographical terms to a mark does not prevent a finding of confusing similarity (see section 1.8 of the WIPO Overview 3.0). page 4 Regarding the Disputed Domain Name, the Panel finds that it incorporates the COVEA Trademarks in their entirety and considers that the insertion of the word "patrimoine" and of a hyphen after the COVEA Trademarks do not prevent a finding of confusing similarity. Therefore, the Panel finds that these elements do not prevent the COVEA Trademarks to be recognizable in the Disputed Domain Name. Therefore, the Panel holds that the Disputed Domain Name is confusingly similar to the Complainant's trademark and that the Complainant has established the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests According to the Policy, paragraph 4(a)(ii), the Complainant shall demonstrate that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Policy, paragraph 4(c), outlines circumstances that if found by the Panel to be proved shall demonstrate the Respondent's rights or legitimate interests in the Disputed Domain Name. These circumstances are: - before any notice 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 - the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or - the respondent 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 or service mark at issue. According to prior UDRP decisions, it is sufficient that the complainant shows prima facie that the respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production to the respondent (see Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455). Indeed, 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 prima facie 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 come forward with such relevant evidence, the complainant is deemed to have satisfied the second element (see section 2.1 of the WIPO Overview 3.0). According to the Panel, the Complainant has shown prima facie that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. Indeed, it seems that the Complainant has not licensed or otherwise authorized the Respondent to use the COVEA Trademarks or to apply for any domain name incorporating the said trademarks. Moreover, the Panel finds that there is no evidence that the Respondent is commonly known by the Disputed Domain Name or that the Respondent has the intent to use the Disputed Domain Name in connection with a bona fide offering of goods or services. On the contrary, the Disputed Domain Name resolves to a parking page displaying hyperlinks to third-party websites offering services similar to those of the Complainant. In any case, the Respondent did not reply to the Complainant's contentions, and consequently, did not rebut the Complainant's prima facie case. page 5 Therefore, according to the Policy, paragraphs 4(a)(ii) and 4(c), the Panel considers that the Complainant has established that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name. C. Registered and Used in Bad Faith According to the Policy, paragraph 4(a)(iii), the Complainant shall prove that the Disputed Domain Name has been registered and is being used in bad faith. Thus, paragraph 4(b) provides that any one of the following non-exclusive scenarios constitutes evidence of a respondent's bad faith: (i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the complainant who is the owner of the trademark 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 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) 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 its 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. According to prior UDRP decisions, particular circumstances that panels may take into account in assessing whether the respondent's registration of a domain name is in bad faith include: (i) the nature of the domain name (e.g., a typo of a widely known mark, or a domain name incorporating the complainant's mark plus an additional term such as a descriptive or geographic term, or one that corresponds to the complainant's area of activity or natural zone of expansion), [.], (vi) a clear absence of rights or legitimate interests coupled with no credible explanation for the respondent's choice of the domain name (see section 3.2.1 of the WIPO Overview 3.0). First of all, the Panel finds that it is established that the COVEA Trademarks were registered and used before the registration of the Disputed Domain Name. Therefore, there is a presumption of bad faith registration of the Disputed Domain Name given that it reproduces the Complainant's COVEA Trademarks in their entirety. Moreover, the Panel points out that the Disputed Domain Name resolves to a parking page displaying hyperlinks to third-party websites offering services similar to those of the Complainant. Accordingly, the Panel finds that the Complainant has provided evidence that the Disputed Domain Name was registered and used by the Respondent in an attempt to pass off as the Complainant or someone affiliated or licensed by the Complainant to trick them into thinking the hyperlinks redirects to third parties affiliated with the Complainant. Finally, the Respondent has not provided any formal response to the Complainant's contentions. Considering all of the above, it is not possible to conceive any plausible actual or contemplated good faith registration and use of the Disputed Domain Name by the Respondent. page 6 Therefore, in view of all the circumstances of this case, the Panel holds that the Respondent has registered and is using the Disputed Domain Name in bad faith according to the Policy, paragraphs 4(a)(iii) and 4(b). 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. /Christiane Féral-Schuhl/ Christiane Féral-Schuhl Sole Panelist Date: Septembre 19, 2023
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