ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Geodis v. Fundacion Privacy Services LTD Case No. D2023-4977 1. The Parties The Complainant is Geodis, France, represented by SafeBrands, France. The Respondent is Fundacion Privacy Services LTD, Panama. 2. The Domain Name and Registrar The disputed domain name is registered with Media Elite Holdings Limited (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 29, 2023. On November 29, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 4, 2023, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that 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 December 20, 2023. In accordance with the Rules, paragraph 5, the due date for Response was January 9, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 16, 2024. The Center appointed Alissia Shchichka as the sole panelist in this matter on January 18, 2024. 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, established in 1954, operates as a significant participant in the transportation and logistics industry in France, Europe, and globally. With a direct presence in 67 countries and a comprehensive network spanning over 160 countries, it provides logistics solutions for its clients’ supply chain needs worldwide. The Complainant has evidenced to be the registered owner of numerous trademark registrations, including, but not limited, to the following: - International trademark registration No. 660429, registered on September 02, 1996, for the word mark GEODIS, in classes 12 and 39; - International trademark registration No. 660430, registered on September 02, 1996, for the combined mark GEODIS, in classes 12 and 39; and - French trademark registration No. 95591037, registered on March 15, 1996, for the word mark GEODIS, in classes 12 and 39. The Complainant is also the owner of the domain name , registered on May 23, 1997. The aforementioned trademarks and domain name were registered before the disputed domain name, which was registered on September 6, 2022. The disputed domain name currently resolves to a parking page with pay-per-click (“PPC”) links to third-party websites unaffiliated with the Complainant. Additionally, the Complainant has provided evidence indicating that the disputed domain name has been used to send emails. Furthermore, the disputed domain name is offered for sale. The Respondent, according to the disclosed WhoIs information for the disputed domain name, is located in Panama. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. Notably, the Complainant emphasizes that the Complainant’s reputation is globally recognized, and established over numerous years. According to the Complainant, the disputed domain name is confusingly similar to the Complainant’s trademark GEODIS as it incorporates the entire trademark. The addition of the generic terms “work” and “for” to the GEODIS trademark does not alter the overall impression that the disputed domain name is associated with the Complainant’s trademark or prevent the confusing similarity between the disputed domain name and the Complainant’s trademark. In respect of the generic Top-Level Domain (“gTLD”) “.com”, which forms part of the disputed domain name, the Complainant requests that the Panel disregard it under the first element as it is a standard registration requirement. The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name since (1) the Complainant has never licensed, contracted, or otherwise permitted the Respondent to apply to register the disputed domain name; (2) the Respondent is not commonly known by the disputed domain name, and has not used or prepared to use the disputed domain name in connection with a bona fide offering of goods or services; and (3) the Respondent has misused the disputed domain name by sending fraudulent emails, offering the domain name for sale and using it for PPC parking page.
page 3 Finally, the Complainant argues that the Respondent has registered and is using the disputed domain name in bad faith for the following reasons: (1) the Complainant’s trademarks significantly predate the registration of the disputed domain name, and the Respondent knew about the Complainant’s trademark; (2) the Complainant’s GEODIS trademark is well-known and widely-used; (3) the Respondent’s use of the disputed domain name in connection with the PPC parking website, as well as listing of the domain name for sale at a price far exceeding the personal expenses related to its registration, clearly demonstrates that the Respondent knew and targeted the Complainant’s prior registered trademark to generate traffic to the disputed domain name and to obtain financial benefit by taking advantage of the Complainant’s trademark reputation. Finally, (4) the prior use of the domain name in connection with email phishing schemes is considered illegal activity, and such use cannot be considered a bona fide offering of goods or services. Therefore, the Complainant alleges that the registration and use of the disputed domain name was, and currently is, in bad faith, contrary to the Policy and Rules. The Complainant requests that the disputed domain name be transferred to the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, the Complainant carries the burden of proving: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the disputed domain name has been registered and is being used in bad faith. The Respondent’s default in the case at hand does not automatically result in a decision in favor of the Complainant, however, paragraph 5(f) of the Rules provides that if the Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint. Further, according to paragraph 14(b) of the Rules, the Panel may draw such inferences from the Respondent’s failure to submit a response as it considers appropriate. 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 of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7. The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The Panel finds the mark is recognizable within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.
page 4 Although the addition of other terms, here, “work” and “for”, may bear on assessment of the second and third elements, the Panel finds the addition of such terms does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. 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. Although 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 difficult 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 (although the burden of proof always remains on the complainant). If the respondent fails to 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 available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Complainant has confirmed that the Respondent is not affiliated with the Complainant, or otherwise authorized or licensed to use the GEODIS trademarks or to seek registration of any domain name incorporating the trademarks. The Respondent is also not known to be associated with the GEODIS trademarks, and there is no evidence showing that the Respondent has been commonly known by the disputed domain name. WIPO Overview 3.0, section 2.3. Based on the available record, the Panel finds that 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. WIPO Overview 3.0, section 2.4. Indeed, the Respondent so far obviously has neither used the disputed domain name for a bona fide offering of goods or services nor for a legitimate noncommercial or fair purpose, but merely has offered it for online sale and for a parking page offering PPC links. Given that the disputed domain name consists of the Complainant’s fanciful GEODIS trademark combined with descriptive terms “work” and “for”, which could refer to a recruitment website coming from/affiliated to the Complainant, such use of the disputed domain name does not represent a bona fide offering because it capitalizes on the reputation and goodwill of the Complainant’s trademark. WIPO Overview 3.0., section 2.9. The Panel also observed that the Respondent used the disputed domain name to send emails associated with it. The Panel has limited information available to assess the potential fraudulent content of these emails. However, considering the subject of the email, the fact that it was sent to one of the Complainant’s clients, and in the absence of any observations from the Respondent, it is likely that these emails were used in connection with a phishing pattern scheme. The use of a domain name for illegal activity e.g., phishing, can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13 Finally, the Panel also notes that the composition of the disputed domain name, carries a risk of implied affiliation or suggests sponsorship and/or endorsement by the Complainant. WIPO Overview 3.0, section 2.5.1.
page 5 Accordingly, the Complainant has provided evidence supporting its prima facie claim that the Respondent lacks any rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. Therefore, the Panel concludes that the Respondent does not have any rights or legitimate interests in the disputed domain name and the Complainant has met its burden under paragraph 4(a)(ii) of the Policy. The Panel finds that the Complainant has established the second element of the Policy. 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. On the issue of registration, the Panel notes that the Complainant’s GEODIS trademarks substantially predate the Respondent’s registration of the disputed domain name. The disputed domain name wholly incorporates the GEODIS trademark. The Respondent registered the disputed domain name in 2022, almost thirty years after the Complainant registered its trademarks. Moreover, the Respondent’s knowledge of the Complainant and its trademarks can be readily inferred from the Respondent’s use of the disputed domain name for sending emails to the Complainant’s clients, indicating that the Respondent was aware of the business associated with the Complainant’s GEODIS trademarks. This evidence gives the Panel reason to find that the Respondent knew or should have known of the Complainant’s mark at the time he registered the disputed domain name. WIPO Overview 3.0, section 3.2.2 Further, the mere registration of the disputed domain name that is confusingly similar to the Complainant’s widely known trademarks by the Respondent, who is unaffiliated with the Complainant, can by itself create a presumption of bad faith. WIPO Overview 3.0, section 3.1.4. On the issue of use, the disputed domain name redirects visitors to a standard PPC website displaying a variety of rotating web links leading to third-party active websites. These websites are not affiliated with the Complainant but are related to the Complainant’s business. This is evidently done with the purpose of generating PPC revenues. The absence of any evidence of mitigating factors, such as the Respondent’s efforts to avoid links targeting the Complainant’s mark, clearly indicates that the Respondent intentionally sought to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s GEODIS trademark regarding the source, sponsorship, affiliation, or endorsement of the website. Consequently, this constitutes a bad-faith use of the disputed domain name. WIPO Overview 3.0, section, 3.5 In this context, the Panel attaches significance to the fact that the Respondent specifically sent an email to one of the Complainant’s clients. This particular action provides insight into the Respondent’s behavior, strengthening the likelihood of involvement in phishing activities. Panels have held that the use of a domain name for illegal activity here, phishing, 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. Such circumstances are evidence of registration and use of the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy. The Panel finds that the Complainant has established the third element of the Policy.
page 6 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. /Alissia Shchichka/ Alissia Shchichka Sole Panelist Date: February 2, 2024
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