ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Pluxee International v. Carolina Rodrigues, Fundacion Comercio Electronico Case No. D2024-2479 1. The Parties The Complainant is Pluxee International, France, represented by Areopage, France. The Respondent is Carolina Rodrigues, Fundacion Comercio Electronico, Panama. 2. The Domain Name and Registrar The disputed domain name
(the “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 June 18, 2024. On June 18, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 18, 2024, 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 (Domains By Proxy, LLC, DomainsByProxy.com) and contact information in the Complaint. The Center sent an email communication to the Complainant June 24, 2024, 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 June 24, 2024. 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 June 27, 2024. In accordance with the Rules, paragraph 5, the due date for Response was July 17, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 24, 2024. The Center appointed Gregor Vos as the sole panelist in this matter on August 11, 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 is a spin-off of the company Sodexo that is one of the largest companies worldwide in the field of inter alia foodservices. The Complainant is listed on Euronext Paris in France and is active in the field of employee benefits in 31 countries. The Complainant is the owner of inter alia the following trademark registrations (hereinafter referred to as: the “Trademarks”): - French Trade Mark registration No. 4905284 for PLUXEE registered on October 14, 2022; and - International Trade Mark registration No. 1706936 for PLUXEE registered on November 2, 2022, with designation of inter alia Germany, India and the United States of America. The Domain Name was registered on June 14, 2024. The Domain Name resolves to a pay-per-click (“PPC”) website. 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 Domain Name. Notably, the Complainant contends that the Domain Name is identical or confusingly similar to the trademarks of the Complainant, the Respondent has no rights or legitimate interests in the Domain Name, and the Domain Name has been registered and is being used in bad faith. Firstly, according to the Complainant, the Domain Name is confusingly similar to its trademarks. The Domain Name incorporates the Trademarks in their entirety with the mere addition of the generic Top-Level Domain (“gTLD”) “.com” and the element “grou”, which is a misspelled version of the word “group” and which does not prevent a likelihood of confusion. Secondly, according to the Complainant, the Respondent has no rights or legitimate interests in the Domain Name. The Respondent has never received a license or any other form of authorization from the Complainant to use the Trademarks, has no prior rights to the Domain Name and is not commonly known by the Domain Name. Also, at the time of filing the Complaint the Domain Name resolved to a website on which PPC links were displayed, which does not constitute legitimate commercial or non-commercial use of the Domain Name. Finally, according to the Complainant, the Respondent has registered and is using the Domain Name in bad faith. The Respondent is using the Domain Name for commercial gain by redirecting Internet users to a webpage on which PPC links are shown. Further, the Respondent has been involved in more than 460 domain name disputes as a Respondent, which illustrates a pattern of registering domain names in which the trademarks of third parties are included. B. Respondent The Respondent did not reply to the Complainant’s contentions.
page 3 6. Discussion and Findings For the Complainant to succeed, it must prove, within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that: i. the Domain Name is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights; ii. the Respondent has no rights or legitimate interests in respect of the Domain Name; and iii. the Domain Name has been registered and is being used in bad faith. Only if all three elements have been fulfilled, the Panel is able to grant the remedies remedy requested by the Complainant. The Panel will deal with each of the requirements in turn. 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 Trademarks and the 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 entirety of the Complainant’s Trademark is reproduced within the Domain Name. Accordingly, the Domain Name is confusingly similar to the Trademarks for the purposes of the Policy. WIPO Overview 3.0, section 1.7. Although the addition of other terms here, “grou” 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 Domain Name and the Trademarks 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 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 Domain Name such as those enumerated in the Policy or otherwise.
page 4 UDRP panels have previously found that the use of a domain name to resolve to a parked page comprising of PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the Complainant’s mark. WIPO Overview 3.0, section 2.9. Moreover, the Panel finds that the composition of the disputed domain name (the addition of the element “grou” after the Complainant’s trademark) carries a risk of implied affiliation with the Complainant. WIPO Overview 3.0, section 2.5.1. 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. In the present case, the Panel notes that the Respondent lacks any rights to or legitimate interests in the Domain Name and finds that the Respondent is taking unfair advantage of the Domain Name by diverting Internet users to a website that includes PPC links of a commercial nature. Therefore, the Panel finds from the present circumstances that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s Trademark as to the source, sponsorship, affiliation, or endorsement (see, e.g., “Dr. Martens” International Trading GmbH / “Dr. Maertens” Marketing GmbH v. Joan Mitchell, WIPO Case No. D2018-0226). 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. In particular, the Panel finds that the Complainant has documented that the Respondent has engaged in a clear pattern of registering domain names corresponding to trademarks held by third parties, which further illustrates a pattern of bad-faith registration on the part of the Respondent (see Mastercard Prepaid Management Services Limited v. Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2022-1176). The Panel finds that the Complainant has established the third element of the Policy. 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 Domain Name be transferred to the Complainant. /Gregor Vos/ Gregor Vos Sole Panelist Date: August 25, 2024
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