ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION ARSENE v. stephane bon Case No. D2024-2967 1. The Parties The Complainant is ARSENE, France, represented by CLEACH AVOCATS, France. The Respondent is stephane bon, 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 July 22, 2024. On July 22, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 22, 2024, the Registrar transmitted by email to the Center its verification disclosing registrant and contact information for the disputed domain name which differed from the named Respondent (Registration Private, Domains By Proxy, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on August 10, 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 August 12, 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 August 15, 2024. In accordance with the Rules, paragraph 5, the due date for Response was September 4, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 11, 2024.
page 2 The Center appointed Vincent Denoyelle as the sole panelist in this matter on September 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. 4. Factual Background The Complainant is a French law firm headquartered in Paris with more than one hundred lawyers specialized in tax and customs and is ranked in its specific area of expertise as one of the leading law firms in France, including by international law firm directories. The Complainant has also founded an international network of firms specialized in tax law in 48 countries. The Complainant is the exclusive licensee, in France, of the following ARSENE trade marks registered by Société Civile PHOENIX; - French Trade Mark ARSÈNE No 3263433, registered on March 2, 2007; - European Union Trade Mark ARSENE No 018004249 registered on May 17, 2019; - United Kingdom Trade Mark ARSENE No UK00918004249 registered on May 17, 2019; and - International Trade Mark ARSENE No 1453924, registered on December 24, 2018. The Complainant has also registered several domain names consisting of or including the trade mark ARSENE including which it registered on September 30, 2010. The disputed domain name was registered on November 20, 2023, and it directs to a GoDaddy page stating that the disputed domain name is parked for free and that it may be possible to purchase the disputed domain name. 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 contends that as the disputed domain name reproduces the trade mark ARSENE identically with the mere addition of a hyphen and the term “paris”, the disputed domain name is confusingly similar to the ARSENE trade mark in which the Complainant has rights. The Complainant also contends that the Respondent has no rights or legitimate interest in respect of the disputed domain name and points to the parking page associated with the disputed domain name to conclude that the Respondent has not made a legitimate noncommercial or fair use of the disputed domain name. Finally, the Complainant points to the fact that the Respondent has parked the disputed domain name and that it has registered the disputed domain name anonymously to conclude that the disputed domain name has been registered and is used in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions.
page 3 6. Discussion and Findings 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 trade mark 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 provided evidence of its exclusive license and satisfaction of the notice requirements under the terms of that license to bring these proceedings. WIPO Overview 3.0, section 1.4.1. Thus, the Complainant has shown rights in respect of a trade mark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The entirety of the trade mark ARSENE is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the ARSENE trade mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. Although the addition of other terms here, “paris”, 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 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. As part of a panel’s general powers articulated in paragraphs 10 and 12 of the Rules, the Panel has thus undertaken limited factual research into matters of public record as the Panel considered such information useful to assessing the case merits and reaching a decision under the second and third elements. When performing a Google search for the term “arsene paris” or “arsene-paris”, a number of first-page results refer to the Complainant including the top result. Having reviewed the available record and based on the Panel’s limited factual research into matters of public record as well as the absence of response from the Respondent, the Panel finds that on balance of probabilities the Complainant has established a prima facie case that the Respondent lacks 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. The Panel finds the second element of the Policy has been established.
page 4 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 ARSENE trade mark has acquired a strong level of goodwill, reputation and visibility in France in the legal sector including as a result of international legal directories ranking the Complainant's firm very highly. The Panel notes that the ARSENE trade marks have been registered long before the disputed domain name was registered. The Panel also notes that when performing a Google search for the terms “arsene paris” or “arsene-paris”, a number of first-page results refer to the Complainant including the top result which indicates a reasonably strong level of association of the terms “arsene paris” and “arsene-paris” with the Complainant. While “Arsène” is also a personal name in French, the Panel notes that it does not correspond to the Respondent’s name, and that the Respondent has not advanced any reason for such combination of “arsene-paris”. On the other hand, the addition to the ARSENE trade mark of the term “paris” which corresponds to the city where the Complainant has been headquartered for over 20 years reinforces on balance the likelihood that the Respondent would have known of and targeted the Complainant when it registered the disputed domain name. The Panel further notes the complete lack of response from the Respondent, where an explanation is certainly called for. 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. WIPO Overview 3.0, section 3.3. Having reviewed the available record and based on the Panel’s limited factual research into matters of public record, the Panel 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. 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 disputed domain name be transferred to the Complainant. /Vincent Denoyelle/ Vincent Denoyelle Sole Panelist Date: October 2, 2024
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