ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Semantix Språkcentrum AB v. Domain Privacy, Domain Name Privacy Inc. Case No. D2024-3897 1. The Parties The Complainant is Semantix Språkcentrum AB, Sweden, represented by Abion AB, Sweden. The Respondent is Domain Privacy, Domain Name Privacy Inc., Cyprus. 2. The Domain Name and Registrar The disputed domain name is registered with Communigal Communications Ltd. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 24, 2024. On September 24, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 25, 2024, 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 (Redacted for Privacy) and contact information in the Complaint. The Center sent an email communication to the Complainant on the same day, 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 amendment to the Complaint on September 26, 2024. 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 September 27, 2024. In accordance with the Rules, paragraph 5, the due date for Response was October 17, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 18, 2024.
page 2 The Center appointed Andrew F. Christie as the sole panelist in this matter on October 28, 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 provider of interpretation, translation and multilingual multimedia services. It has an annual turnover of around SEK 700 million, and 350 employees in 7 countries. The Complainant has assisted its clients with various translation services for 238 different languages since its founding in 1969. The Complainant is the holder of several trademark registrations for the word trademark SEMANTIX, including International Trademark Registration No. 921299 (registered April 4, 2007) and European Union Registration No. 014963227 (registered July 7, 2016). The Complainant is the registrant of the domain name (registered March 8, 1996). The disputed domain name was registered on June 11, 2024. The Complainant provided a screenshot, dated September 19, 2024, showing that Mail Exchange (“MX”) servers had been activated for the disputed domain name. The Complainant provided another screenshot, dated September 24, 2024, showing that the disputed domain name resolved to a pay-per-click (“PPC”) parking webpage containing link buttons labelled “Online Translation System”, “Corporate Hr Software”, and “Cloud Based Iam Solutions”. The Complainant provided a further screenshot, dated September 24, 2024, showing that the disputed domain name was apparently being offered for sale for SEK 6 998,98. On August 27, 2024, the Complainant sent a cease-and-desist letter to the Registrar’s abuse email address, to be forwarded to the Registrant. No response was received to this letter. As of the date of this decision, the disputed domain name resolves to a parking webpage with PPC link buttons labelled “Translate Pdf English”, “Employee Engagement Organization”, and “Creating a Customer Experience Strategy”. 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. The Complainant contends that the disputed domain name is identical to a trademark in which it has rights, on the following grounds, among others. The disputed domain name incorporates the Complainant’s SEMANTIX word trademark in full, adding no elements that would distinguish it from the Complainant’s trademark. The use of “.store” as the generic Top-Level Domain (“gTLD”) should merely be viewed as a standard registration requirement and as such be disregarded when assessing identicality and confusing similarity under the first element. The Complainant contends that the Respondent does not have any rights or legitimate interests in the disputed domain name, on the following grounds, among others. The Respondent has not been authorized by the Complainant to use its SEMANTIX trademark and does not, to the Complainant’s knowledge, own any trademark rights in SEMANTIX. There is no evidence that the Respondent is commonly known by the disputed domain name. The Respondent cannot establish rights in the disputed domain name as it has not made any use of the disputed domain name in connection with a bona fide offering of goods or services and is not making a legitimate noncommercial or fair use of the domain name. The fact that the Respondent never answered the Complainant’s communications and registered the disputed domain name with a privacy
page 3 shield service, are additional indicators that the Respondent has no rights or legitimate interest in respect of the disputed domain name. The Complainant has thereby made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith, on the following grounds, among others. The Complainant has been well exposed under the SEMANTIX trademark, both through their own marketing channels and their official website at “www.semantix.com”. The Complainant’s rights in the trademark SEMANTIX have been registered several years before the creation of the disputed domain name. Considering that the Complainant is a well-known company and the holder of a reputed trademark, with a substantial and widespread reputation, it is highly unlikely that the Respondent chose the disputed domain name without knowledge of the Complainant’s activities and its trademark. It ought to be presumed that the Respondent has chosen the disputed domain name because it is confusingly similar to the Complainant’s trademark. The disputed domain name is currently being used to show PPC links for services in respect of which the Complainant’s trademark is registered, indicating that the Respondent has registered and is using the disputed domain name fully aware of the Complainant’s area of business and with the intent to commercially profit from the Complainant’s reputation and goodwill. Despite having registered the disputed domain name on June 11, 2024, it appears that it is for sale, which constitutes additional evidence that the Respondent never registered the disputed domain name with the intent to use it in a bona fide offering of goods and services, but rather to commercially profit by taking advantage of the Complainant’s identical trademark. MX servers have been activated for the disputed domain name. If an email were to be sent out from an email address using the disputed domain name, there is an imminent risk that the recipient would believe that such an email has been sent by the Complainant, constituting a critical risk of causing serious and irreparable harm to the Complainant’s reputation. B. Respondent The Respondent did not reply to the Complainant’s contentions. 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 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. It is the owner of a number of trademark registrations for the word trademark SEMANTIX. Once the gTLD “.store” is ignored (which is appropriate in this case), the disputed domain name consists of the whole of the Complainant’s registered word trademark SEMANTIX. Accordingly, the Panel finds that the disputed domain name is identical to a trademark in which the Complainant has rights. 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.
page 4 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. The Panel considers that the composition of the disputed domain name carries a risk of implied affiliation with the Complainant. WIPO Overview 3.0, section 2.5.1. Also, the evidence establishes that the Respondent has used the disputed domain name to resolve to a website which contains what appears to be PPC links to the sites of other persons who are unrelated to the Complainant, but also in certain cases under the term “online translation system”. Panels have found that the use of a domain name to host a parked page comprising 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 or otherwise mislead Internet users. WIPO Overview 3.0, section 2.9. Having reviewed the available record, the Panel finds that 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. 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: (i) the Respondent registered the disputed domain name nearly two decades after the Complainant first registered its SEMANTIX trademark; (ii) the disputed domain name incorporates the Complainant’s trademark in its entirety, and merely adds the gTLD “.store”; and (iii) the Respondent has used the disputed domain name to resolve to a website that appears to provide PPC links to the sites of third parties offering services of the same type provided by the Complainant under its trademark. It seems clear the Respondent registered the disputed domain name with knowledge of the Complainant’s trademark. 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. The evidence shows that the Respondent has used the disputed domain name in an intentional attempt to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with the Complainant’s trademark. Having reviewed the record, the Panel finds that the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy. The Panel finds that the Complainant has established the third element of the Policy.
page 5 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. /Andrew F. Christie/ Andrew F. Christie Sole Panelist Date: November 11, 2024
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