ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION GROUPE NOCIBE v. Fábio Justino Case No. D2024-4533 1. The Parties The Complainant is GROUPE NOCIBE, France, represented by SCP Deprez, Guignot et Associés, France. The Respondent is Fábio Justino, Brazil. 2. The Domain Name and Registrar The disputed domain name is registered with Realtime Register B.V. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 5, 2024. On November 5, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 6, 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 November 6, 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 November 8, 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 November 13, 2024. In accordance with the Rules, paragraph 5, the due date for Response was December 3, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 5, 2024. The Center appointed Luca Barbero as the sole panelist in this matter on December 15, 2024. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration
page 2 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 perfume and cosmetics retailer founded in Lille in 1984 by Daniel Vercamer. It became a subsidiary of the German Douglas Holding group in 2014 and is currently a major player in the European selective perfume market. The Complainant is the owner of several trademark registrations for NOCIBE, including the following, as per trademark registration details submitted as Annex 5 to the Complaint: - International trademark registration No. 682885 for NOCIBE (word mark), registered on October 24, 1997, in classes 3 and 42; - French trademark registration No. 96643502 for NOCIBE (word mark), filed on September 25, 1996, in classes 3, 5, 8, 14, 18, 21, 25 and 44; - European Union trademark registration No. 018461113 for NOCIBE’ (stylized mark), filed on April 27, 2021, and registered on September 23, 2021, in classes 3, 5, 8, 14, 18, 21, 25, 26, 35 and 44. The Complainant’s official online store is available at , registered on August 7, 1997. The disputed domain name was registered on August 31, 2024, and does not currently resolve to any active webpage. According to a screenshot submitted by the Complainant, prior to the start of the proceedings the disputed domain name resolved to a “403 Forbidden” page stating: “Access to this resource on the server is denied!”. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for the transfer of the disputed domain name. Notably, the Complainant contends that the disputed domain name is confusingly similar to the trademark NOCIBE in which the Complainant has rights as it reproduces the trademark in its entirety with the mere addition of the descriptive term “remise” (meaning “discount” in French), which is a common, strictly descriptive word that simply gives the impression that the website corresponding to the disputed domain name offers NOCIBE products at discounted prices. The Complainant states that the Respondent has no rights or legitimate interests in respect of the disputed domain name because: i) the Complainant’s trademark rights precede the registration of the disputed domain name by many years; ii) the Respondent has not been authorized, licensed, or permitted by the Complainant to use the NOCIBE mark; iii) the Respondent has no rights, including trademark rights, in respect of the terms “nocibe” or/and “remise nocibe” in any country whatsoever; iv) the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use, since the disputed domain name resolves to a “403 Forbidden” page, meaning that access to the file or folder has been denied, on purpose, due to a misconfiguration, or for security reasons; and v) the composition of the disputed domain name suggests an affiliation with the Complainant. With reference to the circumstances evidencing bad faith, the Complainant indicates that considering: i) the disputed domain name comprises the Complainant’s well-known trademark NOCIBE placed after the generic
page 3 term “remise”; and ii) the disputed domain name redirects to a “403 Forbidden” web page, the Respondent acted in bad faith and intended to capitalize on the confusion caused between the disputed domain name and the NOCIBE mark to mislead Internet users into believing the corresponding website was somewhat associated with the Complainant, which it is not. The Complainant points out that, even though the disputed domain name does not resolve to an active website, the disputed domain name is nonetheless being “used” in bad faith under the doctrine of passive holding. The Complainant also submits that the Respondent’s use of a domain privacy service to hide its true identity further demonstrates its bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following: (i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (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. 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. Indeed, the Complainant has provided evidence of ownership of valid trademark registrations for NOCIBE. The entirety of the mark is reproduced 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. Although the addition of the term “remise” 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. In addition, the generic Top-Level Domain “.com” can be disregarded under the first element confusing similarity test, being a standard registration requirement. WIPO Overview 3.0, section 1.11. Therefore, the Panel finds the first element of the Policy has been established.
page 4 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 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. According to the evidence on record, there is no relationship between the Complainant and the Respondent, and the Complainant has not authorized the Respondent to register or use its trademark or the disputed domain name. Moreover, there is no element from which the Panel could infer the Respondent’s right over the disputed domain name, or that the Respondent might be commonly known by the disputed domain name. Furthermore, there is no evidence that the Respondent might have used or made preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Indeed, the disputed domain name has been apparently passively held as it previously resolved to an error page and is currently not leading to any active webpage. The Panel shares the view held in Teachers Insurance and Annuity Association of America v. Wreaks Communications Group, WIPO Case No. D2006-0483, where it was found that, absent some contrary evidence from the respondent, passive holding of a domain name does not constitute a legitimate noncommercial or fair use. The Panel also notes that the disputed domain name, combining the Complainant’s trademark NOCIBE with the French term “remise”, which means “discount” in French and is thus directly referable to the Complainant’s products, is inherently misleading. Even where a domain name consists of a trademark plus an additional term, UDRP panels have largely held that such composition cannot constitute fair use if it suggests sponsorship or endorsement by the trademark owner. WIPO Overview 3.0, section 2.5.1. Therefore, the Panel finds the second element of the Policy has also 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 finds that, in view of the Complainant’s prior registration and use of the trademark NOCIBE in connection with the Complainant’s perfume and cosmetics retailing business in France and online via the website “www.nocibe.fr”, the Respondent was or should have been aware of the Complainant’s trademark at the time of registration of the disputed domain name.
page 5 The circumstance that the Respondent, despite being based in Brazil according to the WhoIs records, decided to include the French term “remise” before the Complainant’s NOCIBE mark in the disputed domain name suggests that the Respondent was indeed aware of, and intended to target, the Complainant and its trademark. As mentioned above, the disputed domain name currently resolves to an error page and is thus apparently passively held. Panels have found that the non-use of a domain name (including a blank or “coming soon” page) 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, considering i) the distinctiveness of the Complainant’s trademark, ii) the composition of the disputed domain name, and iii) the Respondent’s failure to submit a response to provide any evidence of actual or contemplated good-faith use, 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. Therefore, the Panel finds that the Complainant has established the third element of the Policy as well. 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. /Luca Barbero/ Luca Barbero Sole Panelist Date: December 29, 2024
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