ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Mr. Philippe Briand v. Carolina Rodrigues, Fundacion Comercio Electronico Case No. D2025-1467 1. The Parties The Complainant is Mr. Philippe Briand, France, represented by Cabinet Bouchara, France. The Respondent is Carolina Rodrigues, Fundacion Comercio Electronico, Panama. 2. The Domain Name and Registrar The disputed domain name is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 10, 2025. On April 10, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 10, 2025, 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 (Unknown) and contact information in the Complaint. The Center sent an email communication to the Complainant on April 11, 2025, 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 April 11, 2025. 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 April 16, 2025. In accordance with the Rules, paragraph 5, the due date for Response was May 6, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 19, 2025.
page 2 The Center appointed Andrea Jaeger-Lenz as the sole panelist in this matter on May 26, 2025. 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 has founded, in 1990, a real estate agency network by the name of Citya, providing services in the field of real estate management. The Complainant’s network nowadays counts 245 real estate agencies throughout the territory of France with more than 4,000 employees. The Complainant owns trademark registrations consisting of or containing the term CITYA, including the following (as per Annexes 16 and 18): - French national trademark no. 4649914 CITYA (word), registered on November 27, 2020 for goods and services in Classes 16, 35, 36, 37, 38, 41, 42, 43 and 45; - European Union trademark no. 018792753 CITYA IMMOBILIER (word), registered on April 12, 2023 for goods and services in Classes 16, 35, 36, 37, 38, 41, 42, 43 and 45. The Complainant’s network is promoted through the website under the domain name registered since 2001 (Annex 19), presenting the services offered as well as real estate searches (Annex 20). The disputed domain name was registered on March 12, 2025 (Annex 3). At the time of filing the Complaint, it resolved to a parking page displaying a number of sponsored links under headers in French language such as “Gite de Vacances”, “Agence Immobiliere”, “Location Vacances” or “Location Immobiliere” to competitors of the Complainant (the Complaint, Annexes 21 and 22). 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 he owns rights in the trademark CITYA, which he considers highly distinctive, and that his trademark is identically reproduced in the disputed domain name. He finds that the addition of the generic term “sun” is insufficient to avoid a likelihood of confusion. To that end, the Complainant cites previous UDRP decisions, in which the prefix was not considered apt to dispel a confusing similarity between the trademark and the respective disputed domain name. Furthermore, the Complainant stresses that the addition of a technically necessary generic Top-Level Domain (“gTLD”) also fails to eliminate a risk of confusion. Further, the Complainant argues that the Respondent has no legitimate interests in the disputed domain name as it does not have any rights to the trademark it reproduces. The Respondent has not obtained any authorization to use the trademark within the disputed domain name. Also, the Complainant states that there is no relationship whatsoever between the Parties, and that there is nothing on the record suggesting that the Respondent be commonly known under the disputed domain name. The Complainant points to the Respondent having caused the disputed domain name to resolve to a parking page containing a number of sponsored links to competitors of the Complainant. These sponsored links, so the Complainant, in particular refer to “agence immobilière”, which is the French term for “real estate agency”, which shows the Respondent’s full knowledge of the existence of the Complainant. Thus, the registration of the disputed domain name occurred obviously to misleadingly divert consumers to the parking page under the disputed domain name. The Complainant concludes that, as a result, none of the circumstances are present under
page 3 which rights of legitimate interests of the Respondent could be assumed. The Complainant claims, that the use of the disputed domain name for a parking page including links in relation to the Complainant’s commercial activities, and even with titles in the French language, indicates that the Respondent registered the disputed domain name in order to free ride on the reputation of the Complainant and to make Internet users believe that the disputed domain name is associated with the Complainant, the purpose of the disputed domain name being to serve a commercial activity of the Respondent. The Complainant finds that the use of the disputed domain name for a parking page with commercial links to competitors of the Complainant does not constitute a bona fide offering but rather to illegitimately earn pay-per-click (“PPC”) revenues from such links. The Complainant adds that the fact of the Respondent having hidden its presumed identity behind a privacy shield reinforces a presumption of bad faith. 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. The entirety of the mark is reproduced within the disputed domain name. In addition, the Panel finds that the mark as such remains 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. Although the addition of other terms here, “sun”, 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.
page 4 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 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. Panels have held that the use of a domain name to host a parked page comprising PPC links, where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark(s) or otherwise mislead Internet users, cannot confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.9. 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. 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 the present case, the Panel notes that the Respondent has registered the disputed domain name including the term “citya”, in which the Complainant has trademark rights predating the creation of the disputed domain name, and has used the disputed domain name in order to host a landing page displaying PPC links, with French titles such as “Agence Immobiliere”, “Gite de Vacances”, “Location Vacances” or “Location Immobiliere” referring to rental offers for holidays, commercial real estate activities and etc. While neither the term “sun” nor the term “city” as such may not be so unusual, even in relation with real estate, the term “citya” as used in the creation of the disputed domain name is distinctive. Considering the prefix “sun” added before the CITYA mark in the disputed domain name for a website with PPC links related to real estate agency, potential competitors of the Complainant, the Panel finds on balance that the Respondent had the Complainant in mind already upon registration of the disputed domain name. As to use in bad faith, paragraph 4 (a)(iii), paragraph 4(b)(iv) of the Policy provides that the following scenario constitutes evidence of use in bad faith, namely the respondent having intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location. The use of the disputed domain name by the Respondent as demonstrated by the Complainant, namely hosting a website with PPC links to competitors of the Complainant, falls under this description. 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. /Andrea Jaeger-Lenz/ Andrea Jaeger-Lenz Sole Panelist Date: June 9, 2025
Full & Egal Universal Law Academy