The Complainant is AMUNDI S.A. of Paris, France, represented by Nameshield, France.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama / Jillian Jones of San Diego, California, United States of America (“United States”). 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 March 26, 2018. On March 26, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 26, 2018, 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on March 29, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed two amended Complaints on March 30 and April 3, 2018.
The Center verified that the Complaint together with the amended Complaints 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 9, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 29, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 30, 2018.
The Center appointed Debrett G. Lyons as the sole panelist in this matter on May 11, 2018. 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 facts relevant to the decision in this case are that:
(1) the Complainant provides asset management services by reference to the trade mark AMUNDI;
(2) the trade mark AMUNDI is the subject, inter alia, of International1 Reg. No. 1,024,160 registered September 24, 2009;
(3) the disputed domain name was registered on April 6, 2017;
(4) the disputed domain name has not been used; and
(5) there is no commercial or other relationship between the Parties and the Complainant has not authorized the Respondent to use the trade mark or to register any domain name incorporating the trade mark. 5. Parties’ Contentions A. Complainant
The Complainant asserts trade mark rights in AMUNDI and submits that the disputed domain name is identical to its trade mark.
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant alleges that the Respondent registered and is using the disputed domain name in bad faith.
The Complainant accordingly requests the Panel to order transfer of the disputed domain name. B. Respondent
The Respondent did not submit a response. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
It is the responsibility of the Panel to consider whether the requirements of the Policy have been met, regardless of the fact that the Respondent failed to submit a response. Having considered the Complaint and the available evidence, the Panel finds the following: A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trade mark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to the trade mark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trade mark rights. It is accepted that a trade mark registered with a national authority is evidence of trade mark rights for the purposes of the Policy.2 The Complainant provides evidence of its International registration of the trade mark AMUNDI but the Panel observes that the registration does not stand in the name of the Complainant but in the name of Amundi Asset Management. There is no evidence of an assignment or change of name. The Paris address of Amundi Asset Management is not the same address as that of the Complainant. Nevertheless, in the absence of a Response or objection from the Respondent, the Panel is prepared to infer that the trade mark is either beneficially owned by the Complainant or that use by the Complainant is with the authority and license of the trade mark owner as both authorities Amundi S.A. and Amundi Asset Management appear to be connected. As such, the Panel finds that the Complainant has trade mark rights for purpose of the Policy.
The disputed domain name takes the trade mark to which it merely adds the country Top-Level Domain (“ccTLD”) “.co” which can be disregarded for the purposes of comparison.3 The Panel finds that the disputed domain name is identical to the Complainant’s trade mark and so finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant has the burden to establish that the Respondent has no rights or legitimate interests in the disputed domain name. Nevertheless, it is well-settled that the Complainant need only make out a prima facie case, after which the onus shifts to the Respondent to rebut such prima facie case by providing evidence demonstrating rights or legitimate interests in the disputed domain name.4
Notwithstanding the lack of a response to the Complaint, paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.”
The publicly available WhoIs data for the domain name registrant does not support any finding by the Panel that the Respondent might be commonly known by the disputed domain name.
There is no evidence that the Respondent has trade mark rights in the disputed domain name. There is no relationship between the Parties and the Complainant has not authorized the Respondent to use its trade mark.
The evidence accompanying the Complaint is that the disputed domain name is not in use. Accordingly, there is no bona fide offering of goods or services by reference to the disputed domain name, nor is there a legitimate noncommercial or fair use of the disputed domain name.
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, and that the Respondent in failing to reply to the Complainant’s contentions has not rebutted such prima facie case.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and so the Complainant has satisfied the second element of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out circumstances which shall be evidence of the registration and use of a domain name in bad faith. They are:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The Panel finds, as separate matters, registration in bad faith and use in bad faith. The Complainant asserts but does not prove that the trade mark is well-known. In place of proof of that claim are references to earlier UDRP cases where the panel found the trade mark to be well-known. Albeit that there is no formal system of precedent in decision making under the UDRP, this Panel accepts that the weight of earlier cases supports a conclusion here that the trade mark was well-known at the time the disputed domain name was created. The Panel therefore finds that it was more likely than not that the Respondent was aware of the Complainant’s business and its trade mark at the time it registered the disputed domain name. The trade mark is a distinctive, invented word and there is no plausible reason that the Respondent would have struck upon it by chance. There is no actual use of the domain name but in the circumstances the Panel can see no potential for bona fide use of the name and so finds so-called “passive holding” and use in bad faith in line with the reasoning first laid out in the case of Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
Accordingly, the Complainant has satisfied the third and final limb 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.
Debrett G. Lyons
Sole Panelist
Date: May 16, 2018
1 Under the Madrid Agreement.
2 See section 1.2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
3 See section 1.11.1 of the WIPO Overview 3.0.
4 See, for example, Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624.
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