The Complainant is Grand Siècle 2019, France, represented by GODIN Associés, France.
The Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland / tai lopez, United States of America.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 22, 2021. On September 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 September 24, 2021, 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 September 29, 2021.
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 October 1, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 21, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 22, 2021.
The Center appointed Charles Gielen as the sole panelist in this matter on November 1, 2021. 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 BackgroundThe Complainant is the head of the KARDHAM-group of companies, specialized in the fields of consulting, architecture, space design, engineering, and digital services in relation with real estate projects, in France, Europe and Africa. The Complainant communicates to the public using its trade mark KARDHAM, notably on its corporate website, accessible through the domain name
The Complainant owns the following registrations for the trademark KARDHAM:
- European Union trade mark No. 015293319, registered on July 19, 2016 for services in classes 36, 37, 42 and 44.
- European Union trade mark No. 018153414, registered on May 22, 2020 for goods in class 9 and services in classes 35, 36, 37, 38, 41 and 42.
- French trade mark No. 4258767, registered on March 22, 2016 for services in classes 36, 37, 42 and 44.
- International Registration No. 1418283, registered on June 20, 2018 for services in classes 36, 37, 42 and 44.
The Complainant holds the following domain names:
The disputed domain name was created on July 28, 2021 and directs to a website showing a parking page containing various links to third party websites.
5. Parties’ Contentions A. ComplainantThe Complainant contends that the disputed domain name reproduces the trade mark KARDHAM in its entirety. In assessing whether a domain name is confusingly similar to a trade mark the domain extension is disregarded. Therefore, the disputed domain name is identical to the trade mark KARDHAM.
Furthermore the Complainant contends that the Respondent has no rights or legal interests in respect of the disputed domain name. The disputed domain name reproduces the entire trade mark KARDHAM, already in existence for many years. The Respondent cannot reasonably pretend that it was not aware of the existence of the Complainant’s trade mark, or that it was intending to develop a legitimate activity through the disputed domain name. Furthermore, the Respondent is not commonly known by the name “KARDHAM”. It is a company named “Withheld for Privacy ehf”, which allows the owners of domain names to conceal their identity. Also, there is no relationship between the Complainant and the Respondent that would give rise to any license, permission or authorization for the Respondent to register or use a domain name incorporating the trade mark KARDHAM, such as the disputed domain name. Moreover, the registrant of the disputed domain name, who registered this domain name via the privacy service of the Respondent, never answered to the Complainant’s letters in which any rights or legitimate interests were claimed. Finally, the disputed domain name directs to a parking page displaying a link that indicates in French “Trouver des Chantiers Gratuitement” (which can be translated in English as “Find construction sites for free”). This link directs to another page, displaying pay-per-click links to 11 third-party websites, related to the Complainant’s field of activity.
The Complainant finally argues that the Respondent registered and uses the disputed domain name in bad faith. The Complainant uses four arguments to prove this. First, the Complainant points at the distinctiveness of the trade mark KARDHAM, making it implausible that the Respondent came up with the name independently and without knowledge of the Complainant’s trade mark, company name and domain names. The word “Kardham” is a verbal creation without any specific meaning in French or English in relation with consulting, architecture, space design, engineering, and digital services in relation with real estate projects, making it unlikely that the registrant was not aware of the Complainant and its trade mark when it chose the disputed domain name. Second, the real owner of the disputed domain name chose not to reply to all the messages send by the Complainant in order to prove any actual or contemplated good faith use of the disputed domain name. Third, the disputed domain name resolves to a parking page displaying pay-per-click links to third party websites. The Complainant argues that, where pay-per-click pages are built around a trade mark, such as KARDHAM, and not around a dictionary word and/or only used in connection with the generic or merely descriptive meaning of the word, such use does not constitute a bona fide offering of goods or services. The activities of providing pay-per-click links to websites of the Complainant’s competitors create a likelihood of confusion with the trade mark of the Complainant. Fourth, Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf is a company providing privacy services. It can therefore be inferred that the real owner of the disputed domain name has taken active steps to conceal its identity, thus obstructing the efficient enforcement of the Complainant’s trade mark rights, and confirming its bad faith.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsThe Panel is of the opinion that the Complainant’s contentions are reasoned and that the disputed domain name should be transferred to the Complainant pursuant to the Policy.
A. Identical or Confusingly SimilarThe Complainant proves that it has rights in the trade mark KARDHAM based on different trademark registrations. This trade mark is entirely reproduced in the disputed domain name, which causes the disputed domain name to be identical to the trade mark. The added suffix “.co” does not change the finding that the disputed domain name is confusingly similar, since the “.co” suffix is understood to be a technical requirement. In making the comparison between the trade mark and the disputed domain name, the country code Top-Level Domain (“ccTLD”), such as “.co” is disregarded. The Panel is of the opinion that applying these principles to this case, the disputed domain name is identical to the trademark.
Therefore, the requirement under paragraph 4(a)(i) of the Policy is met.
B. Rights or Legitimate InterestsThe Panel is of the opinion that the Complainant made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. First, the Respondent did not show that it owns any rights to the name “kardham” nor that is has any license from the Complainant to use its trade mark. Second, the Respondent did not argue that it is known, or that it has ever been known under the name “kardham”. Third, there is no bona fide offering of goods or services attached to the disputed domain name by the Respondent. On the contrary and as described by the Complainant, the website to which the disputed domain name resolves is a parking page containing pay-per-click links to third parties websites putting in contact individuals and professionals in the field of construction, an activity competing with the business of the Complainant. The Respondent likely earns pay-per-click revenue in relation to the links on the parking page. Such activity clearly does not provide a legitimate interest in the disputed domain name. The Panel is convinced that the Respondent has deliberately used the trade mark KARDHAM to create an impression of association with the Complainant. Finally, the Respondent has not come forward with evidence of any rights or legitimate interests and the Panel does not find any in the present record.
In view of the aforementioned, the Panel is of the opinion that the requirement of paragraph 4(a)(ii) of the Policy is met.
C. Registered and Used in Bad FaithThe Panel is of the opinion that the disputed domain name was registered and is being used in bad faith. With respect to the registration, the Panel finds that it is plausible that the Respondent must have been aware of the Complainant’s earlier trade mark when he registered the disputed domain name. The trade mark KARDHAM is highly distinctive and as the Complainant argues, it is in use for many years. Furthermore, the Panel is of the opinion that the Respondent, by using the disputed domain name that is identical to the Complainant’s trade mark KARDHAM, will attract Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trade mark and its business, because the websites to which the pay-per-click links direct, are websites of companies operating activities competing with those of the Complainant. The Panel moreover notes that the ccTLD “.co” in the disputed domain name (which is the ccTLD for Colombia) is very similar to the generic Top-Level domain “.com” which will add to the confusion between the trade mark of the Complainant and the disputed domain name because Internet users who wish to visit the Complainant’s website using its domain name
The Panel therefore considers the requirement of paragraph 4(a)(iii) of the Policy to be met.
7. DecisionFor 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
Charles Gielen
Sole Panelist
Date: November 7, 2021