The Complainant is Banque Delubac et Cie of Le Cheylard, France, represented internally.
The Respondent is Pierre Dieudonne of Paris, France. 2. The Domain Name, Registry and Registrar
The Registry of the disputed domain name is the European Registry for Internet Domains (“EURid” or the “Registry”). The Registrar of the disputed domain name is EURid vzw. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 16, 2018. On October 16, 2018, the Center transmitted by email to the Registry a request for registrar verification in connection with the disputed domain name. On October 17, 2018, the Registry transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details and contact information for the disputed domain name. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on October 29, 2018.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the .eu Alternative Dispute Resolution Rules (the “ADR Rules”) and the World Intellectual Property Organization Supplemental Rules for .eu Alternative Dispute Resolution Rules (the “Supplemental Rules”).
In accordance with the ADR Rules, Paragraph B(2), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 31, 2018. In accordance with the ADR Rules, Paragraph B(3), the due date for Response was December 13, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 14, 2018.
The Center appointed Isabelle Leroux as the sole panelist in this matter on December 28, 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 ADR Rules, Paragraph B(5).
After examination of the statement and documents submitted by the Complainant, the Panel issued a procedural order on January 11, 2019 in order to be provided with additional information on the Complainant’s prior trademark rights on the sign DELUBAC.
On January 17, 2019, the Complainant submitted new exhibits to the Center. Even though provided with an opportunity, the Respondent did not reply to this additional communication. 4. Factual Background
The Complainant is a French banking and service provider.
Following the Panel’s procedural order issued on January 11, 2019, the Complainant submitted to the Center several trademark applications, not yet registered, consisting of or including the sign DELUBAC:
- French trademark application DELUBAC, No. 4496347, filed on October 31, 2018 in classes 9, 16, 35, 36, 38 and 41;
- French trademark application , No. 4496598, filed on November 2, 2018 in classes 9, 16, 35, 36, 38 and 41;
- European Union trademark DELUBAC application, No. 17978583, filed on October 31, 2018 in classes 9, 16, 35, 36, 38 and 41;
- European Union trademark application, No. 17980318, filed on November 2, 2018 in classes 9, 16, 35, 36, 38 and 41 (together, the “Trademark Applications”).
In addition, the Complainant refers to the European Union trademark DELUBAC, No. 6826135, filed on April 11, 2008 and registered on November 10, 2008 in classes 9, 35, 36 and 41. After visiting the relevant public trademark registration databases, the Panel noted that this trademark has not been duly renewed by the Complainant and has expired on April 11, 2018.
Considering that, according tothe WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.1.4., “a pending trademark application would not by itself establish trademark rights within the meaning of UDRP paragraph 4(a)(i)”1, the Panel further found out that the Complainant owns a portfolio of registered trademarks consisting of or including the sign DELUBAC2:
- French trademark DELUBAC FACTOR, No. 3765745, registered on January 28, 2011 in class 36;
- French trademark DELUBAC - FACTOR, No. 3765778, registered on January 28, 2011 in class 36;
- French trademark DELUBAC - EDI, No. 3654728, registered on November 6, 2009 in class 36 (together, the “Trademarks”).
Lastly, it has been established that the Complainant has registered the domain names on February 19, 1998 and on February 22, 1998 (together, the “Domain Names”). The Domain Names resolve to an official website used by the Complainant as a commercial showcase of its activities and as an interactive platform for its customers.
The disputed domain name was registered by the Respondent on April 11, 2017. The disputed domain name resolves to the official website of the Complainant at “www.”. 5. Parties’ Contentions A. Complainant
(i) The Complainant essentially contends that the disputed domain name refers to the Domain Names and to its company name and has submitted documentation regarding its trademark applications and the European Union trademark No. 6826135. As such, the Complainant submits that the disputed domain name is likely to cause confusion among Internet users. The Complainant adds that this confusion is strengthened by the fact that the disputed domain name resolves to its official website without authorization.
(ii) The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name.
(iii) The Complainant submits that the Respondent could possibly use the disputed domain name in a fraudulent way –this risk being particularly significant in the finance industry. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Language of the Proceeding
The Complainant submits to the language of the Registration Agreement, which is in English.
According to paragraph A3(a) of the ADR Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the proceeding shall be the language of the Registration Agreement. As the language of the Registration Agreement is English, the language of the proceeding shall be English and the decision rendered in English. 6.2 Procedural Aspects
The Panel notes that the Respondent is formally in default pursuant to Paragraphs B10(b) and B3(a) of the ADR Rules because no response was received from the Respondent within the time limit set by the ADR Rules.
However, the Panel finds that this does not mean that the remedies requested should automatically be awarded. The Panel will have to establish whether the Complainant’s case meets the requirements of Paragraph B11(d)(1) of the ADR Rules.
In order for the Complaint to succeed, the Complainants must show, in accordance with Article 21(1) of Commission Regulation (EC) No. 874/2004 and Paragraph B11(d)(1) of the ADR Rules, that:
(a) the disputed domain name is identical with or confusingly similar to a name in respect of which a right is recognized or established by the national law of a Member State and/or Community law;
and either that
(b) the domain name has been registered by the Respondent without rights or legitimate interest in the name; or
(c) the domain name has been registered or is being used in bad faith.
These elements will be examined in turn below. A. Identical or Confusingly Similar to a name in respect of which a right or rights are recognized or established by national law of a Member State and/or Community law
The Complainant has submitted trademark applications as amounting to a right recognized or established by the national law of a Member State and/or Community law under ADR Rules Paragraph B1(9). However, although French trademark rights are effective from the filing date, such protection first requires the formal registration of the trademark. As a result, a pending trademark application would not by itself establish trademark rights within the meaning of Paragraph B(11)(d)(1)(i) of the ADR Rules (see section 1.1.4 of WIPO Overview 3.0; and Arizen and Coinhouse v. Tim Bloksdam,WIPO Case No. DEU2018-0008).
In addition, the Complainant refers to the European Union trademark DELUBAC, No. 6826135, filed on April 11, 2008 and registered on November 10, 2008 in classes 9, 35, 36 and 41. However, it appears that this trademark has expired on April 11, 2018 and, as such, should not be taken into account in assessing the identity or similarity between the Complainant’s trademarks and the disputed domain names.
However, the Complainant further holds rights in the French trademark DELUBAC FACTOR, No. 3765745, registered on January 28, 2011, comprising the term “delubac”, which is replicated in the disputed domain name.
Furthermore, in comparing the disputed domain name with the Trademarks, the Panel finds that the most distinctive element of the Trademarks, i.e. the term “delubac”, is exactly replicated in the disputed domain name, the latter simply differing by the addition of the term “groupe” (the French term for “group” of companies).
The Panel considers that the sole addition of this term in the disputed domain name is not sufficient to avoid the similarity between them and the Complainant’s Trademarks. Indeed, According to the consensus view of UDRP panels, the addition of generic terms such as “groupe” in a domain name is normally insufficient in itself to avoid a finding of confusing similarity (See Confédération nationale du Crédit Mutuel v. Antony Tep,WIPO Case No. D2016-0651; Virgin Enterprises Limited v. Ericka Brantley,WIPO Case No. D2017-2030).
The country-code Top-Level Domain (“ccTLD”), such as “.eu”, is not to be taken into consideration when examining the identity or similarity between the Complainant’s trademarks and the disputed domain names (see Samuel Hubbard Shoe Company LLC and Werner Wyrsch v. Cyrus Jennings,WIPO Case No. DEU2018-0007).
Therefore the Panel finds that the disputed domain name is confusingly similar to the Trademarks and that the Complainant has satisfied the requirement of paragraph B(11)(d)(1) of the ADR Rules. B. Rights or Legitimate Interests
The Panel notes that Article 22(10) of Commission Regulation (EC) No. 874/2004 provides that “[f]ailure of any of the parties involved in an ADR procedure to respond within the given deadlines or appear to a panel hearing may be considered as grounds to accept the claims of the counterparty”.
In accordance with the ADR Rules, Paragraph B7, and similarly to the UDRP jurisprudence, the burden of proof for the lack of rights and legitimate interests of the Respondent lies with the Complainant. However, the burden shifts to the Respondent once the Complainant makes a prima facie showing that the Respondent lacks rights or legitimate interests (Croatia Airlines d.d. c. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
Hence after the Complainant has made a prima facie showing that Respondent has no rights or legitimate interests in the mark, it will be deemed to have satisfied Paragraph B1(11)(d)(1)(ii) of the ADR Rules when the Respondent fails to submit a response.
In this case, the Complainant brings forward the following elements:
- It has no relationship with the Respondent;
- The disputed domain name resolves to the Complainant’s official website and is not exploited by the Respondent.
In the light of this, the Panel finds that the Complainant has made a prima facie showing that the Respondent does not have rights or legitimate interests in the disputed domain name, which was not challenged by the Respondent who did not respond to the Complainants’ arguments.
Given these circumstances the Panel finds that the second element of Paragraph B(11)(d)(1) of the ADR Rules has been satisfied. C. Registered or Used in Bad Faith
The Complainant has argued that the disputed domain name has been fraudulently registered in consideration that the disputed domain name resolves without authorization to the official website of the Complainant.
Use of a domain name incorporating a trademark by an unauthorized third party to redirect Internet users to a complainant's website is evidence of bad faith under Paragraph B11(f)(4) of the ADR Rules. Similarly, under WIPO Overview 3.0, section 3.1.4, previous UDRP panels have found that redirecting the domain name to the complainant’s website could support a finding that a respondent has registered a domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant's mark.
Specifically, a respondent redirecting a domain name to the complainant’s website can establish bad faith insofar as the respondent retains control over the redirection thus creating a real or implied ongoing threat to the complainant. See Ann Summers Limited v. Domains By Proxy, LLC / Mingchun Chen, WIPO Case No. D2018-0625; FXCM Global Services LLC v. WhoisGuard Protected, Whoisguard Inc. / Jenny Sohia, WIPO Case No. D2018-1111.
In addition, the Panel finds that:
- Respondent has provided no evidence whatsoever of any actual or contemplated good faith use of the disputed domain name;
- Respondent has registered the disputed domain name while the European Union trademark DELUBAC, No. 6826135, filed on April 11, 2008 and registered on November 10, 2008 in classes 9, 35, 36 and 41 was still valid.
Taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off on one hand and/or on another hand infringement of the Complainant’s rights under trademark law.
Consequently, the Panel finds that the disputed domain name has been registered and is being used in bad faith, so that the third requirement under paragraph B(11)(d)(1) of the ADR Rules is met. 7. Decision
For the foregoing reasons, in accordance with Paragraph B(11) of the ADR Rules, the Panel orders that the disputed domain name be transferred to the Complainant.3
Isabelle Leroux
Sole Panelist
Date: February 1, 2019
1 Given the similarities between the ADR Rules and the Uniform Domain Name Dispute Resolution Policy (“UDRP”), the Panel will refer to UDRP jurisprudence, where instructive.
2 See WIPO Overview 3.0, section 4.8 “Noting in particular the general powers of a panel articulated inter alia in paragraphs 10 and 12 of the UDRP Rules, it has been accepted that a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision.”
3 The remedy sought by the Complainant is transfer, as the Complainant is located in France, within the European Union, it satisfies the general eligibility criteria for registration of the disputed domain name set out in Article 4(2)(b) of Regulation (EC) No. 733/2002.
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