Complainant is ICADE, France and ICADE Promotion, France represented by De Gaulle Fleurance & Associés, France.
Respondent is Icade Marianne, United Kingdom. 2. The Domain Name, Registry and Registrar
The Registry of the disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 14, 2020. On May 14, 2020, the Center transmitted by email to the Registry a request for registrar verification in connection with the disputed domain name. On May 19, 2020, the Registry transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the 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 Respondent of the Complaint, and the proceedings commenced on May 27, 2020. In accordance with the ADR Rules, Paragraph B(3), the due date for Response was June 26, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 29, 2020. The Center appointed Marina Perraki as the sole panelist in this matter on July 7, 2020. 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). 4. Factual Background First Complainant is a major French real estate group. Second Complainant is a subsidiary of first Complainant. First Complainant was founded in 1954 and adopted the name ICADE in 2003. First Complainant holds several subsidiaries and they all contain the name ICADE, as does second Complainant. First Complainant is the owner of a number of trademark registrations for ICADE, including the French trademark registration ICADE (word) no 3185579, filed on September 26, 2002, and registered on February 28, 2003, for services in international classes 35, 36, 37 and 42 and the French trademark mark registration ICADE (semi-figurative) no 4336987, filed on February 10, 2017, and registered on June 2, 2017, for services in international classes 35, 36, 37, 38, 39, 41, 42 and 43. The Domain Name was registered on March 9, 2020, and was used to create an email address to impersonate Complainant and contact in May 2020 a company based in Taiwan Province of China, placing a fake order and asking them to deliver goods. The supplier company contacted first Complainant to verify the order and thus Complainants became aware of the fraudulent scheme. The Domain Name currently resolves to an inactive page. 5. Parties’ Contentions A. Complainant Complainants assert that they have established all elements required under Article 21(1) of the Commission Regulation (EU) No. 874/2004 (“the Regulation”) and Paragraph B(11)(d)(1) of the ADR Rules for a transfer or revocation of the Domain Name. B. Respondent Respondent did not reply to Complainants’ contentions. 6. Discussion and Findings 6.1. Procedural Matter: Multiple Complainants In assessing whether a complaint filed by multiple complainants may be brought against a single respondent, panels look at whether (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.1). Second Complainant is the owner of Class B shares in first Complainant and, according to the Complaint, as co-owner and partner of first Complainant, is responsible for first Complainant’s sourcing and distribution in Europe. Complainants have established that they both have an interest in the Domain Name and with that common grievance against Respondent and it would be equitable and procedurally efficient to permit the consolidation of the Complaint. The Panel accepts Complainants jointly filing the Complaint in this matter (Skorpio Limited and Owenscorp v. Identity masked by EU data protection / Jenniese Daivis,WIPO Case No. DEU2018-0005; Helinox Inc. and Helinox Europe B.V. v. Helinox Development,WIPO Case No. DEU2018-0001; Gymworld Inc. and Magformers UK Limited v. Vanbelle Jo, Vanbelle Law,WIPO Case No. DEU2017-0001; N.M Rothschild & Sons Limited and Banque Martin Maurel v. Xiamen PrivacyProtection Service Co. Ltd. / Yang hongjuan,WIPO Case No. D2016-2508; Jacqueline Riu and Société Riu Aublet et Compagnie v. Olivia Marimelado,WIPO Case No. D2010-0170)1 . 6.2 Substantive Matters Under Article 21(1) of the Regulation and Paragraph B(11)(d)(1) of the ADR Rules, in order for the Complaint to succeed, it is for Complainant to establish: (i) that the disputed domain name is identical 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 European Union law and; either (ii) that the disputed domain name has been registered by Respondent without rights or legitimate interest in the name; or (iii) that the domain name has been registered or is being used in bad faith. Furthermore Article 22(10) of the Regulation 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”. 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 European Union law First Complainant has demonstrated rights through registration and use on the ICADE mark, including the French trademark registration no 3185579, filed on September 26, 2002, and registered on February 28, 2003. The Domain Name incorporates the trademark of first Complainant in its entirety. The word “promotion”, which is added in the Domain Name is disregarded as it does not prevent a finding of confusing similarity (Icade v. Stephane Leblanc / Promotion Icade / Promotion Icade / Luc Vicente, WIPO Case No. D2018-2222; Wragge Lawrence Graham & Co LLP v. Registration Private, Domains by Proxy LLC / Ian Piggin,WIPO Case No. D2015-0135; WIPO Overview 3.0, section 1.8). Furthermore, the Domain Name is identical to the corporate name of second Complainant. The country code Top-Level Domain (“ccTLD”) “.eu” is disregarded, as ccTLDs typically do not form part of the comparison on the grounds that they are required for technical reasons only (Rexel Developpements SAS v. Zhan Yequn,WIPO Case No. D2017-0275). The Panel therefore finds that Complainants have established the first element of Article 21(1) of the Regulation and Paragraph B(11)(d)(1)(i) of the ADR Rules. B. Rights or Legitimate Interests Under Paragraph B(11)(e) of the ADR Rules, a respondent may demonstrate its rights or legitimate interests to the domain name for purposes of Paragraph B(11)(d)(1)(ii) by showing any of the following circumstances, in particular but without limitation: (1) prior to any notice of the dispute, the respondent has used the domain name or a name corresponding to the domain name in connection with the offering of goods or services or has made demonstrable preparation to do so; (2) the respondent, being an undertaking, organization or natural person, has been commonly known by the domain name, even in the absence of a right recognized or established by national and/or European Union law; (3) the respondent is making a legitimate and noncommercial or fair use of the domain name, without intent to mislead consumers or harm the reputation of a name in which a right is recognized or established by national law and/or European Union law. The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name. Respondent has not submitted any response and has not claimed any such rights or legitimate interests with respect to the Domain Name. As per Complainants, Respondent was not authorized to register the Domain Name. Complainants have established that they have no relation with Respondent and have never authorized Respondent to use the ICADE trademark in any way and that Respondent is not commonly known by the Domain Name. Complainants have demonstrated that Respondent used the Domain Name for the purpose of initiating a fraudulent scheme, namely to send fraudulent emails to a company in Taiwan Province of China, impersonating a current Executive Committee member of first Complainant for the only purpose of a scam, following, as Complainants demonstrated, the pattern of a scam that has been taking place since the beginning of 2018 (ICADE v. Diouck Adius,WIPO Case No. D2020-0290). The use of the Domain Name for an illegal activity such as constructing an email composition containing the Domain Name for deceiving purposes cannot confer rights or legitimate interests on Respondent (L’Oréal v. Cimpress Schweiz GmbH,WIPO Case No. DCO2017-0021; Syngenta Participations AG v. Simon Laidler / Who Is Agent, WhoIs Privacy Protection Service, Inc.,WIPO Case No. D2014-1702; Groupe Lactalis v. John Kleedofer / Privacy Protection Service INC d/b/a Privacy Protect.org,WIPO Case No. D2014-0133). The Complainants have also demonstrated that “icade marianne” is apparently a false identity consisting of the trademark ICADE and the name “marianne”, which is the name of an Executive Committee member of first Complainant, used in the communications leading to the scams. These circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Name. Respondent did not demonstrate any use of the Domain Name or a trademark corresponding to the Domain Name in connection with a bona fide offering of goods or services. Complainants have established Article 21(1) of the Regulation and Paragraph B(11)(d)(1)(ii) of the ADR Rules. C. Registered or Used in Bad Faith There is no need to separately address bad faith registration or use, in view of Panel’s finding that Respondent has no rights or legitimate interests in the Domain Name. However, in this case the Panel briefly considers that the Domain Name has also been registered and used in bad faith. Because the ICADE mark had been used and registered by Complainants at the time of the Domain Name registration, the Panel finds it more likely than not that Respondent had first Complainant’s mark in mind when registering this Domain Name (Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc.,WIPO Case No. D2014-1754; Parfums Christian Dior v. Javier Garcia Quintas and Christiandio.net,WIPO Case No. D2000-0226). Respondent should have known about first Complainant’s rights, due to the fact that first Complainant’s mark had goodwill when the Domain Name was registered. Furthermore, such knowledge is readily obtainable through a simple browser search due to Complainant’s use of ICADE mark on the Internet (“www.icade.fr”) (Caesars World, Inc. v. Forum LLC,WIPO Case No. D2005-0517; Compart AG v. Compart.com / Vertical Axis Inc.,WIPO Case No. D2009-0462). Complainants have demonstrated that the Domain Name was employed to create an email address and contact by email in May 2020 a company registered in Taiwan Province of China. The emails purported to originate from a person allegedly representing second Complainant. The name used was the name of an existing person, a member of first Complainant’s Executive Committee in charge of Innovation, Communication and Institutional Relations. During these exchanges, the alleged representative was trying to place an order in the name of second Complainant for solar modules to be delivered to a warehouse in the United Kingdom in the context of supposed construction projects. The company contacted a representative of first Complainant to verify the order and the scheme was revealed. As Complainants demonstrated, since March 2018 the Complainants have been the target of a series of scams. Complainants’ suppliers were contacted via emails allegedly in the name of first or second Complainant to place orders for different objects related to construction and new buildings. Thinking that the order was placed by Complainants, the suppliers sent the goods to an address given to them by email and then sent an invoice. When the invoices remained unpaid, the suppliers contacted Complainants (Icade v. Stephane Leblanc / Promotion Icade / Promotion Icade / Luc Vicente, supra). Use of the Complainant’s trademark, the corporate name of second Complainant and the name of one of first Complainants executives for a fraudulent email scam evidences that the Respondent was obviously aware of the Complainants and has deliberately targeted its business. Furthermore, use of a domain name for purposes such as phishing or identity theft, constitutes bad faith use (WIPO Overview 3.0, section 3.4). Under these circumstances and on this record, the Panel finds that Respondent registered and used the Domain Name in bad faith. Complainants have established the third element of Article 21(1) of the Regulation and Paragraph B(11)(d)(1)(iii) of the ADR Rules. 7. Complainants’ Entitlement to Transfer Article 22(11) of the Regulation states that “(…) The domain name shall be transferred to the complainant if the complainant applies for this domain name and satisfies the general eligibility criteria set out in Article 4(2)(b) of Regulation (EC) 733/2002,” which provision is reflected in paragraph B(11)(b) of the ADR Rules. Article 4(2)(b) of Regulation (EC) 733/2002 as amended by Regulation (EU) 2019/517 of the European Parliament and of the Council of 19 March 2019, provides that the registry shall “register domain names in the .eu TLD (…) requested by (iii) an undertaking that is established in the Union”. The Panel notes that the Complainants have requested the transfer to the first Complainant, and that the first Complainant satisfies such general eligibility criteria. 8. Decision For the foregoing reasons, in accordance with Paragraph B(11) of the ADR Rules, the Panel orders that the disputed domain name, Marina Perraki 1 Given the similarities between the ADR Rules and the Uniform Domain Name Dispute Resolution Policy (the “UDRP”), the Panel will refer to cases decided under both the ADR Rules and the UDRP if relevant to this proceeding.
Sole Panelist
Date: July 26, 2020
Full & Egal Universal Law Academy