The Complainant is Naval Group, France, represented by PROMARK, France.
The Respondent is Ové Asche, France.
2. The Domain Name, Registry and RegistrarThe Registry of the disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 24, 2021. On June 24, 2021, the Center transmitted by email to the Registry a request for registrar verification in connection with the disputed domain name. On June 30, 2021, the Registry 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 July 5, 2021, providing the registrant and contact information disclosed by the Registry, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 9, 2021.
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 amended Complaint, and the proceedings commenced on July 14, 2021. In accordance with the ADR Rules, Paragraph B(3), the due date for Response was August 25, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 30, 2021.
The Center appointed Christiane Féral-Schuhl as the sole panelist in this matter on September 3, 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 ADR Rules, Paragraph B(5).
4. Factual BackgroundThe Complainant is a French company created on January 31, 2002, and which is specialized in the construction of ships and floating defense structures.
The Complainant is the European leader in the military naval sector and is established in 18 countries.
For the purpose of its activities, the Complainant is the owner of several trademarks (hereafter the “NAVAL GROUP Trademark”), amongst which:
- The European Union Trademark (“EUTM”) NAVAL GROUP, registration No. 016541039, registered on October 23, 2017, in classes 7, 9, 11, 12, 13, 37, 38, 40, 41 and 42;
- The EUTM NAVAL GROUP POWER AT SEA, registration No. 016541021, registered October 23, 2017, in classes 7, 9, 11, 12, 13, 37, 38, 40, 41 and 42.
The Complainant also owns the
The disputed domain name
At the time of filing the Complaint, the disputed domain name pointed to the Complainant’s official website.
At the time of the decision, the disputed domain name directs users to an error page.
The Panel is requested to transfer the disputed domain name to the Complainant.
5. Parties’ Contentions A. ComplainantIn accordance with the ADR Rules, Paragraph B(1)(b), the legal and factual elements on which the Complainant relies are set out below.
First, the Complainant stands that the disputed domain name is identical to its registered NAVAL GROUP Trademark since it consists solely of the Complainant’s trademark, recalling that the addition of the ccTLD “.eu” is irrelevant when analyzing the similarity between the NAVAL GROUP Trademark and the disputed domain name.
Then, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name, given that the Respondent has no connection with the Complainant and has no license or authorization to use the Complainant’s trademark or company name.
The Complainant also considers that the Respondent is not making a legitimate or fair non-commercial use of the domain name.
At last, the Complainant contends that the Respondent has registered and used the disputed domain name in bad faith, since the disputed domain name directs Internet users to the Complainant’s official website, which is not owned by the Respondent, creating a likelihood of confusion with the Complainant’s trademark as to the source, affiliation, or endorsement of the Respondent.
Moreover, the Complainant underlines that the fact that the disputed domain name redirects to the Complainant’s official website demonstrates that the Respondent is aware of the existence and activity of the Complainant, and thus is acting in bad faith.
The Complainant adds that the control the Respondent retains over the redirection of the disputed domain name to the Complainant’s official website creates an actual or implied continuing threat to the Complainant.
Finally, the Complainant highlights the fact that the identity of the Respondent is entirely hidden on the WhoIs databases, which reinforces the presumption of bad faith, and that following the complaint, it has been informed that the Respondent was named “Ové Asche”, which is the exact phonetic correspondence with the Registrar’s name “OVH”, and that the address indicated by the Respondent when registering the disputed domain name was the same as the Complainant’s one, those two elements clearly showing that the Respondent had no intention to state its real identity and that its aim is to create confusion with the Complainant, which is a typical bad faith behavior.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsParagraph B(11)(d) of the ADR Rules provides that the Panel shall issue a decision granting the remedies requested by the Complainant in the event that the Complainant proves the following three elements:
(i) The 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) The domain name has been registered by the Respondent without rights or legitimate interest in the name; or
(iii) The domain name has been registered or is being used in bad faith.
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 lawAccording to the ADR Rules, Paragraph B(11)(d)(1)(i), the Complainant shall prove 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.
First, the Panel finds that the Complainant has provided evidence that it has rights on the NAVAL GROUP Trademark.
Then, the Panel notices that the disputed domain name is wholly and exclusively composed of (i) the NAVAL GROUP Trademark, to which have only been added (ii) a hyphen between “naval” and “group”, and (iii) the “.eu” suffix.
The Panel wishes to remind that according to ADR panels, the panel’s review consists of a comparison between the disputed domain name and the name for which a right is recognized or established by national and/or European Union law, the “.eu” suffix should be disregarded for assessing identity or confusing similarity, as well as the use of a hyphen between words (see sections 1.7 and 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”))1 .
Moreover, the first element of the ADR Rules serves essentially 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. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of the UDRP and the ADR Rules (see section 1.7 of the WIPO Overview 3.0).
Furthermore, the Panel concurs with the opinion of several prior UDRP panels which have held that the fact that a domain name wholly incorporates a complainant’s registered trademark may be sufficient to establish confusing similarity for purposes of the Policy (see section 1.7 of the WIPO Overview 3.0).
Regarding the disputed domain name, the Panel finds that it wholly and exclusively incorporates the NAVAL GROUP Trademark, so that it is identical to the trademarks on which the Complainant has rights. The hyphen between “naval” and “group would not prevent a finding of confusing similarity under the first element.
Therefore, the Panel holds that the Complainant has established the first element of Paragraph B(11)(d)(1)(i) of the ADR Rules and that the disputed domain name is confusingly similar to the Complainant’s NAVAL GROUP Trademark.
B. Rights or Legitimate InterestsAccording to the ADR Rules, Paragraph B(11)(d)(1)(ii), the Complainant shall demonstrate that the disputed domain name has been registered by the Respondent without rights or legitimate interests in the disputed domain name.
The ADR Rules, Paragraph B(11)(e), outlines circumstances that if found by the Panel to be proved shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name.
These circumstances are:
(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, organisation or natural person, has been commonly known by the domain name, even in the absence of a right recognised or established by national and/or European Union law;
(3) the Respondent is making a legitimate and non-commercial or fair use of the domain name, without intent to mislead consumers or harm the reputation of a name in which a right is recognised or established by national law and/or European Union law.
According to prior ADR panel decisions, concerning the burden of proof regarding a lack of rights or legitimate interests, the complainant only needs to establish a prima facie case and then, the onus shifts to the respondent to rebut the assertion that the respondent lacks rights or legitimate interests (see section 2.1 of the WIPO Overview 3.0).
Here, the Panel finds that the Complainant has shown prima facie that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Moreover, at the time of filing the Complaint, the disputed domain name resolved to the Complainant’s official website, whereas the Complainant had never authorized the Respondent to use its NAVAL GROUP Trademark, which does not represent an offering of goods or services, nor a legitimate and non-commercial or fair use of the disputed domain name.
Furthermore, the Respondent does not seem to be an undertaking, organisation or natural person that has been commonly known by the disputed domain name.
Finally, and in any case, the Respondent did not reply to the Complainant’s contentions.
Therefore, the Panel considers that the Respondent does not have rights or legitimate interests in the disputed domain name.
C. Registered or Used in Bad FaithAccording to the ADR Rules, Paragraph B(11)(d)(1)(iii), the Complainant shall prove that the disputed domain name has been registered or is being used in bad faith.
Thus, Paragraph B(11)(f) provides that any one of the following nonexclusive scenarios constitutes evidence of a respondent’s bad faith:
(1) Circumstances indicating that the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name to the holder of a name, in respect of which a right is recognised or established by national and/or European Union law, or to a public body; or
(2) The domain name has been registered in order to prevent the holder of such a name in respect of which a right is recognised or established by national and/or European Union law, or a public body, from reflecting this name in a corresponding domain name, provided that:
(i) the Respondent has engaged in a pattern of such conduct; or
(ii) the domain name has not been used in a relevant way for at least two years from the date of registration; or
(iii) there are circumstances where, at the time the ADR Proceeding was initiated, the Respondent has declared its intention to use the domain name, in respect of which a right is recognised or established by national and/or European Union law or which corresponds to the name of a public body, in a relevant way but failed to do so within six months of the day on which the ADR Proceeding was initiated;
(3) the domain name was registered primarily for the purpose of disrupting the professional activities of a competitor; or
(4) the domain name was intentionally used to attract Internet users, for commercial gain to the Respondent’s website or other online location, by creating a likelihood of confusion with a name on which a right is recognised or established, by national and/or European Union law, or it is a name of a public body, such likelihood arising as to the source, sponsorship, affiliation or endorsement of the website or location or of a product or service on the website or location of the Respondent; or
(5) the domain name is a personal name for which no demonstrable link exists between the Respondent and the domain name registered.
First, the Panel finds that it is established that the Complainant’s trademarks were registered before the registration of the disputed domain name.
Moreover, the Panel finds that the Respondent knew, or should have known, that its registration would be confusingly similar to the Complainant’s trademarks, given the fact that the disputed domain name exclusively reproduces the NAVAL GROUP Trademark in its entirety and, at the time of the filing of the complaint, redirected to the Complainant’s official website.
Furthermore, the Panel finds that the fact the Respondent hid its identity on the databases but registered the disputed domain name under the name “Ové Asche”, which is the exact phonetic correspondence with the Registrar’s name “OVH”, and indicated an address that is the same as the Complainant’s one, demonstrates that the Respondent was acting in bad faith when registering the disputed domain name, and intended to use it in bad faith too.
Indeed, the fact that the Respondent made the disputed domain name redirect to the Complainant’s official website shows that its purpose was to create confusion with the Complainant, and likely to sell, rent, or otherwise transfer the disputed domain name to the Complainant.
Finally, the Panel finds that the fact the Respondent retains control over the redirection of the disputed domain name to the Complainant’s official website creates an actual or implied continuing threat to the Complainant.
Consequently, in view of all the elements of this case, the Panel finds that the disputed domain name has been registered and is being used in bad faith according to ADR Rules, Paragraph B(11)(d)(1)(iii).
7. DecisionFor the foregoing reasons, in accordance with Paragraph B(11) of the ADR Rules, the Panel orders that the disputed domain name
Christiane Féral-Schuhl
Sole Panelist
Date: September 24, 2021
1 Considering the substantive similarities between the ADR Rules and the Uniform Domain Name Dispute Resolution Policy (“UDRP”), the Panel also refers to UDRP case law and analysis, where appropriate.
2 The decision shall be implemented by the Registry within thirty (30) days after the notification of the decision to the Parties, unless the Respondent initiates court proceedings in a Mutual Jurisdiction, as defined in Paragraph A(1) of the ADR Rules.