The Complainant is E. Gergonne SAS of Oyonnax, France, represented by Nameshield, France.
The Respondent is Private Person / Dacinoi Flaviu-Constantin of Pitesti, Romania. 2. The Domain Name and Registrar
The disputed domain name is registered with ROTLD (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 14, 2017. On November 14, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 15, 2017, 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 November 20, 2017, 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 November 20, 2017.
On November 20, 2017, the Center notified the Parties in both English and Romanian that the language of the Registration Agreement for the disputed domain name was Romanian. On the same day, the Complainant requested for English to be the language of the proceeding, to which the Respondent did not reply.
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 November 29, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 19, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 26, 2017.
The Center appointed Dr. Beatrice Onica Jarka as the sole panelist in this matter on January 23, 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. Language of the proceedings
Following the registrar’s confirmation as to the language of the registration agreement being Romanian as the Complaint has been submitted in a language other than that of the registration agreement, the Center notified both parties (in English and Romanian) of the discrepancy between the language of the registration agreement and the language of the Complaint.
At the notification of the Center, the Complainant requested on November 29, 2017, that the language in this case shall be English for the following grounds:
- the English language is the language most widely used in international relations and is one of the working languages of the Center;
- in order to proceed in Romanian, the Complainant would have had to retain specialized translation services at a cost very likely to be higher than the overall cost of these proceedings;
- the use of Romanian in this case would therefore impose a burden on the Complainant which must be deemed significant in view of the low cost of these proceedings;
- the Center informed the Respondent in Romanian and afforded the Respondent the opportunity to do all of the above in Romanian.
According to WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.5.2., pursuant to paragraph 11 of the UDRP Rules, unless otherwise agreed by the parties, the default language of the proceeding is the language of the registration agreement, subject to the authority of the panel to determine otherwise. Further, noting the aim of conducting the proceedings with due expedition, paragraph 10 of the UDRP Rules vests the Panel with authority to conduct the proceedings in a manner it considers appropriate while also ensuring both that the parties are treated with equality, and that each party is given a fair opportunity to present its case. Considering that the Respondent in this case was given the opportunity to comment on or to oppose (if it wishes, in the language of the Registration Agreement) to the Complainant’s arguments – who requested to have these proceedings in English language- but did not present any submission in this regard, the Panel decides with the view to the Complainant’s arguments that English is the language of these proceedings. 5. Factual Background
The Complainant is a part of the GERGONNE Group, a fast-growing independent French industrial group, established in 1962 by Pierre and Simonne Gergonne.
In 2016, with a growth of 15%, the Group of the Complainant achieved a turnover of EUR 60 million, almost three-quarters of which was due to exports.
The Complainant owns numerous international and French trademark registrations. The Complainant owns the French Trademark GERGONNE No. 3844724, registered on July 7, 2011, and the International Trademark GERGONNE No. 1135144, registered on September 7, 2012, (hereinafter referred to as the “Complainant’s trademark”.
Furthermore, the Complainant owns and communicates on the Internet through various websites worldwide. In this regard, the Complainant is the owner of the domain name , registered on April 30, 2002, and other domain names reproducing GERGONNE trademark.
The disputed domain name was registered by the Respondent on November 24, 2013. 6. Parties’ Contentions A. Complainant
The Complainant contends that:
- the disputed domain name is identical to its trademark GERGONNE, as it contains the Complainant’s trademark without adjunction of any letter or word;
- the addition of the country code Top-Level Domain (“cctld”) “.ro” does not change the overall impression of the designation as being connected to the GERGONNE trademark of the Complainant;
- the Respondent has no rights or legitimate interests in respect of the disputed domain name and is not related in any way to the Complainant;
- the Complainant does not carry out any activity for, nor has any business with the Respondent;
- neither license nor authorization has been granted to the Respondent to make any use of the GERGONNE trademark or apply for registration of the disputed domain name;
- the disputed domain name points to a Registrar parking page since its registration, which presumes a lack of legitimate interest to use the disputed domain name;
- the Complainant contends that the Respondent has registered the disputed domain name in order to prevent the trademark holder or service mark from reflecting the mark in a corresponding domain name, in accordance to paragraph 4(b)(ii) of the Policy. Thus, the Complainant contends the Respondent has registered and is using the disputed domain name in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 7. Discussion and Findings A. Identical or Confusingly Similar
The Policy requires that the Complainant show that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
Based on the assertions of the Complainant and the evidence presented supporting these assertions, the Panel finds that the Complainant holds rights in the GERGONNE marks.
This Panel also finds that the disputed domain name is identical to the Complainant’s registered GERGONNE marks because it fully incorporates the dominant element of the GERGONNE marks and merely adds the ccTLD “.ro”, which is typically disregarded under the first element analysis.
For all the reasons above, the Panel finds that the disputed domain name is identical to the GERGONNE marks and that the Complainant has established the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Under this element of the Policy, the Complainant has to make at least a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. If the Complainant makes that showing, the burden of production shifts to the Respondent, see WIPO Overview 3.0, section 2.1. This Panel finds that the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and such showing has not been rebutted by the Respondent, as he did not reply to the Complainant’s contentions.
Moreover, the Panel finds the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name nor is he using the disputed domain name in connection with a bona fide offering of goods or services, so as to confer a right or legitimate interest in it in accordance with paragraph 4(c)(i) of the Policy given that the website at the disputed domain name simply refers to an inactive page.
Accordingly, the Complainant has demonstrated that the Respondent lacks any rights or legitimate interests in the disputed domain name and therefore, the second element of paragraph 4(a) of the Policy is established. C. Registered and Used in Bad Faith
The Complainant asserts several circumstances which, in the opinion of the Panel, represent evidence the bad faith of the Respondent in registering and using the disputed domain name.
The Complainant contends that the passive use of the domain name represents an indication of lack of rights and legitimate interests which is also an indication of bad faith registration and use under the Policy.
According to the WIPO Overview 3.0, section 3.3., “[f]rom the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, … and (iv) the implausibility of any good faith use to which the domain name may be put.”
In this case, this Panel considers that the factors relevant in applying the passive holding doctrine are met, as: the Complainant's trademark is sufficiently distinctive and has a reputation, the Respondent failed to submit a Response and in the circumstances there is no plausibility of any good use to which the disputed domain name may be put. Nevertheless, the presumption introduced by the Complainant as to the registration of the domain name in order to prevent the trademark holder or service mark from reflecting the Complainant’s mark in a corresponding domain name has no support, in the opinion of this Panel, as no specific use of the disputed domain name had been made in order to lead to such presumption.
However, on the totality of the circumstances and in the absence of an evidence or explanation from the Respondent, the Panel finds the Complainant has sustained its contentions for purposes of the Policy.
Accordingly, the Complainant has demonstrated that the Respondent registered and used in the bad faith the disputed domain name and therefore, the third element of paragraph 4(a) of the Policy is established. 8. 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.
Dr. Beatrice Onica Jarka
Sole Panelist
Date: February 6, 2018
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