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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Clardim v. Domains by Proxy LLC / Igor Raspoutine

Case No. D2016-0495

1. The Parties

The Complainant is Clardim of Paris, France, represented by UGGC Avocats, France.

The Respondent is Domains by Proxy LLC of Scottsdale, Arizona, United States of America / Igor Raspoutine of Reykjavik, Iceland.

2. The Domain Name and Registrar

The disputed domain name <clardim.com> (the “Disputed Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 11, 2016. On March 11, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 11, 2016, 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 March 15, 2016 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 March 17, 2016.

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 March 18, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 7, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 8, 2016.

The Center appointed Nick J. Gardner as the sole panelist in this matter on April 20, 2016. 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 Background

The Complainant is a French limited liability company. It is a real estate agency based in Paris and has a turnover of approximately EUR 800,000 a year. It owns French registered trademark no 3600802 in respect of the word “Clardim” which was filed on September 25, 2008. It operates a website promoting its business at “www.clardim.fr”.

The Disputed Domain Name was registered on January 6, 2015. Until December 2015 the Disputed Domain Name was used in relation to a website (the “Respondents’ Website”) which at first sight appears to be that of the Complainant but which when reviewed more carefully contains material critical of the Complainant in particular and of real estate agents in general. Contact details on the Respondents’ Website contain the correct name and address of the Complainant but an email address which is not that of the Complainant. The website in question ceased operation in December 2015 after a cease and desist letter was sent by the Complainant’s representatives to the Respondents. The Disputed Domain Name was renewed by the Respondents on January 6, 2016.

5. Parties’ Contentions

A. Complainants

The Complainant’s case can be summarized as follows.

a) The Disputed Domain Name is identical to the CLARDIM trademark.

b) The Respondents do not have any rights or legitimate interests in the Disputed Domain Name.

c) The Respondents’ registration of the Disputed Domain Name was in bad faith as they must have had the Complainant’s trademarks in mind, and their use the Disputed Domain Name is in bad faith as the Respondents’ Website makes use of the Complainant’s trademark in order to impersonate the Complainant and confuse visitors to the website into believing the site is that of the Complainant. The critical content of the Respondents’ Website is inaccurate and unsupported by any evidence. Furthermore the Respondent Igor Raspoutine’s contact details are manifestly false.

B. Respondents

The Respondents did not reply to the Complainant's contentions.

6. Discussion and Findings

Preliminary Matters

As a preliminary issue the Panel notes this is a case where one of the Respondents (Domains by Proxy LLC) appears to be a privacy or proxy registration service while the other Respondent (Igor Raspoutine) appears to be the substantive Respondent. The Panel in this case adopts the approach of most UDRP panels, as outlined in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.9, as follows “Most panels in cases involving privacy or proxy services in which such disclosure of an underlying registrant has occurred, appear to have found it appropriate to record in their issued decision both the name of the privacy or proxy registration service appearing in the WhoIs at the time the complaint was filed, and of any disclosed underlying registrant”. Accordingly this decision refers to both Respondents. It is not in practical terms necessary to distinguish which Respondent was responsible for specific acts.

The Panel also notes that no communication has been received from the Respondents. However given the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar then the Panel again adopts the approach set out in the WIPO Overview 2.0, paragraph 4.9, namely, “once the WIPO Center has notified the complaint to the WhoIs-listed contact information (especially where confirmed by the registrar) for the domain name registrant, this would normally satisfy the requirement in paragraph 2(a) of the UDRP Rules to employ reasonably available means calculated to achieve actual notice”. Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondent’ failure to file any Response. While the Respondents’ failure to file a response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondents’ default (see e.g. Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909).

Substantive Matters

Paragraph 4(a) of the Policy states that the Complainant must prove each of the three following elements:

(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondents have no rights or legitimate interests in respect of the Disputed Domain Name; and

(iii) the Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has submitted evidence that it is the owner of a registered trademark for CLARDIM (the “CLARDIM trademark”). The “.com” top-level domain is disregarded when considering the identity or confusing similarity between the Disputed Domain Name and the Complainant’s trademark – see for example Herbalife International, Inc. v Herbalife.net , WIPO Case No. D2002-02343. Accordingly the Panel holds that the Disputed Domain Name is identical to the CLARDIM trademark.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy non-exhaustively lists three circumstances that demonstrate a right or legitimate interest in a domain name:

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

None of these apply in the present circumstances. The Complainant has not authorized, licensed, or permitted the Respondents to register or use the Disputed Domain Name or to use the CLARDIM trademark. The Complainant has prior rights in the CLARDIM trademark which precede the Respondents’ registration of the Disputed Domain Name. The Complainant has therefore established a prima facie case that the Respondents have no rights or legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondents to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see for example Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

The Panel finds that the Respondents have failed to produce any evidence to establish any rights or legitimate interests in the Disputed Domain Name. Further, for reasons discussed in Section C below, the Panel does not find that the former use of the Disputed Domain Name gives rise to rights or legitimate interests. Accordingly the Panel finds that the Respondents have no rights or legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled.

C. Registered and Used in Bad Faith

The Respondents have clearly registered the Disputed Domain Name because it is in substance the Complainant’s name. The content of the Respondents’ Website shows this was intentional and appears to be part of some sort of complaint or protest about the activities of the Complainant in particular, and real estate agents in general. In these circumstances the Panel agrees with, and adopts the view of the panel set out in Anastasia International Inc. v. Domains by Proxy Inc./rumen kadiev, WIPO Case No. D2009-1416 as follows:

“Although the Complainant in the present case makes various assertions in terms of paragraph 4(b) of the Policy, the Panel does not believe that this case fits squarely within any of the non-exclusive circumstances provided therein. [omitted] The circumstances set out in paragraph 4(b) of the Policy are non-exclusive and in the present case, the Panel has reached the view that the disputed domain name was registered and used by the Respondent in bad faith for alternative reasons.

It is clear both from the Respondent’s informal communication and from the content of the website associated with the disputed domain name that the Respondent’s intention from the outset was to express on the Internet certain views that are critical of the Complainant’s business practices. As noted above, this in itself is a potentially legitimate and good faith activity. Nevertheless, for that purpose, the Respondent selected a domain name which is not its own name and which the Respondent evidently was aware was identical to the Complainant’s corporate and trading name. In so doing, the Respondent would also have been aware that the disputed domain name would be likely to make a misrepresentation to the typical Internet user that any associated website was owned and operated by the Complainant and that, as the panel in Compagnie Generale des Matieres Nucleaires v. Greenpeace International, WIPO Case No. D2001-0376 puts it, the disputed domain name would ‘catch by surprise’ visitors intending to reach the Complainant’s website. In the Panel’s view, the consequence is that the Respondent’s actions are tainted, no matter whether it genuinely believed the criticisms or opinions expressed on the website associated with the disputed domain name and whether it was acting out of non-commercial or, as the Complainant asserts, commercial motives.”

The present Panel concludes that the same is the case here – the Respondents have adopted what is in substance the Complainant’s name and mark for their website and that amounts to registration and use in bad faith, irrespective of the content of the Respondents’ Website. The Panel is further reinforced in this view by the fact that the name and contact details of the Respondent “Igor Raspoutine” are clearly false. His name corresponds to the well known historical character and the Complainant has filed evidence showing the address and telephone number provided for him do not exist. In this respect see for example Salomon Smith Barney Inc v. Salomon Internet Services, WIPO Case No. D2000-0668 (“The Panel bases its determination on the fact that Respondent has taken steps to conceal its true identity, by operating under a name that is not a registered business name and by actively provided false contact details…”). Although the Respondents’ Website ceased operation after the Complainant’s representatives sent a cease and desist letter, the Respondents then renewed the Disputed Domain Name and in the Panel’s view their continued passive holding of it represents ongoing bad faith use given the way they have previously used the Disputed Domain Name – in the light of the filed evidence there is no legitimate good faith use the Respondents’ can make of the Disputed Domain Name.

As a result, and applying the principles in the above noted UDRP decisions, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith. Accordingly, the third condition of paragraph 4(a) of the Policy has been fulfilled.

7. Decision

For all 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 <clardim.com> be transferred to the Complainant.

Nick J. Gardner
Sole Panelist
Date: May 6, 2016

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