WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

MILIPOL v. Marcelo Maciel Sosa, Marcelo Alberto Maciel Sosa

Case No. D2018-0382

1. The Parties

The Complainant is MILIPOL of Paris, France, represented by Cabinet Beau de Lomenie, France.

The Respondent is Marcelo Maciel Sosa, Marcelo Alberto Maciel Sosa of Benito Juarez, Tabasco, Mexico.

2. The Domain Name and Registrar

The disputed domain name <milipol.online> (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 February 20, 2018. On February 20, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 21, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was filed using the old Model Complaint and Cover Sheet, the Complainant filed an amended Complaint on February 26, 2018.

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 2, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 22, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 23, 2018.

The Center appointed Sir Ian Barker as the sole panelist in this matter on April 3, 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. Factual Background

The Complainant MILIPOL is a French Economic Interest Group (GIE), which organizes trade shows and exhibitions related to police equipment, civil and military security, and related services. MILIPOL has been using its trademarks MILIPOL and MP MILIPOL and the trade name MILIPOL in this connection since at least as early as 1995. The events it organizes attract many visitors from many different countries.

The Complainant owns multiple registrations for its trademarks MILIPOL and MP MILIPOL throughout the world. The Complainant’s registrations of its MP MILIPOL trademark date back from February 13, 1995 and cover the following countries: France, Argentina, Brazil, Israel, Japan, Malaysia, Qatar, Saudi Arabia, Singapore, the United Arab Emirates and the United Kingdom of Great Britain and Northern Ireland. Furthermore, the Complainant also owns International trademark MILIPOL No. 1379315 registered on September 12, 2017, which covers many countries, as well as International trademark MP MILIPOL No. 641805 registered on August 10, 1995, which also covers many countries.

Apart from the multiple trademark registrations for its MILIPOL and MP MILIPOL trademarks throughout the world, the Complainant owns several “milipol” domain names such as <milipol.com> (created on June 11, 1997), <milipolqatar.com>, <milipol.us>, <milipolusa.com>, <milipol.org>, <milipol.net>, <milipol.ch>, <milipol.eu>, <milipolkorea.com>, <milipolkorea.net>, <milipolkorea.org> and <milipolintl.com>. In some of these domain listings the registrant name is listed as “GIE MILIPOL”, GIE being the Complainant’s legal form.

The MILIPOL and MP MILIPOL trademarks were used and registered before the Disputed Domain Name was registered. The Complainant has a presence on the Internet and is also well-known globally in the specialized world of internal state security. The word “milipol” does not have any ordinary meaning in the English language.

The Disputed Domain Name is not active and directs to an error page. The Disputed Domain Name was registered on January 12, 2018. The Complainant gave the Respondent no rights or permission to reflect is trademark in the Disputed Domain Name.

5. Parties’ Contentions

A. Complainant

In order to determine the identity or confusing similarity between the Disputed Domain Name <milipol.online> and the Complainant’s trademarks MILIPOL and MP MILIPOL, the generic Top-Level Domain (“gTLD”) identifier needs to be removed. See Rollerblade, Inc. v. McCrady, WIPO Case No. D2000-0429 (June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purposes of determining whether it is identical or confusingly similar).

In the present case, the Disputed Domain Name <milipol.online> reproduces the Complainant’s trademark MILIPOL, with the single addition of the gTLD <.online> and is also confusingly similar to the Complainant’s trademark MP MILIPOL (“MP” being descriptive for “military police”).

The Disputed Domain Name <milipol.online> is identical or at least confusingly similar to the Complainant’s trademarks MILIPOL and MP MILIPOL, domain names and trade name MILIPOL, since they coincide in the distinctive and dominant part “milipol”. Therefore, the requirement of paragraph 4(a)(i) is met.

There are no facts or circumstances which could give rise to a finding that any of the limits of paragraph 4(c) of the Policy could apply to the Respondent. He has not alleged any and has not filed a Response.

Thus, it is improbable that the Respondent was unaware of the Complainant’s trademark rights when it registered the Disputed Domain Name <milipol.online>, since the trademark MILIPOL has been in use since 1995.

Those circumstances indicate that the Disputed Domain Name was registered or acquired primarily for the purpose of disrupting the business of the Complainant and preventing the Complainant from reflecting its trademark in a corresponding domain name, which would be of interest for him.

Further, the Respondent does not associate the Disputed Domain Name with a good faith offering of goods and services since there is no website associated to the domain name <milipol.online>.

As to whether the Respondent’s passive use of the Disputed Domain Name constitutes bad faith, it has been considered that: “the relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith. The distinction between undertaking a positive action in bad faith and acting in bad faith may seem a rather fine distinction, but it is an important one. The significance of the distinction is that the concept of a domain name “being used in bad faith” is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith” (See UDRP decisions: Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, McDonald’s Corporation v. Easy Property, WIPO Case No. D2006-1142 and Alstom v. Itete Peru S.A., WIPO Case No. D2009-0877).

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

Ignoring as one must the gTLD suffix <.online>, the Disputed Domain Name is identical to the Complainant’s trademark MILIPOL.

Accordingly, paragraph 4(a)(i) of the Policy is established.

B. Rights or Legitimate Interests

The Complainant gave the Respondent no authority of any sort to reflect its trademarks in a domain name.

Paragraph 4(c) of the Policy could have applied to the registration of the Disputed Domain Name, had one of its three provisions been demonstrated in this case. However, the Respondent has chosen not to invoke paragraph 4(c), and the Complainant has met its burden. The Complainant’s claim that it gave the Respondent no authority is not challenged by the Respondent.

The Panel finds that the Complainant has established a prima facie case and the Respondent has failed to produce any evidence to establish rights or legitimate interests in the Disputed Domain Name. Therefore, paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

The inference that the Respondent would have known of the fame of the Complainant’s mark before registration of the Disputed Domain Name only three months ago is easy to find.

The Complainant owns a distinctive, made-up name which is used to advertise military and security events worldwide. It would be well-known to anyone with an interest in internal state security.

This is a classic Nuclear Marshmellows situation. The above quotation from that UDRP decision is appropriate. The Complainant’s trademark is well-known with a strong reputation. The Respondent has provided no evidence of any actual or contemplated good faith use of the Disputed Domain Name. Accordingly, the Respondent’s passive holding of the Disputed Domain Name betokens bad faith registration and use.

7. 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 <milipol.online> be transferred to the Complainant.

Sir Ian Barker
Sole Panelist
Date: April 10, 2018