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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Amundi S.A. v. Privacy Protect, LLC (PrivacyProtect.org) / YONG WOON CHIN

Case No. DCO2020-0095

1. The Parties

The Complainant is Amundi S.A., France, represented by Nameshield, France.

The Respondent is Privacy Protect, LLC (PrivacyProtect.org), Unites States of America / YONG WOON CHIN, Malaysia.

2. The Domain Name and Registrar

The disputed domain name <amundi-assets.co> (the “Domain Name”) is registered with Sav.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 22, 2020. On December 22, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 24, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 5, 2021 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 January 6, 2021.

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 January 22, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 11, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 16, 2021.

The Center appointed Linda Chang as the sole panelist in this matter on February 25, 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 Rules, paragraph 7.

4. Factual Background

The Complainant is a French asset management company founded in 2010.

The Complainant is the owner of international trademark number 1024160 for AMUNDI, registered on September 24, 2009, designating multiple jurisdictions including Singapore.

The Complainant is also the owner of the domain name <amundi.com>.

The Domain Name was registered on December 19, 2020 and is inactive at the moment. According to the evidence submitted by the Complainant, it used to redirect to a website reproducing the logo “Amundi ASSET MANAGEMENT” and appearing to promote asset management services in Singapore.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is identical to the AMUNDI trademark as it includes the AMUNDI trademark in its entirety while the addition of the term “assets” is not sufficient to avoid the likelihood of confusion.

The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name as the Respondent is not commonly known by the Domain Name and has not acquired any rights on the word AMUNDI.

The Complainant finally contends that the Domain Name was registered and is being used in bad faith. The Respondent was targeting the Complainant at the time of registration. The Respondent registered and uses the Domain Name in bad faith to pass off as the Complainant with the intent to deceive consumers.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

Based on the submitted evidence, the Panel is satisfied that the Complainant has rights over the AMUNDI trademark registered in 2009.

The Domain Name incorporates the term “amundi”, along with a hyphen “-“, the word “assets”, and the country code Top-Level Domain (“ccTLD”) suffix “co”. A ccTLD suffix generally is viewed as an essential element of any domain name and accordingly may be disregarded in the assessment of confusing similarity for the purposes of the Policy.

Despite of the addition of the descriptive word “assets” and the hyphen “-“, the Panel finds that the AMUNDI trademark remains clearly recognizable in the Domain Name. Adding additional elements to the AMUNDI trademark by the Respondent does not change the overall impression of the connection of the Domain Name to the AMUNDI trademark and does not escape the finding of confusing similarity.

The Panel therefore finds that the Domain Name is confusingly similar with the Complainant’s trademark AMUNDI.

B. Rights or Legitimate Interests

The Complainant confirms that it has not granted any license or authorization to the Respondent to make use of its AMUNDI trademark including applying for registration of domain names. The Complainant further confirms that it is not related with the Respondent in any way and not doing any business with the Respondent.

The Panel considers that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the Domain Name, and the burden is thus on the Respondent to produce evidence to rebut this presumption. The Respondent however did not respond to the Complainant’s contentions.

There is no indication that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a legitimate noncommercial fair use or a bona fide offering of goods and services. Using the Domain Name to redirect to a website reproducing the logo “Amundi ASSET MANAGEMENT”, which is similar to the logo used by the Complainant on its website, is not deemed as a bona fide or noncommercial fair use in the circumstances of this case.

Moreover, the Panel finds that the Domain Name carries a risk of implied affiliation. See section 2.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

In the absence of a Response and satisfactory evidence, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.

C. Registered and Used in Bad Faith

AMUNDI is a coined word and has been a registered mark held by the Complainant over the past ten years. Given the distinctiveness of the AMUNDI trademark and the fame of the Complainant, the Panel finds that the Respondent must have been aware of the Complainant and the AMUNDI trademark at the time of registering the Domain Name. Using the Domain Name to redirect to a website reproducing the logo “Amundi ASSET MANAGEMENT”, which is similar to the logo used by the Complainant on its website, further supports the finding of the Respondent’s obvious awareness of the Complainant and the AMUNDI trademark.

The Panel finds that the Respondent is targeting the Complainant and intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of a product or service on the website. Therefore, the Panel determines that the Domain Name is being used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.

The Panel therefore finds that the Respondent registered and is using the Domain Name in bad faith.

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 Domain Name <amundi-assets.co> be transferred to the Complainant.

Linda Chang
Sole Panelist
Date: March 10, 2021

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