WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Association Robert Mazars v. Steven Heard

Case No. D2012-0862

1. The Parties

The Complainant is Association Robert Mazars of La Defense Cedex, France, represented by PMR Avocats Law Firm, France.

The Respondent is Steven Heard of Rochester, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).

2. The Domain Names and Registrar

The disputed domain names <mazarsandthamesteel.com> and <mazarsandtsl.com> are registered with 1&1 Internet AG.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 23, 2012. The Complainant filed an amended Complaint on April 24, 2012. On April 23, 2012, the Center transmitted by email to 1&1 Internet AG a request for registrar verification in connection with the disputed domain names. On April 25, 2012, 1&1 Internet AG transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 26, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 16, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 23, 2012.

The Center appointed Christophe Imhoos as the sole panelist in this matter on May 31, 2012. 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 an international, integrated and independent organisation, specialising in audit, accountancy, tax, legal and advisory services provided by 13,000 professionals in 68 countries.

The Complainant has registered trademarks rights in MAZARS in many countries throughout the world. The Complaint is based on the following trademarks, among others, owned by Association Robert Mazars:

- Community trademark No. 3798402 of MAZARS filed on April 27, 2004 in classes 35, 36, 41 and 42 and registered on July 19, 2005; and

- International Registration No. 608854 of MAZARS, filed on July 30, 1993 in classes 35, 36, 41 and 42 and covering 43 countries.

The Complainant is the owner of numerous domain names such as, inter alia, <mazars.com> and <mazars.fr>, etc.

According to the publicly available WhoIs database, the Respondent registered the disputed domain names <mazarsandthamesteel.com> and <mazarsandtsl.com> on March 6, 2012.

5. Parties’ Contentions

A. Complainant

The Complainant’s arguments are mainly the following:

(i) The disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The disputed domain name registered by the Respondent is confusingly similar to trademarks in which Complainant has rights, as per copies of trademark registrations submitted.

The disputed domain name <mazarsandthamesteel.com> is similar to the mark MAZARS and to the Complainant’s domain name <mazars.com> in which the Complainant has rights. The disputed domain name incorporates the Complainant’s trademark MAZARS in its entirety. The inclusion of additional terms such as “andthamesteel” does not dispel a domain name from being identical or confusingly similar and is not sufficient to render a domain name distinctive from the marks of the Complainant.

Likewise, the disputed domain name <mazarsandtsl.com>is similar to the mark MAZARS and to the Complainant’s domain name <mazars.com> in which the Complainant has rights. The disputed domain name incorporates the Complainant’s trademark MAZARS in its entirety. The inclusion of additional terms such as “andtsl” does not dispel a domain name from being identical or confusingly similar and is not sufficient to render a domain name distinctive from the marks of the Complainant.

(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain names.

In addition, the Complainant has not licensed or otherwise permitted the Respondent to use its marks or, to apply for or to use, any domain name incorporating the trademark MAZARS. The Respondent is not commonly known by the disputed domain names and is not using the disputed domain names in good faith.

(iii) The disputed domain names were registered and are being used in bad faith.

By the insertion of the term “andthamesteel” and “andtsl” the disputed domain names have been registered in bad faith by the Respondent.

The disputed domain names, which incorporate the entirety of the trademark MAZAR, includes the additional term “andthamesteel” and “andtsl”, the addition of which serves the only purpose of disrupting the Complainant’s business (see Fadesa Inmobiliaria, S.A. v. Flemming Madsen, WIPO Case No. D2001-0570).

Mazars was appointed as joint administrator to Thamesteel Limited on January 25, the Respondent does not have rights or legitimate interests to file the disputed domain names on Mazars’ behalf.

The Respondent does not use the disputed domain names, which is evidence of its bad faith (Don Cornelius Productions, Inc. v. Bob Williamson d/b/a 1Domains, WIPO Case No. D2001- 1376; Kate Spade, LLC v. Darmstadter Designs v. Bob Williamson, WIPO Case No. D2001-1384).

On two occasions, shortly after the registration of the disputed domain names, the Complainant contacted the Respondent in order to obtain the transfer of the disputed domain names on an amicable basis. The Respondent did not reply, which is an evidence of bad faith.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy sets forth three requirements, which have to be met for the Panel to order the transfer of the disputed domain name to the Complainant. Those requirements are that:

(i) the Respondent’s domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the domain names; and

(iii) the Respondent’s domain names have been registered and are being used in bad faith.

The Panel has to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable, pursuant to paragraph 15(a) of the Rules.

The Complainant must prove in the administrative proceeding that each of the aforesaid three elements is present so as to warrant relief, according to paragraph 4(a) of the Policy.

In accordance with paragraph 14(b) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.

A. Identical or Confusingly Similar

The Complainant has established its rights in the trademark MAZARS, especially in the United Kingdom.

The Panel follows the Complainant’s view that the fact that the disputed domain names include additional terms does not dispel confusing similarity.

The Panel finds therefore that the disputed domain names are confusingly similar to the Complainant’s trademark.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances, if found by the Panel to be proved based on its evaluation of all evidence submitted, shall demonstrate rights to or legitimate interests in the disputed domain name. Those circumstances are described as follows:

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

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

(iii) the Respondent is 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.

The Respondent in not responding to the Complaint has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain names. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules (see e.g. Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009 or Isabelle Adjani v. Second Orbit Communications, Inc., WIPO Case No. D2000-0867).

The Complainant is required nevertheless make out a prima facie case that the Respondent lacks rights or legitimate interests (see Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).

As rightly pointed out by the Complainant, it has not granted any license or otherwise permitted the Respondent to use the Complainant’s trademark or to apply for any domain names incorporating the Complainant’s trademark. Moreover, the Respondent is not known by the disputed domain names.

Under these circumstances and absent evidence to the contrary, the Panel is unable to find any evidence that would tend to establish that the Respondent has rights or legitimate interests in respect of the disputed domain names.

The Panel finds therefore that the Respondent does not have rights or legitimate interests with respect to the disputed domain names.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Anyone of the following behaviors is sufficient to support a finding of bad faith:

(i) circumstances indicating that the Respondent has registered or the Respondent has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that the Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) the Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or

(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other on-line location, 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 location or of a product or service on the Respondent’s website or location.

As already mentioned, the Respondent did not file any response to the Complaint, failing thereby to invoke any circumstance which could demonstrate that the registration and use of the disputed domain names were not in bad faith.

Nevertheless, the Panel still has the responsibility of determining which of the Complainant’s assertions are established as facts, and whether the conclusions asserted by the Complainant can be drawn from the established facts (see Harvey Norman Retailing Pty Ltd v. Oxford-University, WIPO Case No. D2000-0944).

The disputed domain names <mazarsandthamesteel.com> and <mazarsandtsl.com> are not active; added to the fact, pointed out by the Complainant in its Complaint, that the Respondent did not address any of the former’s communications referred to above shows bad faith registration and use within the meaning of the Policy and previous UDRP panels decisions, some of them cited by the Complainant.

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 names <mazarsandthamesteel.com> and <mazarsandtsl.com> be cancelled.

Christophe Imhoos
Sole Panelist
Dated: June 14, 2012