WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Teleperformance v. Above.com Domain Privacy / Ni How, NA

Case No. D2013-0144

1. The Parties

The Complainant is Teleperformance of Paris, France, represented by Inlex IP Expertise, France.

The Respondent is Above.com Domain Privacy of Beaumaris Victoria, Australia / Ni How, NA of Nanjing, China.

2. The Domain Name and Registrar

The disputed domain name <wwwteleperformance.com> is registered with Above.com, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 22, 2013. On January 23, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 24, 2013, 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 January 28, 2013 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 amendment to the Complaint on January 30, 2013.

The Center verified that the Complaint together with the amendment to the 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 amendment to the Complaint, and the proceedings commenced on January 30, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 19, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 20, 2013.

The Center appointed Rodrigo Velasco Santelices as the sole panelist in this matter on March 1, 2013. 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, Teleperformance, is a company that serves companies around the world, providing results in managing their customer care, technical support and debt collection operations.

The Complainant is the owner of the trademark TELEPERFORMANCE, which has been registered worldwide in the European Union and the following countries: Japan, Switzerland, France, Singapore, Russian Federation, Australia, and the United States of America, among many others. (See Annexes 8 and 9 to the Complaint).

The Complainant has registered various domain names including <teleperformance.com>, <teleperformance.biz>, <teleperformance.org> and <teleperformance.info>. (See Annex 10 to the Complaint).

The disputed domain name <wwwteleperformance.com> was created on September 14, 2012.

5. Parties’ Contentions

A. Complainant

The Complainant states that the disputed domain name entirely reproduces the Complainant’s mark save the addition of the prefix “www”. The disputed domain name is identical to the Complainant’s domain names.

The Complainant states that there are no elements that show that the Respondent has a right or legitimate interest in the disputed domain name <wwwteleperformance.com>.

The Respondent is not the owner of any trademark rights, when searching trademarks on the WIPO and Australian Office databases, all results lead to Complainant’s trademark. The Respondent’s page is a parking page and is not active. Therefore the Respondent has no rights or legitimate interests in the disputed domain name.

Finally the Complainant states that the bad faith of the Respondent results from the following elements

- Well-known character of the Complainant’s trademark;

- The reproduction of a fancy and distinctive name;

- The lack of response to the cease and desist letter sent by the Complainant;

- The use given of the disputed domain name.

The Complainant states that all the above clearly demonstrates that the Respondent uses the disputed domain name to attract traffic to sponsored links in order to make commercial gain. As a result, the disputed domain name has been registered and is being used in bad faith.

B. Respondent

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

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three elements is present:

(i) the disputed domain name registered by the Respondent is 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 disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

This first element requires that the Complainant demonstrate that (1) it has trademark rights and (2) the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.

The Panel finds that the Complainant has established that it is the owner of the registered trademark TELEPERFORMANCE based on the evidence provided by the Complainant.

The disputed domain name consists of the trademark TELEPERFORMANCE plus the addition of the prefix “www”. The Panel considers that the addition of such prefix does not add distinctiveness to the disputed domain name, but quite the contrary, simply allows to create further confusion with the Complainant’s trademark and existing domain names. The addition of the prefix “www” and the “.com” suffix are insignificant.

The Panel therefore finds that the disputed domain name is identical to the Complainant’s trademark.

B. Rights or Legitimate Interests

The second element requires the Complainant to prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

By the terms used in paragraph 4(a) of the Policy it is clear that the overall burden of proof is on the Complainant, however the Policy provides the Respondent means to demonstrate its rights or legitimate interests in the disputed domain name in responding to the Complaint. If the Respondent does not make use of these means and the Complainant has established a prima facie case under paragraph 4(a)(ii), the burden of production is shifted to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name (see paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).

The Complainant asserts that the Respondent does not have rights or legitimate interests in the disputed domain name. There is no current relationship between the Complainant and the Respondent.

The Respondent has not provided a Response to the allegations set forth by the Complainant, though given the opportunity.

There is no evidence in the case file demonstrating that the Respondent might have rights or legitimate interests in the disputed domain name.

In the absence of a Response this Panel is satisfied that the Complainant has fulfilled the second element, paragraph 4(a) of the Policy and has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

This third element requires that the Complainant demonstrates that (1) the disputed domain name has been registered in bad faith and (2) is being used in bad faith.

Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances which if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.

The disputed domain name is composed of the word “teleperformance” and the addition of the prefix “www”. Furthermore, evidence provided by the Complainant shows that it is the owner of the domain name “www.teleperformance.com”. It is quite impossible for the Panel to believe that this is a mere coincidence.

It is understood that when proceeding to the registration of a domain name, paragraph 2 of the Policy implicitly requires a good faith effort to avoid registering and using domain names corresponding to third-party trademarks. The onus is on the respondent to make the appropriate enquiries to ensure that the registration of the domain name does not infringe or violate third-party rights.

Therefore, in this particular case one could presume that the Respondent registered the disputed domain name with no exploration whatsoever of the possibility of third-party rights, and with apparent disregard of whether the disputed domain name it was registering corresponded to the distinctive trademark of another. If this were the case, the Respondent’s apparent lack of any good faith attempt to ascertain whether or not the disputed domain name was infringing someone else’s trademark, such as by conducting trademarks searches or search engine searches, simply supports a finding of bad faith.

Since the Respondent registered a domain name practically identical to the trademark of another, this can only lead the Panel to conclude that the Respondent had knowledge of the Complainant’s prior rights, and by registering the disputed domain name was attempting to attract, for commercial gain, Internet users to its 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 the services provided on the website.

The Panel considers that the Respondent’s objective in registering the disputed domain name <wwwtelepreformance.com> was to create confusion in the public’s mind and more particularly to generate revenue by directing Internet users to its website.

The Panel considers that by registering a domain name corresponding to a known trademark, the Respondent has intentionally tried to divert Internet user’s to its webpage, for commercial gain. This behavior constitutes bad faith use and may tarnish the Complainant’s reputation by, among other things, attracting Internet users to a webpage that does not correspond to what they are looking for.

Furthermore, the Complainant sent a cease-and-desist letter to the Respondent requesting the transfer of the disputed domain name and the cease of use of the trademark. However, to date the Respondent has not removed such mention and remains using the trademark of the Complainant, in circumstances in which the Complainant has clearly stated that they have never given the Respondent authorization to use such trademark.

The above can only lead the Panel to conclude that the Respondent is attempting to attract, for commercial gain, Internet users to its 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 the services provided on the website.

Accordingly, for all the foregoing reasons, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

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 <wwwteleperformance.com> be transferred to the Complainant.

Rodrigo Velasco Santelices
Sole Panelist
Date: March 13, 2013