WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Association Robert Mazars v. François Varin, Jerome Adrien, Laurent Bernard, Nicolas Mazars
Case No. D2014-0498
1. The Parties
The Complainant is Association Robert Mazars of Cedex, France, represented by Carakters, France.
The Respondents are François Varin, Jerome Adrien, Laurent Bernard and Nicolas Mazars of Paris, France.
2. The Domain Names and Registrars
The disputed domain names <audit-mazars.com>, <auditmazars.com>, <mazars-finance.com> and <mazars-fusacq.com> are registered with REGISTER.IT SPA, Gandi SAS and French Connexion DBA DOMAINE.FR (the “Registrars”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 28, 2014.
On March 28, 2014, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On March 31 and April 01, 07, 08, 2014 the Registrars transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details. On April 04, 2014, the Center received the first amendment to the Complaint.
According to the information received from REGISTER.IT SPA, the concerned registrar for the domain names <auditmazars.com> and <audit-mazars.com>, the language of the registration agreement for these domain names is English. According to the information received from French Connexion DBA DOMAINE.FR and Gandi SAS, the concerned registrars for the domain names <mazars-fusacq.com> and <mazars-finance.com> respectively, the language of the registration agreement for these domain names is French. Accordingly, the Complainant was requested to provide at least one of the following: 1) satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English; 2) submit the Complaint translated into French (in relation to the domain names <mazars-fusacq.com> and <mazars-finance.com>); 3) submit a request for English to be the language of the administrative proceedings. The Complainant filed a translated Complaint in French in relation to the domain names <mazars-fusacq.com> and <mazars-finance.com> on April 25, 2014.
In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed a second amendment to the Complaint on May 16, 2014.
On May 19, 2014, the Center notified by email to the Respondents that in accordance with the paragraph 11 of the rules, the Panel has the authority to determine the language of proceedings and consequently may choose to write the decision in either language.
The Center verified that the Complaint together with the translated Complaint and the amendments 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 Respondents of the Complaint in English and in French, and the proceedings commenced on May 21, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 10, 2014. The Respondents did not submit any response. Accordingly, the Center notified the Respondent’s default on June 11, 2014.
The Center appointed Martine Dehaut as the sole panelist in this matter on June 20, 2014. 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.
On July 11, 2014, the Panel issued a Panel Order No 1 in which Complainant was invited to submit arguments and additional evidence to demonstrate that the four domain names are under common control of a single entity. No answer to the Panel Order from the Complainant nor from the Respondent was received.
4. Factual Background
The Complainant, the Association Roberts Mazars appears to be related to the Group Mazars which is a global audit, accounting and consulting group with head offices in France. According to Wikipedia on which the Complainant is relying, Mazars is the 11th largest accounting firm in the world and is well known by professionals throughout the world.
The Complainant is the owner of numerous Trademark registrations over the name MAZARS, including the following:
- Community Trademark No. 608854, filed on July 30, 1993, in classes 35, 36, 41 and 42;
- Community Trademark No. 3798402 filed on April 27, 2004 in classes 35, 36, 41, and 42;
- French Trademark No. 93455461 filed on February 16, 1993 in classes 35, 41 and 42;
- French Trademark No. 93472799 filed on June 18, 1993 in class 9.
The four disputed domain names were registered by apparently different individuals, as follows:
- <auditmazars.com> registered in the name of Jérôme Adrien with the Registrar REGISTER.IT SPA on February 24, 2014
- <audit-mazars.com> registered in the name of Laurent Bernard with the Registrar REGISTER.IT SPA on January 30, 2014
- <mazars-finance.com> registered in the name of Nicolas Mazars with the Registrar Gandi SAS on January 31, 2014
- <mazars-fusacq.com> registered in the name of François Varin with the Registrar French Connection DBA DOMAINE.FR on February 17, 2014.
The four disputed domain names are inactive.
Consolidation of the disputes regarding the four disputed domain names is requested by the Complainant.
Considering that the language of the proceeding should be the language of the registration Agreement, i.e. English regarding the disputed domain names <auditmazars.com> and <audit-mazars.com> and French regarding the disputed domain names <mazars-finance.com> and <mazars-fusacq.com>, the Complainant filed its Complaint in these two languages.
The Center did not receive any comments from the Respondents as to the language to be adopted for the proceeding.
Consequently, and according to the Rules, the choice of the language with regards to the circumstances of the cases is subject to the authority of the Panel.
As discussed below, the choice of the language depends on the consolidation issue.
5. Parties’ Contentions
Firstly, the Complainant asks for the consolidation of the disputes regarding the four disputed domain names according to paragraph 3(c) and 10(e) of the Rules considering that many factors demonstrate that the disputed domain names are subject to common control under a single identity such as:
- The Registrar of the disputed domain names for <mazars-finances.com> and <audit-mazars.com> are the same (i.e. REGISTER.IT SPA);
- The disputed domain names have the same structure;
- The addresses of the Registrants are inaccurate and incoherent. Indeed, the Respondents do not live at those addresses. Besides all the cease and desist letters sent by the Complainant have been returned;
- The disputed domain names are inactive;
- The disputed domain names were all registered within a very close period of time (between January and February 2014) evidencing that the disputed domain names are subject to a common control under a single identity. The Complainant observes that it is the first time that it has to face such domain name registrations within a short period of time.
Additionally, the Complainant contends that the disputed domain names are similar to the Complainant’s Trademarks to the extent that they incorporate entirely the Trademark. The inclusion of additional terms such as “finance”, “audit” and “fusacq” does not dispel the disputed domain names from being identical or confusingly similar, taking into consideration that such terms correspond to the main activities of the Complainant and are not distinctive. It is to be noted that the term “fusacq” corresponds to “merger and acquisition” in French.
The Complainant asserts that it has not licensed or otherwise permitted the Respondents to use its Trademarks or to apply for or use any domain names incorporating the Trademark MAZARS and contends that the Respondents have no rights and legitimate interests in respect of the disputed domain names.
According to the Complainant, it is obvious that the disputed domain names were registered and are used in bad faith. In effect, the Complainant considers that the Respondents knew or should have known the Complainant’s trademarks at the time of the registration of the disputed domain names. According to the Complainant, a trademark search and/or a search on the Internet to websites such as Wikipedia would have revealed details of the Complainant’s presence and trademarks.
The Complainant is of the opinion that the well-known character of its Trademarks, and its notoriety in the field of audit, accounting and consulting, makes unlikely that the registration of the disputed domain names would be coincidental.
Moreover, it is noted by the Complainant that the addresses of the Respondents as mentioned in the WhoIs are inaccurate and incoherent.
The disputed domain names being inactive, the Complainant relies on the so called “passive holding” case-law to consider that they are being used in bad faith.
Considering the above, the Complainant asks for the transfer of the four disputed domain names.
The Respondents did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to the Paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements to obtain either the cancellation or the transfer of the disputed domain name:
(i) the disputed domain names are 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 names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
A. Preliminary Procedural issue
The first issue to be discussed is whether the conditions of consolidation of the disputes are met.
It should be recalled, as noted by the panel in the case Speedo Holdings B.V.v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281, that although paragraph 10(e) of the Rules empowers panels to consolidate multiple domain name disputes in accordance with the Policy and the Rules, neither the Policy nor the Rules provide for the consolidation of multiple respondents per se.
Although paragraph 3(c) of the Rules merely states that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder, the paragraph 4.16 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (the “WIPO Overview 2.0”) states that WIPO panels have articulated principles governing the question of whether a complaint filed with WIPO may be brought against multiple respondents. These criteria encompass situations where (i) the domain names or the websites to which they resolve are subject to common control, and (ii) the consolidation would be fair and equitable to all the parties.
These principles have been duly recalled in the WIPO Case No. D2010-0281 supra which reviewed the relevant UDRP decisions relating to multiple domain name disputes and considering that the consolidation may be appropriate, even where ostensibly differently named domain name registrants are involved, where the particular circumstances of a given case indicate that common control is being exercised over the disputed domain names or the websites to which the domain names resolve. Indicia of common control, resulting from the review of the relevant cases, are mentioned such as the presence of a common administrative or technical contact, instances of commonality in the registration information, such as the same postal address or email address or websites substantially identical and referring the Internet visitors to a common homepage.
In this instance and after giving the Complainant an opportunity to provide further evidence regarding the consolidation of the Respondents, the Panel is of the opinion that the conditions of consolidation are not met regarding the disputed domain names <mazars-finance.com> and <mazars-fusacq.com>. Indeed, the facts alleged by the Complainant such as the claimed identical structure of the disputed domain names, the inaccuracy and incoherence of the Respondents’ addresses, the inactivity of the respective websites and a very close date of registration, are not sufficient to establish with a high degree of certainty that a common control is exercised on the disputed domain names <mazars-finance.com> and <mazars-fusacq.com>. While the Panel notes that it is possible these two domain names may have been registered by the same person, the Complainant has not provided sufficient objective evidence for this Panel to accept a consolidation of the disputes. For example, two of the disputed domain names share identical contact information whereas the third and fourth differ. Also, there is no evidence of common patterns of email addresses. Finally, the disputed domain names range from PPC, to unresolved, to a registrar advertising page. Without more, it is unclear for this Panel that these disputed domain names are under common control.
Of course, according to the general principles, the Complainant is not precluded from filing new complaints against each of these domain names.
On the contrary, in the light of the circumstances of the present case and of the general principles deriving from the relevant WIPO decisions regarding the question of consolidation, the Panel finds that consolidation can be allowed regarding the disputed domain names <auditmazars.com> and <audit-mazars.com>. These two domain names are nearly identical, and are registered with the same Registrar i.e. REGISTER.IT. SPA. Such circumstances are serious additional indicia indicating that these two disputed domain names are subject to a common control.
Regarding these two cases, the Panel considers that consolidation would be fair and equitable to all parties and procedurally efficient.
In view of the above, the Panel will issue a decision solely as regards the disputed domain names <auditmazars.com> and <audit-mazars.com>.
The language of the registration agreements of these two disputed domain names being English, the Panel determines that English is the language of the proceeding and decides to deliver the decision in English.
B. Identical or Confusingly Similar
The Panel notes that the Complainant is the owner of various Trademark registrations for MAZARS in several classes among which the international class covering financial services as well as audit services.
The confusing similarity of the disputed domain names between the Complainant’s Trademarks is obvious, as the Trademark MAZARS is entirely incorporated in the disputed domain names <mazarsaudit.com> and <mazars-audit-com>.
The association of the descriptive term “audit” to the name “Mazars” is not likely to prevent any risk of confusion. On the contrary, the fact that such a term expressly describes one of the main activities of the Complainant reinforces such a risk.
Consequently, the Panel considers that the requirement of paragraph 4(a) of the Policy is satisfied.
C. Rights or Legitimate Interests
Following the second condition of paragraph 4(a) of the Policy, the Complainant has to prove that the Respondent has no rights or legitimate interests in respect of the disputed domain names.
Following standard practice, the Complainant has asserted not to have granted to the Respondent any authorization to use the Trademark MAZARS whatsoever, nor to have granted any license giving the right to the Respondents to use the disputed domain names
Absent of any defense on this point by the Respondents, and any active use of the disputed domain names, the Panel concludes that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain names, and the Respondent has not rebutted such case.
Accordingly, the Panel finds that the second requirement of paragraph 4(a) of the Policy is satisfied.
D. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, the Complainant must prove that the Respondents have registered and used the disputed domain name in bad faith. Paragraph 4(b) of the Policy gives examples of circumstances which constitute evidence of both bad faith registration and use.
For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have 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 complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.
To satisfy with the requirements set forth in article 4(a)(iii), the Complainant contends that the Respondent knew its trademarks, or at least should have conducted the necessary searches either in the trademarks databases, or in the Internet, before registering the disputed domain names.
The Panel observes that according to the domain names’ registration agreements binding on the Respondents, the Registrants have to take the necessary measures to avoid any violation of third parties rights.
Furthermore, the Panel is convinced that the Respondents, whose surnames are French and whose domiciles are in France, could not ignore the Complainant’s trademark MAZARS, which appears to be well known in the field of financial and audit services.
Consequently, the Panel is of the opinion that the Respondents have obviously registered the disputed domain names in bad faith with the Complainant’s Trademark and activities in mind.
Turning now to the lack of legitimate use, the Panel has to determine whether the fact that the disputed domain names are not now active, but have in the past been used for pay-per-click purposes could be regarded as a bad faith passive holding.
Complainant having a well-known trademark, no response to the complaint having been filed, and the registrant’s concealment of its identity.
In the present case, the bad faith behavior of the Respondents results clearly of their lack of responses to the complaint, and to the inaccuracy and incoherence of their addresses and telephone numbers.
In view of the above, the Panel considers that all the circumstances of the cases are indicative of a bad faith passive holding.
Considering the above, the Panel holds that the requirement of paragraph 4(a)(iii) is satisfied.
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 <audit-mazars.com> and <auditmazars.com> be transferred to the Complainant.
However, the Panel refuses the consolidation request with respect to the domain names <mazars-finance.com> and <mazars-fusacq.com>. As a consequence, the Complaint is denied regarding these two domain names.
The Panel invites the Complainant to file new complaints with respect to these two domain names.
Date: July 30, 2014