WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Atlantic Société Française de Développement Thermique v. Fundacion Private Whois
Case No. D2014-0806
1. The Parties
The Complainant is Atlantic Société Française de Développement Thermique of La Roche-sur-Yon, France, represented by Hirsch & Associés, France.
The Respondent is Fundacion Private Whois of Panama, Panama.
2. The Domain Names and Registrar
The disputed domain names <atlantic-service.com> and <thermor-service.com> are registered with Internet.bs Corp. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 15, 2014. On May 15, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 16, 2014, 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.
The Center verified that 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 the proceedings commenced on May 23, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 12, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 13, 2014.
The Center appointed J. Nelson Landry as the sole panelist in this matter on June 26, 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.
4. Factual Background
The Complainant is a French company that has been active in the field of climate engineering products and services since it was founded in 1968. Further to its initial activities in Western Europe, it expanded in Eastern Europe, Near East and the Middle East promoting and selling its products and services under two trademarks ATLANTIC and THERMOR.
The Complainant initially obtained an international registration for the trademark THERMOR on December 8, 1959 for products in class 11, including apparatus and installation for heating, steam generating, drying, ventilating, water supply and sanitary purposes and then on May 16, 2012, filed to register the French trademark THERMOR and logo, (side view of a jaguar head) in class 11 and numerous others classes including a similar line of installation, maintenance and repair services of apparatuses previously disclosed (herein "the THERMOR Trademark").
In respect of the ATLANTIC trademark, the Complainant obtained an International registration on March 29, 1995 for products in class 11, including similar heating appliances and water heaters. Then, a further International trademark registration was obtained in February 2010, for ATLANTIC and logo,(three somewhat circular and superimposed area of different color) in class 11. A community trademark ATLANTIC GROUP was applied for in April 2011, in classes 9, 11, 35, 37, 41 and 42, in particular for various services including installation, repair, and maintenance of devices for heating, ventilating, air conditioning, drying, steam generating, water supply and sanitary purposes (herein "the ATLANTIC Trademark").
The Complainant has also registered several domain names containing its ATLANTIC Trademark such as <atlantic.eu>, <atlantic.fr>, <atlantic-electrique.fr> and <atlantic-pros.fr> and several others containing its THERMOR Trademark, such as <thermor.eu>, <thermor.fr> and <thermor-heating.com> used to promote its services and products mentioned previously.
The disputed domain names were both created on March 24, 2014. The disputed domain name <atlantic-service.com> resolves to an active website at "www. atlantic-service.com" and the other disputed domain name <thermor-service.com> resolves to another active website at "www. thermor-service.com" (herein the "Respondent's active websites").
5. Parties' Contentions
The Complainant submits that the <atlantic-service.com> disputed domain name is confusingly similar with its ATLANTIC Trademark which is totally incorporated in said disputed domain name and similarly, the <thermor-service.com> disputed domain name is confusingly similar with its THERMOR Trademark which is totally incorporated in said disputed domain name and further submits that the addition of the descriptive term "-service" in each of the disputed domain names along with the generic Top-Level Domain ("gTLD") suffix ".com" does not diminish in any way the likelihood of confusion.
The Complainant maintains that the Respondent has no rights or legitimate interests in the disputed domain names and in this respect, the Complainant states first, that it has not authorized, licensed or otherwise permitted the Respondent to use its ATLANTIC or THERMOR Trademarks and second, avers that the Respondent is not commonly known by the term "Atlantic" or "Thermor" and finally that the Respondent, on its respective websites, promotes and offers for sale radiators, boilers, water heaters installation, repair and maintenance services (herein the "Respondent's products and services") in direct competition with the similar products and services of the Complainant and furthermore uses unauthorized reproductions of the Complainant's ATLANTIC and THERMOR logos and pictures of products of the Complainant.
According to the Complainant, by such use of the disputed domain names, the Respondent intentionally attempts to attract for commercial gain Internet visitors to the Respondent's active websites by creating a likelihood of confusion with the Complainant's Trademarks under the expectation that said Internet visitors so directed to the Respondent's active websites will assume that the Respondent's websites are associated with the Complainant.
The Complainant asserts that the likelihood of confusion is enhanced by the unauthorized statement on the Respondent's websites that "They are an official independent company approved by the mark" (herein the "unauthorized statement of approval").
The Complainant further notes that such attitude and representations by the Respondent to register the said disputed domain names in bad faith is not occasional but is within a pattern of such clear intention to disrupt the business of the Complainant, deceive its customers and creating an unauthorized association between the Complainant's Trademarks and the Respondent's pattern or trend of registering under such conditions confusing domain names as shown in evidence (annex 9 to the Complaint) listing more than 100 UDRP cases where the Respondent was also involved under the same name and in said decisions the transfer of the domain names was ordered for the vast majority.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that the Complainant has clearly established through its international, community and French registrations for the ATLANTIC and THERMOR Trademarks that it has rights in the said Trademarks. Each Trademark is entirely reproduced in the respective disputed domain names with the addition of the word "-service" and gTLD suffix ".com" in each disputed domain name. There are ample UDRP precedents to the effect that the addition of such descriptive term "service" and suffix does not in any way diminish the likelihood of confusion for Internet visitors and the Panel so concurs therewith.
Therefore, the Panel finds that each disputed domain name is respectively confusing with the ATLANTIC or THERMOR Trademark of the Complainant reproduced therein.
The first criterion under paragraph 4(a) of the Policy has been met.
B. Rights or Legitimate Interests
The Complainant has met its burden of establishing its prima facie representations that the Respondent does not have any rights or legitimate interests in any of the two disputed domain names, in asserting first that it had not authorized, licensed or otherwise permitted the Respondent to use its ATLANTIC or THERMOR Trademarks, second that the Respondent is not commonly known by the term "Atlantic" or "Thermor" and that the Respondent on its respective active website promotes and offers for sale products and services that are in direct competition with the goods and services of the Complainant and, without any authorization, reproduces the Complainant ATLANTIC and THERMOR logos and pictures of products of the Complainant. The Respondent did not file any Response nor denial of these facts.
On the basis of this unchallenged and reliable evidence of the Complainant, the Panel finds that the Respondent has no rights or legitimate interests with respect to any of the two disputed domain names.
The second criterion under paragraph 4(a) of the Policy has been met.
C. Registered and Used in Bad Faith
The evidence in this case, in particular the exact reproduction of each of the two ATLANTIC and THERMOR Trademarks, in the respective disputed domain names, the presence of the same category of products as those of the Complainant located in France but doing significant business throughout the whole of Europe and the Middle East and the reproduction of not only the words "Atlantic" and "Thermor", but also the reproduction on the Respondent's active websites of the respective ATLANTIC and THERMOR Trademarks is clear and convincing evidence of the knowledge by the Respondent located in Panama of the existence of those two groups of trademarks of the Complainant and of the products and services associated therewith and that the choice of the two disputed domain names was a deliberate one with the intent of attracting for commercial gain Internet users to the respective Respondent's active website, in the French language, by creating a likelihood of confusion with each of the Complainant's Trademarks as to the source, sponsorship, affiliation and endorsement at least in the countries where the French language is predominant as in France or others with significant French speaking population such as in Belgium, Switzerland, Lebanon, Algeria and Morocco,
On the basis of this most convincing evidence, the Panel finds that each of the two disputed domain names was registered in bad faith.
In addition to the confusing similarity of the two disputed domain names with the respective Trademarks of the Complainant, the presence on the Respondent's active websites of reproduction of the logo Trademarks and of some illustrations of products identical to those on the websites of the Complainant, in the view of this Panel, is a clear illustration of a use of each of the disputed domain names in bad faith.
Further evidence of such use in bad faith is found, first in the unauthorized false statement of approval by the Complainant on the Respondent's active websites and second, the Respondent's pattern of behavior namely the use in this instance as well as in more than 100 other instances by the same Respondent in the UDRP decisions listed in Annex 9 by the Complainant, in particular the use of a privacy name and registration service, a long and intensive course of action, considering in excess of 50 UDRP decisions involving the same Respondent in evidence for each year of 2012 and 2013 and finally the WhoIs Lookup report by Domain Tools disclosing that the Respondent, Fundacion Private Whois, is associated with about 449,714 other domain names in respect of each report pertaining to the two disputed domain names. These elements in this Panel's view are conclusive of such use in bad faith.
On the basis of this most convincing evidence, the Panel finds that each of the disputed domain names has been registered and is being used in bad faith by the Respondent in accordance with paragraph 4(b)(iv) of the Policy.
The Panel finds that the third criterion under paragraph 4(a) of the Policy has been met.
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, <atlantic-service.com> and <thermor-service.com> be transferred to the Complainant.
J. Nelson Landry
Date: July 7, 2014