WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Materis Corporate Services SAS v. Gwen Denez
Case No. D2015-0409
1. The Parties
The Complainant is Materis Corporate Services SAS, of Issy-les-Moulineaux, France, represented by Società Italiana Brevetti S.p.A., Italy.
The Respondent is Gwen Denez, of Saint-Denis, Ille-et-Vilaine, France.
2. The Domain Name and Registrar
The disputed domain name <materispaints-eu.com> is registered with Register.it S.p.A. (the “Registrar”).
3. Procedural History
The Complaint was filed in Italian with the WIPO Arbitration and Mediation Center (the “Center”) on March 9, 2015. On March 9, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 10, 2015, 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.
On April 15, 2015, the Center notified the Parties that the Complaint had been submitted in Italian and that, according to information received from the Registrar, the language of the registration agreement for the disputed domain name was English. The Center requested the Complainant to provide the Center with (1) satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in Italian; or (2) submit the Complaint translated into English; or (3) submit a request for Italian to be the language of the administrative proceedings. On April 16, 2015, the Complainant requested Italian to be the language of the proceeding. The Respondent did not reply.
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 April 28, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 18, 2015. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on May 26, 2015.
The Center appointed Louis-Bernard Buchman as the sole panelist in this matter on June 11, 2015. 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 which is a European leader in paints and chemical products for the construction industry, with sales in 24 countries. The Complainant has 88 production sites and more than 9,000 employees. The Complainant is the owner of the Community Trademark MATERIS PAINTS, registered on September 15, 2006 under number 4722591 (“the Mark”). The Complainant is the registrant of the domain name <materis.com>.
The Complainant’s wholly-owned affiliated company Materis Peintures is also the registrant of, among others, the domain name <materis-paints.com>, which resolves to its website.
The disputed domain name <materispaints-eu.com> was created on June 30, 2014 and while active, resolved to the domain name <materis-paints.com> and website.
5. Parties’ Contentions
(i) The Complainant submits that the disputed domain name <materispaints-eu.com> reproduces the Mark in which the Complainant has rights and is confusingly similar to the Mark.
(ii) The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Furthermore, the Complainant contends that it never authorised the Respondent to register or use the Mark as a domain name.
(iii) The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith and is using the disputed domain name with the fraudulent intent to lure Internet users into the belief that the Respondent is, or is acquainted with, the Complainant, in effect faking the identity of the Complainant’s affiliated company.
(iv) The Complainant submits that by registering the disputed domain name, the Respondent sought to misleadingly divert Internet users for commercial gain.
(v) The Complainant requests that the disputed domain name be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Procedural Aspects
A. Language of the Proceeding
Paragraph 11(a) of the Rules provides that “Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”.
The Complaint was filed in Italian. The Registrar confirmed that the language of the Registration Agreement of the disputed domain name is English.
The Complainant requested that the proceeding take place in Italian, and submitted that it would incur undue costs if it had to refile the Complaint in English.
Considering the lack of a response from the Respondent, which has indicated an address in France, as well as the fact that using English, rather than Italian, would not create an undue detriment or burden for the Complainant which is a French company within an international group, the Panel determines that there are valid grounds to decide to use English rather than Italian, and that, pursuant to paragraph 11(a) of the Rules, the language of the proceeding is English.
B. Failure to respond
The Respondent is formally in default pursuant to paragraphs 5(e) and 14(a) of the Rules and paragraph 8(c) of the Supplemental Rules, because no Response was received from the Respondent within the time limit set by the Policy and the Rules.
Under the Rules, paragraphs 5(e) and 14(a), the effect of a default by the Respondent is that, in the absence of exceptional circumstances, the Panel shall proceed to a decision on the basis of the Complaint.
Under paragraph 4(a) of the Policy, it is the Complainant’s burden to establish that all three of the required criteria for a transfer of the disputed domain name have been met.
Under paragraph 14(b) of the Rules, the Panel is empowered to draw such inferences from the Respondent’s default as it considers appropriate under the circumstances.
In this case, the Panel finds that as a result of the default, the Respondent has failed to rebut any of the reasonable factual assertions that are made and supported by evidence submitted by the Complainant. In particular, by defaulting and failing to respond, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has any rights or legitimate interests in the disputed domain name, such as making legitimate noncommercial or fair use of the disputed domain name.
Moreover, as discussed below, the Respondent has failed to provide any exculpatory information or reasoning that might have led the Panel to question the Complainant’s arguments that the Respondent has acted in bad faith.
6.2 Requirements of paragraph 4(a) of the Policy
A. Identical or Confusingly Similar
In comparing the disputed domain name <materispaints-eu.com> with the Mark, the Panel finds that the Mark is replicated entirely in the disputed domain name, the latter simply adding the suffix “eu”, which is a generic abbreviation of “European Union”.
The consensus view of UDRP panels is that the addition of generic or descriptive terms does not generally serve to distinguish a domain name from a registered trademark. See Banconsumer Service, Inc. v. Mary Langthorne, Financial Advisor, WIPO Case No. D2001-1367; Royal Bank of Canada v. RBC Bank, WIPO Case No. D2002-0672; and Allianz AG v. Marian Dinu, WIPO Case No. D2006-0318.
In this case, the Panel finds that the “eu” component of the disputed domain name <materispaints-eu.com> is a generic term, and that the dominant component of the disputed domain name is “materispaints”.
It is also well established that the generic Top-Level Domain such as “.com” does not generally affect the assessment of a domain name for the purpose of determining identity or confusingly similarity.
Consequently, the Panel finds that the similarity between the disputed domain name and the Mark is such as to create confusion for Internet users.
Thus, the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Although a complainant bears the burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that, with regard to paragraph 4(a)(ii) of the Policy, this could result in the often impossible task of proving a negative proposition, requiring information that is primarily if not exclusively within the knowledge of a respondent.
Thus, the consensus view of UDRP panels is that paragraph 4(c) of the Policy shifts the burden of production of evidence to the respondent to come forward with evidence of a right or legitimate interest in a domain name, once the complainant has made a prima facie showing, as the Panel believes the Complainant has made in this case. See Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
As previously noted, the Respondent offered no reason for selecting the disputed domain name. There is no evidence that the Respondent is commonly known by the disputed domain name or a corresponding name or uses a corresponding name in a business.
The website associated with the disputed domain apparently resolved to the domain name and website of the Complainant’s affiliated company.
No information is provided on what rights or legitimate interests the Respondent may have in the disputed domain name.
On the contrary, the Complainant has argued that the Respondent: (i) has no rights or legitimate interests in the disputed domain name and (ii) has not been authorised by the Complainant to register or use the Mark as a domain name.
In the circumstances, the Panel concludes that the Complainant has established the requirement of paragraph 4(a)(ii) of the Policy with respect to the disputed domain name.
C. Registered and Used in Bad Faith
As noted above, the Respondent has failed to provide any exculpatory information or persuasive reasoning that might have led the Panel to question the Complainant’s arguments that the Respondent acted in bad faith by creating confusion to the detriment of the Complainant by registering the disputed domain name confusingly similar to the Mark.
It is established in prior UDRP decisions that the registration of a domain name confusingly similar to a trademark by any entity that has no relationship to that trademark may be, in certain circumstances, sufficient evidence of bad faith registration and use. See Pfizer Inc. v. NA, WIPO Case No. D2005-0072; AT&T Corp. v. John Zuccarini d/b/a Music Wave and RaveClub Berlin, WIPO Case No. D2002-0440; America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; and Research In Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492.
In this case, the Panel notes that it is close to impossible that the Respondent chose to register the disputed domain name randomly with no knowledge of the Mark. See Barney’s Inc. v. BNY Bulletin Board, WIPO Case No. D2000-0059; Kate Spade, LLC v. Darmstadter Designs, WIPO Case No. D2001-1384 citing Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028; and SembCorp Industries Limited v. Hu Huan Xin, WIPO Case No. D2001-1092.
Where the respondent knew or should have known of a trademark prior to registering the disputed domain name, such conduct may also suggest bad faith. See Weetabix Limited v. Mr. J. Clarke, WIPO Case No. D2001-0775.
In addition, the Panel notes that many UDRP decisions have held that bad faith use of a domain name by a respondent may also result from the fact its good faith use is in no way plausible (see Audi AG v. Hans Wolf, WIPO Case No. D2001-0148), considering the specificity of the activity.
The Complainant has also argued and provided evidence that the disputed domain name was fraudulently used to divert Internet users for commercial gain, through a scam where a purported factor is interposed for invoice payment purposes between a company and its clients. In the present case, the purported factor is a Polish company, and the Complainant was alerted to the scam by a client which forwarded the suspicious e-mail it received.
Finally, some UDRP decisions have held that, in certain circumstances, persons who are registering domain names have an affirmative duty to abstain registering and using a domain name which is either identical or confusingly similar to a prior trademark held by others and that contravening that duty may constitute bad faith. See Policy, paragraph 2(b); Nike, Inc. v. B. B. de Boer, WIPO Case No. D2000-1397; Nuplex Industries Limited v. Nuplex, WIPO Case No. D2007-0078; Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304; BOUYGUES v. Chengzhang, Lu Ciagao, WIPO Case No. D2007-1325; Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964; and mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141.
The Panel finds that the evidence submitted supports a finding of bad faith under paragraph 4(b)(iv) of the Policy.
The Panel concludes in these circumstances that the Respondent’s registration and use of the disputed domain name constitute bad faith, and that the requirement of paragraph 4(a)(iii) of the Policy is satisfied in this case.
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 <materispaints-eu.com> be transferred to the Complainant.
Date: June 24, 2015