WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dassault Aviation, Groupe Industriel Marcel Dassault v. N Rahmany
Case No. D2015-0999
1. The Parties
The Complainants are Dassault Aviation and Groupe Industriel Marcel Dassault of Paris, France, represented by ORDIPAT, France.
The Respondent is N Rahmany of Los Angeles, California, United States of America (“United States” or “USA”), self-represented.
2. The Domain Name and Registrar
The disputed domain names <dassault-aviation.services>, <dassault-aviation.systems> and <dassault-aviation.technology> (the “Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 12, 2015. On June 12, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On June 12, 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 June 18, 2015, the Center received the Respondent’s email communication.
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 June 19, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 9, 2015. The Respondent did not submit a formal response. Accordingly, the Center notified the parties of the commencement of the Panel appointment process on July 10, 2015.
The Center appointed Dawn Osborne as the sole panelist in this matter on July 21, 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 First Complainant is the owner of, inter alia, an international trade mark registration for DASSAULT AVIATION for, inter alia, France for airplanes and related services registered in 2002. The Second Complainant is the owner of a French registration for DASSAULT for, inter alia, airplanes and related services registered in 2007.
The Domain Names have been registered recently in the new generic Top-Level Domains (gTLDs) “.services”, “.systems” and “.technology” respectively. The Domain Names have been attached to parking pages which suggest the Domain Names are available. The Respondent is the owner of many other domain names containing the well-known trade marks of others. The Respondent requested approximately USD 18,000 for each of the Domain Names from the Complainant.
5. Parties’ Contentions
The Complainant’s submissions can be summarized as follows:
The Complainants have valid registered trade marks protected throughout the world for the DASSAULT and DASSAULT AVIATION marks and a large number of domain names including these marks including <dassault-aviation.com>, <dassault-aviation.us>, <dassault-aviation.fr> and <dassault-aviation.eu>. The DASSAULT mark is well known and has very often been cited for years in the international press including the USA where the Respondent is based.
The Domain Names reproduce in their entirety the Complainant’s trade marks DASSAULT AVIATION and DASSAULT and are identical or confusingly similar to those marks.
The addition of the gTLDS “.services”, “.systems” and “.technology” does not prevent likelihood of confusion since it is necessary for registration of the Domain Names themselves and these words are descriptive and recall the Complainant’s activities. Given the fame of the Complainant’s trade marks the Domain Names are bound to create a likelihood of confusion as to origin and possible affiliation of the Domain Names with the Complainants.
The Respondent sent the First Complainant letters in which he informed them of registration of the Domain Names and asked them to agree they were not conflicting with its business. The First Complainant replied objecting to use of the Domain Names.
The Respondent has never been permitted by the Complainants in any way to use the Complainants’ trade marks or to register any domain names containing them. Nor had there been any acquiescence to any use or registration involving them.
The Respondent has no rights in respect of the Domain Names and he is not known by them. They currently resolve to a registrar page and there has been no fair use of them.
Respondent owns more than 174 other domain names each of them corresponding to what the Complainant states are well-known marks including <adidas.services>, <paramount.productions>, <googleexpress.services>, <robertredford.actor>, <samueljackson.actor>, <the waltdisneycompany.technology> and <viacom.technology>. This list establishes a pattern of conduct by the Respondent consisting in registering well known trade marks as domain names in order to knowingly exploit the reputation of their legitimate owners for commercial gain, by misleading and diverting Internet users from the trade mark owner’s web sites to his own web site.
It is clear from the Respondent’s answer to the First Complainant’s email later that same day that his real intention is to sell the Domain Names to the Complainants viz “The approximate cost for each domains would be about USD $18,000”. The price is manifestly exorbitant and does not show a bona fide registration of the Domain Names. The Respondent refers to the Domain Names as “premiums”. Amongst the 174 other domain names with which the Respondent is associated include some well-known marks in the aeronautical field such as <airbusgroup.services>, <bellhelicopter.systems>, <bellhelicopter.techology>, <northropgrumman.systems>, <northropgrumman.technology>, <saabgroup.systems>, <saabgroup.technology>, <sikorsky.systems>, <sikorsky.technology>, <thalesgroup.systems>, <thalesgroup.technology>, <embraer.technology>, <generaldynamics.systems>, <lockheedmartin.services> and <lockheedmartin.systems>. These are circumstances indicating that the Respondent has registered or acquired the Domain Names primarily for the purposes of selling, renting or otherwise transferring the Domain Names to the Complainants who are the owners of the DASSAULT marks for valuable consideration in excess of the Respondent’s costs directly related to the Domain Names. Some of the domain name registrations mentioned above have been successfully suspended further to URS decisions. The Domain Names have been registered and used in bad faith.
The Respondent did not provide a formal Response in these proceedings. The Respondent’s June 18, 2015 email to the Center did not substantively address the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
- The Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the Domain Names; and
- The Domain Names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Domain Names consist of the First Complainant’s mark DASSAULT AVIATION (registered, inter alia, in France where the Respondent is based) with the addition of a hyphen and a gTLD designation in each case. As such, the Domain Names are identical for the purposes of the Policy to the First Complainant’s DASSAULT AVIATION trade mark, the use of gTLD designations having historically been considered generic and not typically material under the Policy for this purpose. In any event, the gTLDs used in this case could well apply to the Complainant’s field of activity. Further the Domain Names are confusingly similar to the Second Complainant’s DASSAULT mark as registered in the said gTLDs, effectively consisting of that mark, with a hyphen and the generic term “aviation” which applies directly to the field of activity in which the Complainants operate. The use of a hyphen and the term “aviation” do not serve to distinguish the Domain Names from the Second Complainant’s trade mark DASSAULT. As such the Domain Names are confusingly similar to the Second Complainant's registered mark DASSAULT for the purposes of the Policy.
As such the Complainants have satisfied the first limb of the Policy with respect to all of the Domain Names.
B. Rights or Legitimate Interests
The Respondent does not appear to have any trade marks associated with the names “Dassault” or “Dassault Aviation”. There is no evidence that he is commonly known by these names and he does not have any consent from the Complainants to use these names. He does not appear to have used the Domain Names for any bona fide offering of goods or services of his own. Currently, there is a holding page attached to the Domain Names indicating the Domain Names are available. Given the evidence that the Domain Names were registered after the Complainants had established rights in the DASSAULT and DASSAULT AVIATION names and that the Domain Names were offered for sale, there is no credible evidence from the Respondent why such names would be appropriate for registration and such use. Accordingly, the Panel finds that the Respondent does not have any rights or legitimate interests in the Domain Names.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four non-exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including “circumstances indicating that [the Respondent has] registered or [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 complainant, for valuable consideration in excess of [its] documented out-of-pocket costs directly related to the domain name;” (Policy, paragraph 4(b)(i)).
The material attached to the Domain Names indicated that the Domain Names were available. The Respondent has given no satisfactory reason why he has registered domain names comprising or including the distinctive trade marks belonging to the Complainants and a generic term referring to the Complainants’ field of activity, aviation, or why the Domain Names were offered for sale. He has also given no explanation why he has registered many other domain names containing the trade marks of third parties. Accordingly, the Panel finds on the balance of probabilities that the Respondent has registered or acquired the Domain Names primarily for the purpose of selling, renting, or otherwise transferring them to the Complainants who are the owners of the relevant trademark or to a competitor of the Complainants, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Names. The Panel, therefore, finds that there has been registration and use of the Domain Names in bad faith and that bad faith has been demonstrated under paragraph 4(b)(i) of the Policy.
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 <dassault-aviation.services>, <dassault-aviation.systems> and <dassault-aviation.technology> be transferred to the Complainants.
Date: July 27, 2015