WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Port Europe v. Registration private, Domains By Proxy, LLC / Philippe Champain
Case No. D2015-1004
1. The Parties
The Complainant is Port Europe of Paris, France, represented by Cabinet Desbarres & Staeffen, France.
The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, United States of America / Philippe Champain of Paris, France.
2. The Domain Name and Registrar
The disputed domain name <port-europe.com> is 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 15, 2015. On June 15, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 16, 2015, 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 June 16, 2015 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 amended Complaint on June 17, 2015
The Center verified that the Complaint together with the amended 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 18, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 8, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 9, 2015.
The Center appointed Alexandre Nappey as the sole panelist in this matter on July 9, 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
Port Europe, (hereafter the "Complainant"), is a French company registered to the French Trade Register since January 27, 2003.
The Complainant claims that it is a leading expert in the protection and carriage of transportable technologies and that, since 2009, it is ranked No. 1 on the French market for computer bags.
The Complainant owns the following trademarks:
- French trademark PORT Reg. No. 06 3 420 371, having a registration date of March 31, 2006 in classes 6, 9 and 18;
- International trademark PORT Reg. No. 908669, having a registration date of September28, 2006 in classes 6, 9 and 18.
The Complainant claims that its products are distributed in nearly 60 countries all around the world.
The disputed domain name <port-europe.com> was registered on May 8, 2015, anonymously.
It is currently not resolving to any website. However, the following email address was created at the disputed domain name: [firstname.lastname]@port-europe.com.
A criminal complaint was filed on May 20, 2015 by the CEO of Complainant against "X" concerning the use of the disputed domain name <port-europe.com>.
This proceeding is pending.
5. Parties' Contentions
The Complainant first claims that the disputed domain name <port-europe.com> is confusingly similar to the PORT trademarks because it fully incorporates them and merely adds the geographical term "Europe" and an hyphen and incorporates the non-branded, functional generic Top-Level Domain (gTLD) ".com".
Such minor alterations do not render the disputed domain name less confusing for purposes of the analysis on confusingly similarity.
Then, the Complainant asserts that the Respondent lacks rights or legitimate interests in the disputed domain name: even if the disputed domain name is registered anonymously, the Complainant has never authorized anyone to use its trademarks or to register and use the disputed domain name <port-europe.com>.
As the disputed domain name <port-europe.com> is not used for an active website but only resolves an "error 404" page, it appears that the Respondent has never operated any bona fide or legitimate business under this disputed domain name, and is not making a legitimate noncommercial or fair use of the disputed domain name.
At last, the Complainant states that the Respondent registered the disputed domain name with either actual or constructive knowledge of the Complainant's rights in the PORT trademarks.
The Complainant claims that the disputed domain name has been used with a fraudulent purpose which was to create the email address email@example.com, so that the Respondent pass himself off as the Complainant, with the goal of swindling some distributors of the Complainant.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements in order to prevail in this proceeding:
(i) the disputed domain name 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 was registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has provided evidence of its trademark registrations PORT in connection with computer bag design.
The disputed domain name is confusingly similar to the Complainant's PORT trademarks, because it incorporates the Complainant's PORT mark entirely and merely adds the geographical term "Europe" as a suffix, separated by a hyphen along with the gTLD ".com".
Moreover, the term "Europe" is part of the Complainant's business name Port Europe. See Statoil ASA v. Sharron Struk, WIPO Case No. D2014-1683:
"the disputed domain name is confusingly similar (in the sense of the Policy) to the Complainant's mark, because it contains the mark and merely adds the descriptive term "europe" to form the disputed domain name."
The Panel finds that the disputed domain name is confusingly similar to the PORT trademarks, in which the Complainant has rights.
The Complainant therefore has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel, consistent with the consensus view, finds that the Complainant may establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name by making a prima facie showing that the Respondent lacks rights or legitimate interests.
Paragraph 4(c) of the Policy sets out the following examples:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Complainant states that it has no relationship with and has never authorized the Respondent or anyone to use its PORT trademarks.
The disputed domain name is not used for an active website and only directs to an "error 404" page.
The contentions of the Complainant by which it has made out a prima facie case that the Respondent has no rights or legitimate interests have not been contradicted or challenged, or cast into doubt by the analysis set out above and accordingly, the Panel finds that the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant must establish that the disputed domain name has been registered and is being used in bad faith.
The Policy itself sets out four sets of circumstances, evidence of which can establish bad faith, see Policy, paragraph 4(b):
(i) Registering the disputed domain name primarily to sell it for more than documented out-of-pocket costs, see Policy, paragraph 4(b)(i),
(ii) Registering the disputed domain name to prevent the owner of the trademark from reflecting the mark in a domain name, where there is a pattern of such conduct, see Policy, paragraph 4(b)(ii),
(iii) Registering the disputed domain name primarily to disrupt the business of a competitor, see Policy, paragraph 4(b)(iii),
(iv) Using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or a product or service on your web site, see Policy, paragraph 4(b)(iv).
The Panel finds that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence provided and other relevant circumstances, that the Respondent has registered and is using the disputed domain name in bad faith.
Indeed, based on the available record, the Panel notes that:
- the Respondent has registered the disputed domain name <port-europe.com> in order to create the email address [firstname.lastname]@port-europe.com and to use this address with the fraudulent purpose to create a likelihood of confusion with the Complainant;
- the Respondent sent emails through this address [firstname.lastname]@port-europe.com to several distributors of the Complainant;
- these emails included representation of the abovementioned French trademark PORT Reg. No. 06 3 420 371 and International trademark PORT Reg. No. 908669, but also of some other trademarks of the Complainant, and also company name Port Europe and other details (address, SIRET number, capital and NAF code).
The Panel considers that there is no doubt that the Respondent tried to have the recipients of these emails confused while believing that they were sent by the Complainant.
The Panel therefore finds that the Respondent registered and has been using the disputed domain name only for the purpose of attracting and misleading distributors of the Complainant for commercial gain which is detrimental to the Complainant.
See in similar circumstances Koc Holding A.S. v. VistaPrint Technologies Ltd., WIPO Case No. D2015-0886:
"Complainant argues that people associated with the disputed domain name have been using the
disputed domain name to initiate illegal activities by pretending to be the Complainant's human resources department/agent by promising false job opportunities, and that these actions show the attempt to attract Internet users familiar with Complainant, its services and reputation and create confusion as to the existence of an affiliation or other connection with the Complainant. The Panel agrees that these circumstances constitute evidence of the use of the disputed domain name in bad faith."
The Panel concludes that the Respondent has registered and used the disputed domain name
<port-europe.com> in bad faith. The Complainant has fulfilled the requirements of paragraph 4(a)(iii) 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 name <port-europe.com> be transferred to the Complainant.
Date: July 23, 2015