WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Maxiburo v. Service Achats / Whois Agent, Whois Privacy Protection Service, Inc.
Case No. D2015-1621
1. The Parties
The Complainant is Maxiburo, Villebon Sur Yvette, France, represented by Nony, France.
The Respondent is Service Achats, Jonquieres, France / Whois Agent, Whois Privacy Protection Service, Inc., United States of America.
2. The Domain Name and Registrar
The Disputed Domain Name <maxiburos.net> is registered with eNom (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 11, 2015. On September 11, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 11, 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 September 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 September 16, 2015.
The Center verified that 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 17, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 7, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 13, 2015.
The Center appointed Nathalie Dreyfus as the sole panelist in this matter on October 20, 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, Maxiburo, is a French company specialized in wholesale trade services of office stationery, office requisite, office machinery and equipment. The Complainant owns in particular the following trademarks (the "Trademarks") for many goods and services, relating to the field of office equipment and supplies:
The trademark MAXIBURO, a French trademark with registration number 144065671 of March 2, 2014.
The trademark MAXIBURO, an International trademark with registration number 1242643 of September 12, 2014.
The Complainant also owns, in particular, the following domain names (the "Domain Names"):
The domain name <maxi-buro.fr> registered on December 17, 2013.
The domain name <maxiburo.fr> registered on November 27, 2013.
The domain name <maxi-buro.com> registered on December 17, 2013.
The domain name <maxiburo.com> registered on December 17, 2013.
The domain name <maxi-buro.net> registered on December 17, 2013.
The domain name <maxiburo.net> registered on December 17, 2013.
The Complainant's domain name <maxiburo.fr> is used as an official Internet website. All the other Domain Names owned by the Complainant automatically redirect to this official website.
The Disputed Domain Name <maxiburos.net> was registered on April 21, 2015. At the time the Complaint was filed, the website at the Disputed Domain Name redirected to an error page.
5. Parties' Contentions
The Complainant asserts that it owns several trademarks and domain names for the sign "maxiburo".
The Disputed Domain Name consists of two elements, being the second level domain name "maxiburos" and the generic Top-Level Domain (gTLD) ".net". The gTLD in the Disputed Domain Name must be disregarded under the confusing similarity test. In consequence, only the verbal element "maxiburos" should be considered for the purpose of evaluating the confusing similarity between the Disputed Domain Name and the Complainant's trademarks.
The Disputed Domain Name consists of the reproduction of the Complainant's trademarks with the mere addition of the letter "s" at the end so that the Disputed Domain Name is confusingly similar to the Complainant's trademarks.
The Respondent was not authorized by the Complainant to register and/or use the Disputed Domain Name. Also, before the dispute, there is no evidence of the Respondent's use of, or demonstrable preparations to use the Disputed Domain Name or a corresponding name in connection with a bona fide offering of goods or services. Additionally, the Respondent is not commonly known (either as a person, business, or organization) by the Disputed Domain Name. Finally, the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name.
The Complainant contends that the Respondent does not have rights or legitimate interests in the Disputed Domain Name. The Respondent has intentionally chosen the Domain Name based on the Complainant's trademarks in order to disrupt the Complainant's business.
The Respondent used the Disputed Domain Name via an email address in order to send emails in which it impersonates the Complainant's identity. The use of the Disputed Domain Name also created a financial risk for the Complainant to whom unjustified bill's payment has been requested by a third party. The Complainant's belief that the Respondent acted in bad faith is reinforces by the fact that the Respondent used a privacy registration service to register the Disputed Domain Name.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The Respondent did not reply to the Complainant's contentions. However, as set out in paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, ("WIPO Overview 2.0"), the consensus view of UDRP panelists is that a Respondent's default does not automatically result in a decision in favor of the Complainant. Although, the Panel may draw appropriate inferences from a Respondent's default, paragraph 4 of the UDRP requires the Complainant to support its assertions with actual evidence in order to succeed in a UDRP proceeding.
In order to obtain the transfer of the Disputed Domain Name and according to paragraph 4(a) of the Policy, the Complainant must prove each of the following:
"(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Name;
(iii) The Disputed Domain Name has been registered and is being used in bad faith".
At the same time, in accordance with paragraph 14(b) of the Rules:
"(a) In the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules or the Panel, the Panel shall proceed to a decision on the complaint.
(b) If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate".
The Panel finds that in this case there are no such exceptional circumstances. Consequently, failure on the part of the Respondent to file a response to the Complaint permits an inference that Complainant's reasonable allegations are true. It may also permit the Panel to infer that Respondent does not deny the facts that Complainant asserts (see Harrods Limited v. Harrod's Closet, WIPO Case No. D2001-1027; see also Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).
A. Identical or Confusingly Similar
There are two parts to the inquiry under the first element of the Policy. The Complainant must first demonstrate that it has rights in a trademark and secondly that the Disputed Domain Name is identical or confusingly similar to such trademark.
The Panel is satisfied that the Complainant is the owner of a variety of registered trademarks for the word "maxiburo", including the examples cited in the factual background. The Panel therefore turns to the second part of the inquiry.
It is well-established that "a domain name that wholly incorporates a Complainant's registered trademark may be sufficient to establish confusing similarity for purposes of the UDRP" (see Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin, WIPO Case No. D2003-0888). Here, the Disputed Domain Name incorporates the Complainant's MAXIBURO trademark in its entirety with the addition of the letter "s" at the end of the trademark.
The Panel finds it clear that altering the Complainant's trademark by one letter is strongly evocative of typosquatting, which "consists of registering misspelled trademarks as domain names, and then deriving profits from Internet users seeking the rightful owners of those trademarks as revenues can be generated by web links and pop-up advertisements on the websites to which those domain names point or on the websites on which those domain name are parked" (see Thomson Broadcast and Media Solution, Inc., Thomson v. Alvaro Collazo, WIPO Case No. D2004-0746).
In the same way, paragraph 1.10 of the WIPO Overview 2.0 provides that "a domain name which contains a common or obvious misspelling of a trademark normally will be found to be confusingly similar to such trademark, where the misspelled trademark remains the dominant or principal component of the domain name".
In the present case, the Panel concurs with the Complainant's claim that "the addition of an "s" in a disputed domain name is a purposeful type of misspelling, particularly as an "s" is often added to words to denote a plural or ownership . This appears to be a case of 'typosquatting' conduct which creates a virtually identical and/or confusingly similar mark to the Complainant's trademark for the purpose of paragraph 4(a)(i) of the Policy" (see Corcom, Inc. v. Jazette Enterprises Limited, WIPO Case No. D2007-1218).
Regarding the addition of the gTLD ".net" to the Disputed Domain Name, it is well-established that gTLDs may typically be disregarded in the assessment under paragraph 4(a)(i) of the Policy (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
In these circumstances, the Panel finds that the Disputed Domain Name is confusingly similar to the trademarks in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the Disputed Domain Name:
"Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(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 consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by the Respondent, that the Respondent has no rights or legitimate interests in the Disputed Domain Name. In the present case, the Panel finds that the Complainant has made out such a prima facie case.
The Respondent is not an authorized dealer, distributor or licensee of the Complainant and has been given no other permission from the Complainant to use the Complainant's trademarks.
The Respondent's name does not bear any resemblance to the Disputed Domain Name nor is there any basis to conclude that the Respondent is commonly known by the trademark MAXIBURO or the Disputed Domain Name. Furthermore there is no evidence that the Respondent has made demonstrable preparations to use or is using such terms in connection with a bona fide offering of goods and services.
The Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name in light of the Complainant's evidence that the Respondent's intention was to use the email address associated with the Disputed Domain Name to disrupt the Complainant's business.
The Respondent has not rebutted this by way of a formal response or otherwise the way that the Respondent has been "using" the Disputed Domain Name, see below under section C, does not support a finding of rights or legitimate interests.
In all of these circumstances, the Panel finds that the Complainant has proved that the Respondent has no rights or legitimate interests in the Disputed Domain Name and that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, 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".
The Disputed Domain Name is not actively used and it does not resolve to a website. However, it is well-established that "the concept of a domain name 'being used in bad faith' is not limited to positive actions; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by Respondent to amount to the domain name being used in bad faith" (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
Furthermore, In the present case, the Respondent used the Disputed Domain Name via an email address in order to send emails to third parties in which it impersonates the Complainant's identity. It is clear that the Respondent's use of the Dispute Domain Name in association with an email scheme has the purpose of making the receivers think that the emails come from the Complainant, or at least from someone related to the Complainant, which is a clear indication of bad faith.
Finally, the Respondent registered the Disputed Domain Name by using a privacy registration service. As set out in paragraph 3.9 of the WIPO Overview 2.0, the "use of a privacy or proxy registration service is not in and of itself an indication of bad faith, the manner in which such service is used can in certain circumstances constitute a factor indicating bad faith". However, and given the facts of this case, the registration of the Disputed Domain Name by the use of a privacy registration service reinforces the Panel's belief that the Respondent acted in bad faith (see Confederation Nationale du Credit Mutuel v. Domain Privacy Service Fbo Registrant / Globallink, Germain Nzitat Nana, WIPO Case No. D2015-0944).
Noting that the Disputed Domain Name incorporates the particular trademark MAXIBURO, with the addition of the letter "s" at the end, together with the gTLD ".net"; that no Response has been filed; and that there appears to be no conceivable good faith use that could be made by the Respondent of the Disputed Domain Name, and considering all the facts and evidence submitted by the Complainant, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled 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 <maxiburos.net> be transferred to the Complainant.
Date: October 30, 2015