WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
CNCER Association Loi 1901 v. Whois privacy services provided by DomainProtect LLC / Victor Amosov
Case No. D2015-1847
1. The Parties
The Complainant is CNCER Association Loi 1901 of Paris, France, represented by Nameshield, France.
The Respondent is Whois privacy services provided by DomainProtect LLC of Saint-Petersburg, the Russian Federation / Victor Amosov of Saint-Petersburg, the Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <cerfrance.com> is registered with OPENNAME LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 16, 2015. On October 16, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 22, 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 October 23, 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 October 23, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 27, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 16, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 17, 2015.
The Center appointed Mihaela Maravela as the sole panelist in this matter on November 27, 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 voluntary counseling and accounting network in France, serving 320,000 customers in various sectors of activity: agriculture, crafts, trade, services, professionals, associations, individuals, and SMEs. The Complainant has multidisciplinary skills from over 11,700 employees: consultants, lawyers and accountants, etc. The Complainant has 700 branches located through the French territory, offering geographical and cultural proximity to local economic players.
The disputed domain name <cerfrance.com> was registered on March 26, 2009 and is linked to a website that contains pay-per-click links that redirect Internet users to other online locations.
5. Parties' Contentions
The Complainant contends that the disputed domain name <cerfrance.com> is identical to its trademark CER FRANCE since it includes in its entirety the mentioned expression. The addition of the generic Top-Level Domain ("gTLD") ".com" is not sufficient to escape the finding that the disputed domain name is identical to the trademark CER FRANCE.
Further, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name since the Respondent is not related in any way with the Complainant, and the Complainant does not carry out any activity for, nor has any business with, the Respondent. Neither license nor authorization has been granted to the Respondent to make any use of the trademark CER FRANCE, or apply for registration of the disputed domain name.
The disputed domain name is identical with the Complainant's trademark CER FRANCE and an Internet search on CER FRANCE provides several results, all of them being linked with the Complainant. Thus the Respondent could not have ignored the Complainant's trademark CER FRANCE at the moment of the registration of the disputed domain name.
Furthermore, the website connected to the disputed domain name is a parking page with pay-per-click links in relation with the Complainant's activity. The disputed domain name is also offered for sale for at least USD 500 on the website's main page. The Complainant concludes that the disputed domain name was registered and is used in bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Noting the fact that the Respondent has not filed a Response, the Panel shall consider the issues referred to it, based on the statements and documents submitted to the Panel.
"A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable". Paragraph 15(a) of the Rules.
Applied to this case, paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel must find that the Complainant has a trademark or service mark and that the disputed domain name is identical or confusingly similar to that trademark or service mark.
Here, the Complainant has demonstrated ownership of the CER FRANCE figurative trademark registered in France under No. 3400060 on December 15, 2005.
The trademark registration predates the registration of the disputed domain name (March 3, 2009).
As regards the question of identity or confusing similarity for the purpose of the Policy, it requires a comparison of the disputed domain name to the trademark rights which have been proved.
Here, the disputed domain name incorporates the entirety of the text portion of the Complainant's trademark. It is well accepted by UDRP panels that a gTLD such as ".com" is typically ignored when assessing identity or confusing similarity of a trademark and a domain name.
The Panel therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate a respondent's rights or legitimate interests in a disputed domain name:
(i) before any notice to it of the dispute, the respondent's use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), which states: "[…] a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If a respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […]".
In the present case the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights. As such, the Complainant has established that it is the owner of the CER FRANCE trademark and claims that the Complainant has not licenced or otherwise authorised the Respondent to use the CER FRANCE trademark. There is no evidence indicating that the Respondent is commonly known by the disputed domain name or the name "Cerfrance" (see for a similar finding ALDI GmbH & Co. KG v. zhou xiaolei, WIPO Case No. D2014-0957).
By not submitting a Response, the Respondent has failed to invoke any circumstances which could demonstrate any rights or legitimate interests in the disputed domain name.
Further, the Panel notes that the disputed domain name is used to direct to a portal website with sponsored links to websites of companies providing services in competition with the Complainant. It is therefore apparent that the disputed domain name is used by the Respondent to unfairly capitalize upon the Complainant's trademark (see Owens Corning v. NA, WIPO Case No. D2007-1143 and Paris Hilton v. Deepak Kumar, WIPO Case No. D2010-1364, on "domain name parking" or "pay-per-click" services).
While advertising is an accepted use for a domain name under the Policy under certain conditions, it has been established that "if the owner of the domain name in question is using it with such a service in order to unfairly capitalise upon or otherwise take advantage of a similarity with another's mark then such use would not provide the registrant with a right or legitimate interest in the domain name" (Paris Hilton v. Deepak Kumar, supra; see also Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267).
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
To fulfil the third requirement, the Complainant must prove that the disputed domain name was registered and is being used in bad faith.
In order to assess whether the Respondent registered and uses the disputed domain name in bad faith, paragraph 4(b) of the Policy provides examples constituting, prima facie, evidence of bad faith.
Paragraph 4(b)(iv) of the Policy has direct bearing to the present case:
"(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to his website 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 the said website location or of a product or service on that website location."
The Panel notes that at the time of the disputed domain name's registration, the Complainant was already established and had been carrying out its business in association with the trademark CER FRANCE. Also, the website to which the disputed domain name resolves contains sponsored listings with links to third-party websites offering similar services. Moreover, the Respondent has not denied knowledge of the Complainant. Under such circumstances, this Panel is of the view that it would be improbable for the Respondent not to have been aware of the Complainant's business and that bad faith registration can be inferred.
Further, the fact that the disputed domain name is used for a website displaying sponsored links to third party websites that offer competing services to those offered by the Complainant, shows that the Respondent is free-riding on the goodwill and reputation associated with the Complainant's trademark and business with the apparent intention of obtaining pay-per-click royalties, and at the same time disrupts the Complainant's business by diverting Internet users to competing websites.
It is established practice that such use be considered to demonstrate bad faith (see, for example, Serta Inc. v. Charles Dawson, WIPO Case No. D2008-1474; Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415; Institut Merieux v. Summit Services LLC, WIPO Case No. D2011-0974; Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, supra). Use of a complainant's trademark in a domain name with targeted sponsored links to third-party sites to attract Internet users to the respondent's website constitutes bad faith registration and use. See for instance MBTI Trust, Inc. v. Glenn Gasner, WIPO Case No. D2009-1428 cited in Asahi Breweries Ltd. v. Whois Privacy Protection Service, Inc., Demand Domains, Inc., WIPO Case No. D2009-1481, Abdij Affligem v. Jiang Jun, WIPO Case No. D2013-0729.
Further, the record shows that the disputed domain name is offered for sale on the website's home page and when one clicks to make an offer to purchase the disputed domain name, a notice appears saying that offers under USD 500 are usually not considered. This amount is almost certainly in excess of the Respondent's out-of-pocket costs directly related to the registration of the disputed domain name. Hence, the record appears to show that, if the Respondent did not primarily obtain the disputed domain name for bad faith purposes as described under Policy paragraph 4(b)(iv), then the Respondent primarily obtained the disputed domain name for the purpose of selling the disputed domain name to the Complainant or the Complainant's competitors for valuable consideration in excess of Respondent's out-of-pocket costs directly related to the disputed domain name. The record offers no evidence to refute this finding (see for a similar finding Abdij Affligem v. Jiang Jun, supra).
As held by a UDRP panel in a similar situation, "the intention might have been to sell the Domain Name to the Complainant for a substantial sum of money, or it could have been to benefit unfairly from confusion resulting from use of the Domain Name in relation to a business of the Respondent." (Advance Magazine Publishers Inc. v. Marcellod Russo, WIPO Case No. D2001-1049).
Having in view the above, the Panel is therefore satisfied that the Respondent has also used the disputed domain name in bad faith.
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, <cerfrance.com> be transferred to the Complainant.
Date: December 12, 2015