WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
COMUTO v. Este sas di S. Terracina & C. Societa/Ditta
Case No. D2016-0758
1. The Parties
The Complainant is COMUTO of Paris, France, represented by Nameshield, France.
The Respondent is Este sas di S. Terracina & C. Societa/Ditta of Milan, Italy.
2. The Domain Name and Registrar
The disputed domain name <blablacar.cloud> (the "disputed Domain Name") is registered with Tucows Domains Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 18, 2016. On April 18, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed Domain Name. The same day, 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 of Respondent. Furthermore, it confirmed that according to section 11 of the Registration Agreement, the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP") applies. An amended Complaint was filed with the Center on April 22, 2016.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Policy, 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 April 25, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 15, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 18, 2016.
The Center appointed Michael A.R. Bernasconi as the sole panelist in this matter on May 24, 2016. 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 following facts appear from the Complaint and its Annexes, which have not been contested by the Respondent.
The Complainant is COMUTO, a company incorporated in France. Since 2004, the Complainant offers a ride sharing service by allowing drivers with empty seats to connect with paying passengers.
The Complainant owns numerous registered trademarks for BLABLACAR, including the following:
- European trademark Registration BLABLACAR (Registration no. 010813236), registered on September 3, 2012;
- European trademark Registration BLABLACAR (Registration no. 010812485), registered on August 31, 2012;
- International trademark Registration BLABLACAR (Registration no. 1240011), registered on January 30, 2015.
The disputed Domain Name was created on March 3, 2016. The disputed Domain Name is connected to a website that displays the statement "This Domain is Reserved" in different languages.
5. Parties' Contentions
The Complainant contends that it is also known as BLABLACAR that is a trusted community marketplace that connects drivers with empty seats with passengers looking for a ride and willing to share travelling costs. The Complainant states that over one million people use BLABLACAR every month, creating an entirely new, people powered, ridesharing community. Besides, the Complainant argues that he is the owner of several BLABLACAR trademarks registered and used in several countries. According to the Complainant, he owns several domain names including the distinctive wording BLABLACAR, such as <blablacar.com>, <blablacar.net>, <blablacar.org>, <blablacar.co.uk>, <blablacar.es>, <blablacar.fr>, <blablacar.it>, <blablacar.pt>, <blablacar.com.mx> and <blablacar.com.br>.
Identical or confusingly similar
The Complainant states that the disputed Domain Name is identical to the distinctive trademark BLABLACAR. The Complainant points out that the disputed Domain Name <blablacar.cloud> includes the Complainant's trademark in its entirety and without any adjunction of letters or words. Referring to previous UDRP cases, the Complainant contends that the addition of the generic Top-Level Domain ("gTLD") ".cloud" is not sufficient to avoid likelihood of confusion. The Complainant asserts that the disputed Domain Name is identical to the trademark BLABLACAR.
Rights or Legitimate interests
First, the Complainant argues that according to previous UDRP cases, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. The Complainant argues that if a respondent fails to do so, the opposing complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP. According to the Complainant, this principle shall apply in the present matter. Furthermore, the Complainant puts forward that the Respondent was not commonly known by the disputed Domain Name and it is not related in any way with the Complainant. The Complainant states that it does not carry out any activity for, nor has any business with the Respondent. Moreover, the Complainant holds that neither license nor authorization has been granted to the Respondent to make any use of the Complainant's trademark BLABLACAR, or apply for registration for the disputed Domain Name by the Complainant. Therefore, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed Domain Name.
Used and registered in bad faith
The Complainant submits that the disputed Domain Name is identical to the Complainant's trademark BLABLACAR. Furthermore, the Complainant holds that the disputed Domain Name points to an empty page since its registration. Therefore, that demonstrates, according to the Complainant, a lack of use in good faith. Referring to previous UDRP cases, the Complainant argues that the incorporation of a famous mark into a domain name, coupled with an inactive website, may be evidence of bad faith registration and use. The Complainant contends that the Respondent has registered the disputed Domain Name in order to prevent the owner of the trademark or service mark from using the mark in a corresponding domain name.
The Complainant requests that the disputed Domain Name be transferred to the Complainant.
The Respondent did not reply to the Complainant's contentions.
Pursuant to paragraph 14(a) of the Rules, the Panel will proceed to a decision on the Complaint in the absence of a Response from the Respondent. The Panel may draw negative inferences from the Respondent's default where necessary. However, this does not automatically result in a decision in favor of the Complainant (cf. Cynthia Ann Crawford v. Julian S. Garcia, WIPO Case No. D2012-2454; Loris Azzaro B.V. v. Whols Agent, Whois Privacy Protection Service, Inc. / Eight Days Robin Hills, WIPO Case No. D2014-0368).
6. Discussion and Findings
If the Complainant is to succeed, it must prove each of the three elements referred to in paragraph 4(a) of the Policy, namely that:
(i) The disputed Domain Name is identical or confusingly similar to a trademark 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 has been registered and is being used in bad faith.
The Panel will proceed to establish whether the Complainant has discharged the burden of proof in respect of each of the three elements referred to in paragraph 4(a) of the Policy.
A. Identical or Confusingly Similar
The Complainant is the owner of several trademark registrations, containing, or comprised of BLABLACAR.
The disputed Domain Name <blablacar.cloud> embodies Complainant's trademark without any other distinctive sign. The only other element incorporated to the disputed Domain Name is the gTLD ".cloud". This does not distinguish the disputed Domain Name from the Complainant's BLABLACAR trademark.
Accordingly, the Panel finds that the disputed Domain Name <blablacar.cloud> is virtually identical to the Complainant's trademark BLABLACAR.
B. Rights or Legitimate Interests
From the evidence in front of the Panel, the Respondent's name is not "blablacar". The Respondent also does not possess any apparent rights or legitimate interests in or to the BLABLACAR trademarks, and the disputed Domain Name was registered only after the Complainant had used its trademarks for several years.
The Complainant must make out at least a prima facie case that the Respondent lacks rights or a legitimate interest in the disputed Domain Name (Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270; Loris Azzaro B.V. v. Whols Agent, Whois Privacy Protection Service, Inc. / Eight Days Robin Hills, supra). Once a prima facie case is shown, as is the case in this matter, the burden of production then shifts to the Respondent who must demonstrate its rights or legitimate interests to the Panel (Swarovski Aktiengesellschaft v. blue crystal, WIPO Case No. D2012-0630).
Although properly notified, the Respondent chose not to challenge the Complainant's allegations. There is no evidence before the Panel to support the contrary, and, therefore, the Panel has no reason to not accept the Complainant's arguments as facts.
Consequently, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed Domain Name <blablacar.cloud>. For all these reasons, the Panel concludes that paragraph 4(a)(ii) of the Policy is established.
C. Registered and Used in Bad Faith
The Policy requires the Complainant to prove both registration and use in bad faith.
Paragraph 4(b) of the Policy lists a number of circumstances, which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:
(i) Circumstances indicating that [the Respondent has] registered or acquired the domain name primarily for 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 [the Respondent's] documented out-of-pocket costs directly to the domain name; or
(ii) [the Respondent has] registered the domain name in order to prevent the owner of the trademark or service from reflecting the mark in a corresponding domain name, provided that [the Respondent has] engaged in a pattern of such conduct; or
(iii) [the Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent's] 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 Respondent's] web site or location or of a product or service on [the Respondent's] website or location.
Since the disputed Domain Name is connected to a website displaying "This Domain is Reserved" in different languages, it is not possible for the Panel to establish whether the Respondent has an apparent connection to the Complainant and its business and whether there is any legitimate, good faith business conducted by the Respondent in connection with the disputed Domain Name.
In view of the content shown by the website, the Respondent has failed to make any genuine use of the disputed Domain Name. The passive holding of a disputed domain name does not prevent a finding of use in bad faith (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
The disputed Domain Name was registered in 2016 and incorporates the Complainant's BLABLACAR trademark used since 2004 and registered since 2012. In the age of the Internet and the advancement in information technology, taking into account the market presence of the Complainant in numerous European countries, its registered trademarks and presence on the Internet, a simple search on the Internet reveals the presence of the Complaint's trademark and domain names. Therefore, the Panel finds that it is very likely that the Respondent had actual knowledge of the Complainant's trademark rights at the time it registered the disputed Domain Name (Comuto v. Odobescu Adrian, WIPO Case No. DRO2014-0005).
It would have been pertinent for the Respondent to provide an explanation of its choice of the disputed Domain Name. In failing to do so, the Panel concludes that the disputed Domain Name was registered in bad faith with intent to create an impression of association with the Complainant and its business (Comuto v. Odobescu Adrian, supra; Comuto v. Dongyunqiu/shi lei, WIPO Case No. DCO2014-0038).
Having considered the above, the Panel finds that the disputed Domain Name has been registered and is being used in bad faith, and thus the Complainant fulfills the condition provided in paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(a) of the Policy and 15 of the Rules, the Panel orders that the disputed Domain Name, <blablacar.cloud> be transferred to the Complainant.
Michael A.R. Bernasconi
Date: June 7, 2016