WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mazars v. Pierre Michon / Pierre Batet / Karin Leblanc, Mazars-fr.com
Case No. D2016-2403
1. The Parties
The Complainant is Mazars of Woluwe-Saint-Lambert, Belgium, represented by TESLA Avocats, France.
The Respondents are Pierre Michon of Paris, France / Pierre Batet of Tel Aviv, Israel / Karin Leblanc, Mazars-fr.com of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).
2. The Domain Names and Registrars
The disputed domain names <mazars-audit.com> and <mazarsinternational.com> are registered with GoDaddy.com, LLC. The disputed domain name <mazars-fr.com> is registered with Tucows Inc. (the registrars are hereinafter together referred as the “Registrars”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 28, 2016. On November 28, 2016, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On November 28, 2016 and November 29, 2016, the Registrars transmitted by email to the Center its verification response confirming that the Respondents are listed as the registrants and providing the contact details. The Complainant filed an amended Complaint on December 5, 2016.
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 Respondents of the Complaint, and the proceedings commenced on December 6, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 26, 2016. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on December 27, 2016.
The Center appointed Luca Barbero as the sole panelist in this matter on January 9, 2017. 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 an international and well-known group active in the field of accountancy, business auditing, tax, legal and advisory services.
The Complainant is present and has trademark rights in 77 countries, and operates through 17,000 professionals and 260 offices worldwide.
The Complainant is the owner, amongst others, of the following trademark registrations for MAZARS (word mark):
- International trademark registration No. 608854, registered on July 30, 1993, in classes 35, 36, 41 and 42;
- European Union trademark registration No. 003798402, registered on July 19, 2005, in classes 35, 36, 41 and 42;
- United States of America trademark registration No. 1955272, registered on February 6, 1996 in International classes 35, 41 and 42.
The Complainant is also the owner of the domain name <mazars.fr>, registered on May 31, 2000.
The disputed domain names were registered on the following dates:
<mazarsinternational.com>: August 1, 2016;
<mazars-fr.com>: August 9, 2016;
<mazars-audit.com>: August 23, 2016.
The disputed domain name <mazarsinternational.com> is pointed to a web page where it is stated that the site is not available; the disputed domain name <mazars-fr.com> resolves to a web page indicating that the owner’s account has been suspended; and the disputed domain name <mazars-audit.com> is pointed to a registrar’s standard parking web page.
5. Parties’ Contentions
The Complainant highlights that it owns trademark rights for MAZARS, that the Respondents do not own rights or legitimate interests in the disputed domain names, and that the Respondents could not ignore that MAZARS is a worldwide group acting in accountancy and audit, as shown in the web site of the group available at “www.mazars.com”.
The Complainant submits that the names and contact details of the Respondents listed in the WhoIs records of the disputed domain names are fake since:
i) A letter sent to the Respondent Pierre Michon concerning the domain name <mazars-audit.com> was returned for inaccessible address and no replies were received to email communications sent to the registrant’s email address;
ii) An email communication was sent to the email address listed in the WhoIs records of the Respondent Pierre Batet, registrant of the disputed domain name <mazarsinternational.com>, but could not be delivered since the email address resulted incorrect;
iii) With reference to the disputed domain name <mazars-fr.com>, the Complainant was informed of a scam email received by one of its clients, sent from the email address associated with that disputed domain name, which looked like a genuine email sent by the Complainant and displayed the semi-figurative trademark MAZARS in the signature. Therefore, the Complainant states that the disputed domain name was used to generate email addressed which were used by the Respondent in bad faith, and that this conduct amounts to a criminal offense.
The Respondents did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules: “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 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain names registered by the Respondents are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondents have no rights or legitimate interests in respect of the disputed domain names; and
(iii) that the disputed domain names have been registered and are being used in bad faith.
A. Preliminary Procedural Issue: Consolidation of Multiple Respondents and Domain Names
Paragraph 10(e) of the Rules provides that a panel shall decide a request by a party to consolidate multiple domain name disputes in accordance with the Policy and the Rules.
As stated in paragraph 4.16 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), “WIPO panels have articulated principles governing the question of whether a complaint filed with WIPO by multiple complainants may be brought against (one or more) respondents. These criteria encompass situations in which (i) the complainants either have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants’ individual rights in a similar fashion; (ii) it would be equitable and procedurally efficient to permit the consolidation; or in the case of complaints brought (whether or not filed by multiple complainants) against more than one respondent, where (i) the domain names or the websites to which they resolve are subject to common control, and (ii) the consolidation would be fair and equitable to all parties.
In order for the filing of a single complaint brought by multiple complainants or against multiple respondents which meets the above criteria to be accepted, such complaint would typically need to be accompanied by a request for consolidation which establishes that the relevant criteria have been met. The onus of establishing this falls on the filing party/parties, and where the relevant criteria have not been met, the complaint in its filed form would not be accepted”.
In the case at hand, the Panel finds that, on balance of probabilities, a connection exists amongst the Respondents, and finds that the consolidation would be fair and equitable to the parties.
Indeed, all the disputed domain names incorporate the Complainant’s trademark MAZARS and were registered in the month of August 2016. Two of the disputed domain names, <mazarsinternational.com> and <mazars-audit.com>, where registered with the same registrar and use the same Domain Name Servers; they are both registered in the name of individuals with French names (respectively, named “Pierre Batet” and “Pierre Michon”), indicating a telephone number with a prefix of Israel and an email address based on <mail.com>; in addition, the registrant’s postal address for the disputed domain name <mazars-audit.com> and the registrant’s email address for the disputed domain name <mazarsinternational.com> resulted not existent following the sending of the Complainant’s correspondence to said addresses. Therefore, the Panel finds that the disputed domain names <mazarsinternational.com> and <mazars-audit.com> are more likely than not controlled by the same individual using different alias in the WhoIs records or, at least, by a group of individuals acting in concert.
The Panel finds that also the disputed domain name <mazars-fr.com> is, on balance, held by the same individual(s) as the disputed domain names <mazarsinternational.com> and <mazars-audit.com> or, at least, by an individual acting in concert with the actual owner(s) of these domain names. Notwithstanding the fact that the disputed domain name <mazars-fr.com> was registered with a different registrar and indicating a postal address located in the United Kingdom, the actual holder appears to be a French individual, as suggested by the name of the registrant of the disputed domain name in the WhoIs records, “Karin Leblanc”, and the fraudulent email communication sent from an email address based on the disputed domain name, which was written in French. In addition, the registrant’s email address for the disputed domain name is based on <mail.com> as the two additional domain names subject of the present dispute.
Moreover, all postal addresses indicated in the WhoIs records of the disputed domain names resulted incorrect following the Center’s attempt to deliver copy of the Complaint to the Respondents and no Response was submitted notwithstanding the fact that the Complaint was notified via email to the registrant’s email addresses for <mazars-audit.com> and <mazars-fr.com> and no delivery failure notice was received by the Center.
In view of the above, this Panel, having regard to all relevant circumstances, concludes that the consolidation of the multiple domain names is appropriate in this case and is consistent with the Policy and Rules as well as with prior relevant UDRP decisions in this area (see, amongst others, Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281).
The Panel will now proceed to a decision on the merits of the case.
B. Identical or Confusingly Similar
The Complainant has established rights in the trademark MAZARS based on the trademark registrations cited in Section 4 above.
The Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademark as they encompass the trademark in its entirety with the mere addition of the generic terms “international”, “audit” and the geographical indicator “fr”, which are not sufficient to exclude confusing similarity.
Therefore, the Panel finds that the Complainant has proven the requirement prescribed by paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
The Panel finds that the Complainant has made a prima facie case and that the Respondents, by not having submitted a Response, have failed to demonstrate rights or legitimate interests in the disputed domain names in accordance with paragraph 4(c) of the Policy for the following reasons.
According to the evidence on record, there is no relationship between the Complainant and the Respondents and the Complainant has not authorized the Respondents to register or use its trademark MAZARS or the disputed domain names.
Moreover, there is no evidence that the Respondents might have been commonly known by the disputed domain names or that they might have used the disputed domain names in connection with a bona fide offering of goods or services or a legitimate non-commercial or fair use before receiving any notice of the dispute.
Therefore, the Panel finds that the Complainant has proven the requirement prescribed by paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
In light of the prior registration and use of the Complainant’s trademark MAZARS in several countries of the world, the Panel finds that the Respondents were or could have been aware of the Complainant’s trademark at the time of the registration of the disputed domain names.
Moreover, the Respondents’ likely knowledge of the trademark MAZARS is suggested by the terms combined with the Complainant’s trademark in the disputed domain names, i.e., “international”, which recalls the international dimension of the MAZARS audit and consulting group; “audit”, which is descriptive of services provided by the Complainant; and “fr”, which is a clear abbreviation for “France”, the country of the Complainant.
In addition, according to the evidence on records, a communication sent from an email address based on the disputed domain name <mazars-fr.com> was apparently used for the sending of scam emails which misused the Complainant’s trademark and pretended to be the Complainant. The Panel finds that this is compelling evidence of actual knowledge of the Complainant’s trademark.
As to the use of the <mazars-audit.com> and <mazarsinternational.com> disputed domain names, they do not resolve to active web sites at the time of the drafting of this Decision. However, it is well established that passive holding of a domain name could amount to bad faith under certain circumstances as decided, i.a., in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
In the case at hand, in view of the Respondents’ registration of domain names confusingly similar to the Complainant’s trademark, the absence of any documented right or legitimate interest of the Respondents and their failure to respond to the Complaint, the Panel finds that the Respondents’ lack of use of the <mazars-audit.com> and <mazarsinternational.com> disputed domain name also amounts to bad faith.
The Panel finds that the provision of inaccurate contact details in the WhoIs records of the disputed domain names and the use of the disputed domain name <mazars-fr.com> to deliver fraudulent email communications aimed at obtaining recipients’ information are additional circumstances evidencing the Respondents’ bad faith.
In light of the above, the Panel finds that the Complainant has proven that the Respondents registered and are using the disputed domain names 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 names <mazars-audit.com>, <mazars-fr.com> and <mazarsinternational.com> be transferred to the Complainant.
Date: January 24, 2017