WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
SAFRAN v. Whois Agent, Whois Privacy Protection Service, Inc. / Marc Boezio
Case No. D2017-1204
1. The Parties
The Complainant is SAFRAN of Paris, France, represented by Me Haas, France.
The Respondent is Whois Agent, Whois Privacy Protection Service, Inc. of Kirkland, Washington, United States of America ("United States") / Marc Boezio of Rabat, Morocco.
2. The Domain Name and Registrar
The disputed domain name <safran-iledefrance.com> is registered with eNom, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 21, 2017. On June 22, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 23, 2017, 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. In response to a notification by the Center, the Complainant filed an amended Complaint on June 26, 2017.
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 June 30, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 20, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 21, 2017.
The Center appointed Debrett G. Lyons as the sole panelist in this matter on July 26, 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 facts relevant to the decision in this case are that:
(1) the Complainant is an international high-technology group based in Paris, France, which provides its goods and services by reference to the trade mark SAFRAN;
(2) the trade mark SAFRAN is the subject, inter alia, of International Registration No. 884,321, registered on August 5, 2005;
(3) the disputed domain name was registered on January 18, 2017;
(4) the disputed domain name does not resolve to an active website but has been used for email purposes, described in more detail below; and
(5) there is no commercial or other relationship between the Parties and the Complainant has not authorized the Respondent to use the trade mark or to register any domain name incorporating the trade mark.
5. Parties' Contentions
The Complainant asserts trade mark rights in SAFRAN and alleges that the disputed domain name is confusingly similar to the trade mark.
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant alleges that the Respondent registered and is using the disputed domain name in bad faith.
The Complainant accordingly requests the Panel to order transfer of the disputed domain name.
The Respondent did not submit a response.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trade mark 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 has been registered and is being used in bad faith.
It is the responsibility of the Panel to consider whether the requirements of the Policy have been met, regardless of the fact that the Respondent failed to submit a response. Having considered the Complaint and the available evidence, the Panel finds the following:
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trade mark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to the trade mark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trade mark rights. It is accepted that a trade mark registered with a national authority is evidence of trade mark rights for the purposes of the Policy.1 The Complainant provides evidence of its International (and other) registrations of the trade mark SAFRAN and so the Panel accepts that the Complainant has trade mark rights.
The generic Top-Level Domain ("gTLD") ".com" can (generally, and in this case) be disregarded for the purposes of comparison.2 The disputed domain name takes the trademark, to which it hyphenates the term "iledefrance". The Complainant is headquartered in Paris and Ile de France is the French province that includes the city of Paris.
The Panel finds that the disputed domain name is confusingly similar to the Complainant's trade mark. The trade mark is the dominant and distinctive element and "iledefrance" is readily recognizable as a geographical designation and so lacks capacity to distinguish the domain name from the trade mark, whether or not it is understood that the Complainant is based in that particular area.
The Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has the burden to establish that the Respondent has no rights or legitimate interests in the disputed domain name. Nevertheless, it is well-settled that the Complainant need only make out a prima facie case, after which the onus shifts to the Respondent to rebut such prima facie case by demonstrating rights or legitimate interests.3
Notwithstanding the lack of a response to the Complaint, paragraph 4(c) of the Policy states that 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 rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
"(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 publicly available WhoIs data conceals the identity of the underlying domain name registrant. However, in consequence of this administrative proceeding the Registrar informed the Center that the actual registrant was a Marc Boezio.
There is nothing to support any finding by the Panel that the Respondent might be commonly known by the disputed domain name.
The domain name does not resolve to an active website but the evidence provided with the Complaint shows that Marc Boezio has used the domain name in an email address given as his point of contact for certain commercial dealings, in particular, the purported sale of goods from a French online marketplace.
The evidence is that Marc Boezio has failed to honour those sales after payment by buyers.
The email address has been used by Marc Boezio to pose as an employee of the Complainant. Further, the evidence shows that Marc Boezio maintains a social media page where he describes himself as "Project Manager at Safran". Provided with the Complaint is sworn evidence from the Complainant that Marc Boezio is not and has not been an employee of the Complainant.
Accordingly, the Panel finds that there is no relationship between the Parties and that the Complainant has not authorized the Respondent to use its trade mark.
Furthermore, there is no evidence that the Respondent has trade mark rights in the disputed domain name.
The use of the disputed domain name to misleadingly create the belief that Respondent is connected in some way with the Complainant's business establishes to the Panel's satisfaction that there has not been a bona fide offering of goods or services by reference to the dispute domain name, nor a legitimate noncommercial or fair use of the disputed domain name.
The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and that the Respondent in failing to reply to the Complainant's contentions has not rebutted such prima facie case.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and so the Complainant has satisfied the second element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out circumstances which shall be evidence of the registration and use of a domain name in bad faith. They are:
"(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 website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location."
The Panel finds that none of the scenarios set out by paragraph 4(b)(i)-(iv) of the Policy are applicable. That said, the Panel finds, as separate matters, registration in bad faith and use in bad faith. The evidence is that, at the time the disputed domain name was created, Respondent directly targeted the Complainant and its trade mark. Further, the described fraudulent use of the disputed domain name to mislead the public into believing there to be an association between the Respondent and the Complainant constitutes use in bad faith.
Accordingly, the Complainant has satisfied the third and final limb 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 <safran-iledefrance.com> be transferred to the Complainant.
Debrett G. Lyons
Date: August 4, 2017
1 See section 1.2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0").