WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Charabot SA v. Name Redacted
Case No. D2018-0339
1. The Parties
The Complainant is Charabot SA of Grasse, France, represented by Novagraaf France, France.
The Respondent’s name has been redacted for reasons explained below1.
2. The Domain Name and Registrar
The disputed domain name <charabot-france.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 15, 2018. On February 15, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 20, 2018, 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 February 22, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant transmitted by email on February 22, 2018 its choice not to amend the Complaint.
In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on February 22, 2018.
The Center verified that the Complaint together with the amendment to the 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 February 28, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 20, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 21, 2018.
The Center appointed Louis-Bernard Buchman as the sole panelist in this matter on March 27, 2018. 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 French corporation, founded in 1956. It is a supplier of fragrances and raw materials for the perfume industry in France and a subsidiary of Robertet SA, which is listed on Euronext Paris.
The Complainant owns the following trademarks: French Trademarks CHARABOT registered under No. 968108 on October 6, 1976 and CHARABOT & Co, registered under No. 1371746 on September 23, 1986, and International Trademark CHARABOT, registered under No. 1221794 filed on July 18, 2014 and designating notably the European Union (together, “the Marks”).
The Complainant is the registrant of the domain name <charabot.fr>, which directs to the website “www.robertet.com”.
The disputed domain name <charabot-france.com> was created on February 12, 2018 and is inactive.
5. Parties’ Contentions
(i) The Complainant submits that the disputed domain name <charabot-france.com> reproduces the Marks in which the Complainant has rights and is confusingly similar to the Marks.
(ii) The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not using the disputed domain name for a legitimate noncommercial or fair use or in connection with a bona fide offering of goods or services.
(iii) The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith as it is using the disputed domain name with the fraudulent intent to lure Internet users into the mistaken belief that the Respondent is, or is associated with, the Complainant, in effect faking the identity of the Complainant’s President.
(iv) The Complainant requests that the disputed domain name be transferred to the Complainant.
In addition, in her email communication of February 22, 2018, the Complainant’s counsel denied that Mr. M. T., who is the President of the Complainant, has ever registered the disputed domain name, and characterized this scheme as “a new fraud attempt”.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
As a preliminary matter, the Panel notes that the Complainant has submitted persuasive and sufficient documentation substantiating its claim that the Complainant’s President is a victim of identity theft and had no knowledge of the registration and use of the disputed domain name. Accordingly, the Panel finds that the Complainant’s President was a victim of identity theft, had no knowledge of the registration and use of the disputed domain name, and that it is therefore appropriate in this proceeding to redact the actual name of the Respondent. See Independent Health Association Inc. v. Registration Private, Domains By Proxy, LLC / [K.A.], WIPO Case No. D2016-1625 (discussion of name redaction cases).
6.1 Procedural Aspects
The Respondent is formally in default pursuant to paragraphs 5(f) and 14(a) of the Rules because no Response was received from the Respondent within the time limit set by the Policy and the Rules.
Under the Rules, paragraphs 5(f) and 14(a), the effect of a default by the Respondent is that, in the absence of exceptional circumstances, the Panel shall proceed to a decision on the basis of the Complaint.
Under paragraph 4(a) of the Policy, it is still the Complainant’s burden to establish that all three of the required criteria for a transfer of the disputed domain name have been met, even when the Respondent is in default.
Under paragraph 14(b) of the Rules, the Panel is empowered to draw such inferences from the Respondent’s default as it considers appropriate under the circumstances.
In this case, the Panel finds that as a result of the default, the Respondent has failed to rebut any of the reasonable factual assertions that are made and supported by evidence submitted by the Complainant. In particular, by defaulting and failing to respond, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has any rights or legitimate interests in the disputed domain name, such as making legitimate noncommercial or fair use of the disputed domain name.
Moreover, as discussed below, the Respondent has failed to provide any exculpatory information or reasoning that might have led the Panel to question the Complainant’s arguments that the Respondent has acted in bad faith.
6.2 Requirements of Paragraph 4(a) of the Policy
A. Identical or Confusingly Similar
In comparing the disputed domain name <charabot-france.com> with the Marks, the Panel finds that the Marks are replicated entirely in the disputed domain name, the latter simply containing as a suffix the geographical element “france”, preceded by a hyphen.
The consensus view of UDRP panels is that the addition of descriptive terms does not generally prevent a finding of confusing similarity. See Banconsumer Service, Inc. v. Mary Langthorne, Financial Advisor, WIPO Case No. D2001-1367; Royal Bank of Canada v. RBC Bank, WIPO Case No. D2002-0672; Allianz AG v. Marian Dinu, WIPO Case No. D2006-0318; Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110; Hachette Filipacchi Presse v. Vanilla Limited/Vanilla Inc/Domain Finance Ltd., WIPO Case No. D2005-0587;and eBay Inc. v. ebayMoving / Izik Apo, WIPO Case No. D2006-1307.
In this case, the Panel finds that the dominant component of the disputed domain name
<charabot-france.com> is the trademark CHARABOT, and that the addition of the geographical term “france” does not prevent a finding of confusing similarity under the first element. It only serves to reinforce the confusion, since the Complainant is present and active in France.
It is also well established that the generic Top-Level Domain, such as “.com”, does not generally affect the assessment of a domain name for the purpose of determining identity or confusing similarity.
Consequently, the Panel finds that the disputed domain name is confusingly similar to the Marks.
Thus, the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Although a complainant bears the burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that, with regard to paragraph 4(a)(ii) of the Policy, this could result in the often impossible task of proving a negative proposition, requiring information that is primarily if not exclusively within the knowledge of a respondent.
Thus, the consensus view of UDRP panels is that paragraph 4(c) of the Policy shifts the burden of production of evidence to the respondent to come forward with evidence of a right or legitimate interest in a domain name once the complainant has made a prima facie showing, as the Panel finds the Complainant has made in this case. See Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
By not submitting a Response, the Respondent offered no reason for selecting the disputed domain name. There is no evidence that the Respondent is commonly known by the disputed domain name or a corresponding name or uses a corresponding name in a business.
The website associated with the disputed domain name is inactive.
No information is provided on what rights or legitimate interests the Respondent may have in the disputed domain name.
On the contrary, the Complainant has credibly argued that the Respondent: (i) has no rights or legitimate interests in the disputed domain name and (ii) has registered the disputed domain name with the intent to use it fraudulently, and the email communication of the Respondent of January 25, 2018 tends to confirm that whoever stole the identity of the Complainant’s President had ill intentions.
In the circumstances, the Panel concludes that the Complainant has established the requirement of paragraph 4(a)(ii) of the Policy with respect to the disputed domain name.
C. Registered and Used in Bad Faith
As noted above, the Respondent has failed to provide any exculpatory information or persuasive reasoning that might have led the Panel to question the Complainant’s arguments that the Respondent (or whoever stole the identity of the Complainant’s President) acted in bad faith by creating confusion with the Complainant and the Marks for the purposes of committing fraud.
It has been established in prior UDRP decisions that the registration of a domain name confusingly similar to a trademark by any entity that has no relationship to that trademark may be, in certain circumstances, sufficient evidence of bad faith registration and use. See Pfizer Inc. v. NA, WIPO Case No. D2005-0072; AT&T Corp. v. John Zuccarini d/b/a Music Wave and RaveClub Berlin, WIPO Case No. D2002-0440; America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 and Research In Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492.
In this case, the Panel notes that due to the phishing contents of its initial email communication, it is close to impossible that the Respondent chose to register the disputed domain name randomly with no knowledge of the Marks. See Barney’s Inc. v. BNY Bulletin Board, WIPO Case No. D2000-0059; Kate Spade, LLC v. Darmstadter Designs, WIPO Case No. D2001-1384 citing Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028; and SembCorp Industries Limited v. Hu Huan Xin, WIPO Case No. D2001-1092.
Where a respondent knew or should have known of a trademark prior to registering a domain name containing this mark, such conduct may also suggest bad faith. See Weetabix Limited v. Mr. J. Clarke, WIPO Case No. D2001-0775.
In addition, the Panel notes that many UDRP decisions have held that bad faith use of a domain name by a respondent may also result from the fact that its good faith use is in no way plausible (see Audi AG v. Hans Wolf, WIPO Case No. D2001-0148), considering the specificity of the activity.
The Complainant has also argued and provided evidence that the disputed domain name may be fraudulently used to order computer equipment, through a scam consisting in using the actual address of the Complainant in the registration of the disputed domain name and in passing off in email communications as the President of the Complainant.
Finally, some UDRP panels have held that, in certain circumstances, the passive holding of a domain name may be evidence of bad faith.
The Panel concludes in these circumstances that the Respondent’s registration and use of the disputed domain name constitute bad faith, and that the requirement of paragraph 4(a)(iii) of the Policy is satisfied 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 <charabot-france.com> be transferred to the Complainant.
Date: April 10, 2018
1 Attached as Annex 1 to this Decision is the Panel’s instruction to the Registrar regarding the transfer of the disputed domain name including the Respondent’s name. The Panel has authorized to transmit Annex 1 to the Registrar as part of the order in this proceeding, but has indicated that Annex 1 to his Decision shall not be published due to the circumstances of the case.