WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Thales v. Domain Admin, Privacy Protect, LLC / rigby james
Case No. D2018-0921
1. The Parties
The Complainant is Thales of Courbevoie, France, internally represented.
The Respondent is Domain Admin, Privacy Protect, LLC of Burlington, Massachusetts, United States of America / rigby james of Suresnes, France.
2. The Domain Name and Registrar
The disputed domain name <thalesgroupes.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 25, 2018. On April 25, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 26, 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 May 7, 2018 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 amendment to the Complaint on the same date.
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 May 11, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 31, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 1, 2018.
The Center appointed Martine Dehaut as the sole panelist in this matter on June 7, 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 Company belonging to a multinational group manufacturing, selling and promoting electronic systems and services addressed to the defense, security, space, aerospace, and ground transportation market.
The Complainant is operating business activities under the name Thales that is used as a Trademark, as a part of its domain name <thalesgroup.com> and as a company name of the parent Company Thales Group.
The Complainant has provided evidence that it owns a European Union trade mark registration No. 002028140 over the word mark THALES, filed on December 20, 2000 and registered on November 9, 2006 for a variety of products and services in classes 9, 38 and 42 relating to its field of business activities. Thales Group's official website is hosted at <thalesgroup.com>.
The disputed domain name <thalesgroupes.com> does not resolve to an active website. The welcome page corresponds merely to a website's template. As evidenced by the Complainant, the disputed domain name has however been used as a part of an email address to send emails to various Complainant's suppliers in view of opening trade accounts and obtaining payment facilities for the ordering products "in large quantities". These emails were sent by persons pretending to be Managing Directors of an existing Thales Group entity "Thales Communications & Security SAS".
As an illustration, below is the content of an email sent to a supplier of the Complainant:
"I MONIRA François, managing director of THALES COMMUNICATIONS & SECURITY SAS, I send you this email after visiting your website, regarding the possibility to open a trading account with your company.
We are a company based in France specializes in supplying Multi-media, wholesaler and other private client.
We are looking for a long-term supplier/partner with good competitive price/quality to fulfil the client demand throughout France and others countries because we are interested of buying couple of your products you sell and want to place an order with you in large quantities.`
Can you give us payment facilities (14, 30, or 60 days payment terms) depending on the size of our different orders?
Please inform us of the procedure to open a trade account and apply for a credit insurance account based on a credit check).
THALES COMMUNICATIONS & SECURITY S.A.S."
The company Thales Communications & Security filed a criminal complaint on the ground of identity theft.
5. Parties' Contentions
The Complainant asserts the following in support to its Complaint:
First, the disputed domain name <thalesgroupes.com> is confusingly similar to the Trademark THALES registered in the European Union and with the domain name <thalesgroup.com> used by Thales in its current business operation including its website and the professional email addresses of the employees of the Group.
Moreover, the Complainant points out that "Thales" is also used as a commercial name of its parent company.
Second, the Complainant alleges that the Respondent does not have legitimate interest in respect of the disputed domain name. According to the Complainant, the Respondent has registered and is using the disputed domain name for the sole purpose to create a confusion in the fraudulent emails recipients' mind.
Third, the Complainant asserts that the disputed domain name has been registered and used in bad faith. More precisely, the fact that several emails have been sent to Thales suppliers or potential suppliers from email addresses incorporating the disputed domain name, very close to the domain name <thalesgroup.com> used by Thales and the fact that the contested emails have been sent in using the names of Thales employees, demonstrate that the disputed domain name has been registered and used in bad faith.
The Complainant requires the transfer of the disputed domain name.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
The Complainant has the burden of proving each of the following three elements under paragraph 4(a) of the Policy in order to be entitled to a transfer of the disputed domain name:
(i) that the disputed domain name is identical or confusingly similar to a trade mark 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 disputed domain name incorporates in its entirety the Complainant's trademark THALES. Consequently, it is obviously confusingly similar with that trademark for the purposes of the first element of paragraph 4(a) of the Policy. The addition of the descriptive term "group" reinforces the confusion as it explicitly refers to the domain name used by the Complainant to operate its business and by the entities belonging to the Thales Group.
The Complainant is therefore deemed to have satisfied paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Under the UDRP practice, panels have generally recognized that the Complainant has the burden of making out a prima facie case that the Respondent lacks rights or legitimate interests (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Jurisprudential Overview 3.0"), section 2.1). In this case, the Complainant has evidenced that the Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services. Indeed, the disputed domain name does not resolve to an active website but only resolves to an inactive website template. The disputed domain name appears to be registered and used only for conducting unfair commercial activities as detailed here above.
Failing any rebuttal from the Respondent, the Panel will consider the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances, which, without limitation, are deemed evidence of the registration and use of a domain name in bad faith. These are:
(i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent's] documented out-of-pocket costs directly related to the disputed domain name; or
(ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant's trade mark or service 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 disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent's] 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 [the respondent's] website or location or of a product or service on [the respondent's] website or location.
It is evident that the disputed domain name, which incorporates the Complainant's European Union Trademark THALES and is confusingly similar to the Complainant's domain name <thalesgroup.com>, is used for the purpose of operating fraudulent actions. Indeed, the disputed domain name does not resolve to any active website. On the contrary, it is used to contact Complainant's suppliers or business partners by usurping the identity of the Complainant's employees who are falsely mentioned as signatories.
By using the disputed domain name in such a way, the Respondent intentionally attempted to mislead the recipients by creating a confusion as to the source of the emails it sent in order to obtain payment facilities for the delivery of products, that are supposed to be ordered by the Complainant.
Considering such circumstances, the Panel finds, in the absence of any evidence to the contrary, that the disputed domain name was registered and used in bad faith.
Accordingly, the third criteria set out in paragraph 4(a)(iii) of the Policy is satisfied.
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 <thalesgroupes.com> be transferred to the Complainant.
Date: June 20, 2018