WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
MAPPY S.A. v. Jihed Trabelsi
Case No. D2018-1186
1. The Parties
The Complainant is MAPPY S.A. of Issy Les Moulineaux, France, represented by Nameshield, France.
The Respondent is Jihed Trabelsi of Tunis, Tunisia.
2. The Domain Name and Registrar
The disputed domain name <fr-mappy.com> (the “Disputed Domain Name”) 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 May 29, 2018. On May 29, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 31, 2018, 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.
The Center verified that 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 June 6, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 26, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 27, 2018.
The Center appointed Lynda M. Braun as the sole panelist in this matter on July 17, 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
Specializing in route planning and mapping services, the Complainant is a French leader in local map search on the Internet, mobile phones and tablets that does business all over Europe. The Complainant’s principal website, “www.mappy.com”, has more than 13 million monthly users on the Internet, mobile phones and tablets, and accounted for more than 373 million visits in 2016.
The Complainant is the owner of several trademarks, including but not limited to, MAPPY.COM, International Trademark No. 743504, registered on August 18, 2000, in International Classes 09, 16, 38, 39, and 42; and MAPPY, French Trademark No. 99827132, registered on December 3, 1999, in International Classes 09, 16, 38, 39, and 42 (hereinafter referred to as the “Mappy Mark”).
The Complainant also owns a number of domain names in addition to <mappy.com> that include or incorporate the MAPPY Mark. Some of these are <mappy.be>, <mappy.fr>, <mappy.it> and <fr.mappy.com>, all of which redirect to the Complainant’s principal website.
The Respondent registered the Disputed Domain Name on February 12, 2018, almost two decades after the Complainant began to register and use the MAPPY Mark. The Disputed Domain Name resolves to an active website that mimics the Complainant’s official website and includes the Complainant’s trademarks as well as the identical content available on the Complainant’s official website.
5. Parties’ Contentions
The Complainant contends that:
- The Disputed Domain Name is confusingly similar to the trademark in which the Complainant has rights;
- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name;
- The Disputed Domain Name was registered and is being used in bad faith; and
The Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)(i) - (iii)):
(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) The Disputed Domain Name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark.
It is uncontroverted that the Complainant has established rights in the MAPPY Mark based on its long use as well as its several trademark registrations for the MAPPY Mark. The Disputed Domain Name <frmappy.com> consists of the MAPPY Mark in its entirety preceded by the geographical abbreviation “fr” connected by a hyphen, and followed by the generic Top-Level Domain (“gTLD”) “.com”.
First, the Disputed Domain Name incorporates the Complainant’s MAPPY Mark in its entirety. Prior UDRP panels have held that “when a domain name wholly incorporates a complainant’s registered mark, that is sufficient to establish identity or confusing similarity for purposes of the Policy.” See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.
The mere addition of the geographic abbreviation “fr” to the Complainant’s MAPPY Mark does not diminish, but rather adds to the confusing similarity between the Disputed Domain Name and the Complainant’s MAPPY Mark. See Gannett Co., Inc. v. Henry Chan, WIPO Case No. D2004-0117 (a domain name incorporating a well-known trademark combined with a geographically descriptive term is confusingly similar to the trademark); Inter-IKEA Systems B.V. v. Hoon Huh, WIPO Case No. D2000-0438 (the addition of the term “korea” in <ikea-korea.com> does not prevent the domain name from being confusingly similar to the complainant’s trademark).
Further, although the Disputed Domain Name contains a hyphen between the geographical abbreviation “fr” and the MAPPY Mark, this is irrelevant for purposes of the Policy, because the presence or absence of punctuation marks such as hyphens cannot on their own avoid a finding of confusing similarity. See Six Continents Hotels, Inc. v. Helen Siew, WIPO Case No. D2004-0656 (citing Six Continents Hotels, Inc. v. Georgetown, Inc., WIPO Case No. D2003-0214 (hyphens do not “serve to dispel Internet user confusion here”); Fort Knox National Company v. Ekaterina Phillipova, WIPO Case No. D2004-0281 (“[T]his Panel believes that the expression true-pay is similar to the trademark TRUEPAY”).
Finally, the addition of a gTLD such as “.com” in a domain name may be technically required. Thus, it is well established that such element may be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182.
The Panel finds that the Disputed Domain Name is confusingly similar to a trademark in which the Complainant has rights, and thus the Complainant satisfied the first prong of the Policy.
B. Rights or Legitimate Interests
Under the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent bears the burden of production to demonstrate rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.
There is no evidence in the record suggesting that the Respondent has rights or legitimate interests in the Disputed Domain Name. The Complainant has not authorized, licensed, or otherwise permitted the Respondent to use the Complainant’s MAPPY Mark. The Complainant does not have any type of business relationship with the Respondent, nor is the Respondent making a legitimate noncommercial or fair use of the Disputed Domain Name. Rather, the Respondent is using the Disputed Domain Name to resolve to a commercial website that is an almost identical copy of the Complainant’s principal website. The circumstances suggest that the Respondent’s intention is to exploit the goodwill and reputation attached to the Complainant’s MAPPY Mark for its own financial gain.
In this case, the Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent has not submitted any substantive arguments or evidence to rebut the Complainant’s prima facie case. As such, the Panel determines that the Respondent does not have rights or legitimate interests in the Disputed Domain Name and that the Complainant has satisfied the second prong of the Policy.
C. Registered and Used in Bad Faith
The Panel finds that, based on the record, the Complainant has demonstrated the Respondent’s bad faith registration and use of the Disputed Domain Name pursuant to paragraph 4(b) of the Policy.
First, bad faith may be found where the Respondent knew or should have known of the registration and use of the Complainant’s MAPPY Mark prior to registering the Disputed Domain Name. See Façonnable SAS v. Names4sale, WIPO Case No. D2001-1365. Such is true in the present case in which the Respondent registered the Disputed Domain Name almost two decades after the Complainant first registered and used the MAPPY Mark and especially since the Complainant has enjoyed a high degree of recognition as a result of its renown for its route planning and mapping services.
The longstanding and public use of the MAPPY Mark would make it disingenuous for the Respondent to claim that it was unaware that the registration of the Disputed Domain Name would violate the Complainant’s rights. See Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137 (finding bad faith where the respondent registered the domain name after the complainant established rights and publicity in the complainant’s trademarks). Thus, the timing of the Respondent’s registration and use of the Disputed Domain Name indicates that the Respondent acted in bad faith.
Second, the Panel finds that the Respondent used the Disputed Domain Name in bad faith by attempting to attract for commercial gain Internet users to the Respondent’s website consisting of a replica of the Complainant’s official website by creating a likelihood of confusion with the Complainant’s MAPPY Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website under paragraph 4(b)(iv) of the Policy.
Moreover, the registration of a domain name that is confusingly similar to a well-known registered trademark by an entity that has no relationship to that mark may be sufficient evidence of bad faith registration and use. See Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (use of a name connected with a well-known service and product by someone with no connection to the service and product suggests opportunistic bad faith). Based on the circumstances here, the Respondent registered and used the Disputed Domain Name in bad faith in an attempt to create a likelihood of confusion with the MAPPY Mark.
Therefore, the Panel concludes that the Complainant has made out its case that the Disputed Domain Name was registered and is being used in bad faith, and as such, the Complainant satisfied the third prong 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 <fr-mappy.com> be transferred to the Complainant.
Lynda M. Braun
Date: July 19, 2018