WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Robertet SA v. Marie Claude Holler
Case No. D2018-1878
1. The Parties
The Complainant is Robertet SA of Grasse, France, represented by Novagraaf France, France.
The Respondent is Marie Claude Holler of Guillestre, France.
2. The Domain Name and Registrar
The disputed domain name <fr-robertet.com> is registered with 1&1 Internet SE (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 17, 2018. On August 17, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 23, 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 August 24, 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 amended Complaint on August 28, 2018.
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 August 29, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 18, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 19, 2018.
The Center appointed Alexandre Nappey as the sole panelist in this matter on October 1, 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 Robertet SA, a French company created in 1850 and specialized in the development of flavor and perfume additives and ingredients.
The Complainant is the owner of ROBERTET trademarks registrations among which are:
- French Trade Mark registration no. 93476071 for ROBERTET, registered since July 7, 1993 in classes 1 and 3;
- International Trade Mark registration no. 665371 for ROBERTET, registered since October 3, 1996 in classes 1, 3 and 30 and designating China, Turkey, Vietnam and the Russian Federation;
- European Union Trade Mark registration no. 13154811 for ROBERTET, registered since December 31, 2014 in classes 1, 3 and 30.
The disputed domain name <fr-robertet.com> was registered by the Respondent on August 7, 2018.
The disputed domain name redirects to “403 forbidden” and “404 not found error” pages.
5. Parties’ Contentions
(1) The Complainant first alleges that the disputed domain name <fr-robertet.com> is similar to its trademark ROBERTET, to the point of creating confusion.
This disputed domain name <fr-robertet.com> entirely and identically reproduces the Complainant’s prior trademark ROBERTET.
The adjunction of the prefix “fr”, as this term is not distinctive, is not sufficient to exclude a likelihood of confusion: it obviously refers to the term “France” where the Complainant is present and active.
(2) Secondly, the Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Since the Respondent name is “Marie Claude Holler”, “Robertet” is not her patronym and she does not need to use the disputed domain name for her activity.
The Complainant has never licensed nor permitted the Respondent to register a domain name incorporating the Complainant’s trademark ROBERTET.
There is no relationship between the Complainant and the Respondent.
Searches on the trademarks database SAEGIS conducted by the Complainant did not reveal any trademark ROBERTET in the name of the Respondent.
(3) Finally, the Complainant claims that the disputed domain name was registered and is being used in bad faith.
The Complainant alleges that it sent a cease-and-desist letter to the Respondent and has never received any response.
The Complainant alleges that a mail server is configured on the disputed domain name, possibly to send fraudulent emails pretending to be the Complainant to collect personal data.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Notwithstanding the lack of a response from the Respondent, it remains up to the Complainant to make out its case in accordance with paragraph 4(a) of the Policy, and to demonstrate that:
(i) the disputed domain name is identical or confusingly similar to a trademark 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.
However, under paragraph 14(b) of the Rules, where a party does not comply with any provision of the Rules, the panel “shall draw such inferences therefrom as it considers appropriate”.
Taking into consideration the Complainant’s contentions, the Policy, Rules, Supplemental Rules and applicable substantive law, the Panel’s findings on each of the above-mentioned elements are the following:
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the registered ROBERTET trademark owned by the Complainant.
Indeed, the disputed domain name <fr-robertet.com> incorporates the entirety of the Complainant’s ROBERTET trademark.
The addition of the hyphen and the letters “fr” does not prevent a finding of confusing similarity.
See, e.g., Areva v. Robert Fox, WIPO Case No. D2015-0223 concerning <areva-fr.com> (transfer) (“The disputed domain name comprises the Complainant’s trademark AREVA followed by a hyphen and the letters “fr.” The main element of the disputed domain name is “areva”, which is identical to the Complainant’s trademark and trade name. The element “-fr” should be understood by Internet users as a reference to France and, when associated with the trademark AREVA, to the origin of the Complainant”).
See also MAPPY S.A. v. Jihed Trabelsi, WIPO Case No. D2018-1186.
Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant must make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the Policy and then the burden shifts to the Respondent to produce evidence that may demonstrate its rights or legitimate interests.
The Complainant has stated that it has not authorized or licensed the Respondent to use its ROBERTET trademark.
It results from the circumstances that the Respondent does not own any rights to the mark ROBERTET and there is nothing that indicates that the Respondent is commonly known by the disputed domain name.
The Respondent did not respond to the Complaint. Consequently, the Respondent did not provide any evidence or circumstances to establish that it has rights or legitimate interests in the disputed domain name, according to paragraph 4(c) of the Policy.
In the light of what is stated above, the Panel finds that the Complainant has made an unrebutted prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
As the Respondent has not provided otherwise, the Panel finds that the second element of paragraph 4(a) of the Policy is fulfilled.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out examples of circumstances that will be considered by a panel to be evidence of bad faith registration and use of a domain name. It provides that:
“For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(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.”
Considering the similarity between the disputed domain name and the trademark of the Complainant, the Respondent could not have registered the disputed domain name randomly. The Panel considers that the disputed domain name has been registered in bad faith.
The Panel notes that the disputed domain name is currently inactive. However, passive holding of a domain name can also be an evidence of bad faith use.
Furthermore, email servers have been activated for the disputed domain name and it is hard to imagine in which legitimate way such emails would be used. On the contrary, the Respondent could use any email address with the “@fr-robertet.com” suffix for commercial emailing, spamming or phishing purposes.
For all these reasons, it appears to this Panel that the disputed domain name <fr-robertet.com> has been registered and is being used in bad faith.
See in similar circumstances: Accor v. Pierre Masson, WIPO Case No. D2018-1645.
The Panel therefore finds that paragraph 4(a)(iii) of the Policy is made out.
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-robertet.com> be transferred to the Complainant.
Date: November 6, 2018