WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
E.M. Strasbourg-Partenaires v. Mikhail Makarov
Case No. D2018-2799
1. The Parties
The Complainant is E.M. Strasbourg-Partenaires of Strasbourg, France, represented by Cabinet Bleger-Rhein-Poupon, France.
The Respondent is Mikhail Makarov of Saint Petersburg, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <em-strasbourgconnect.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 December 7, 2018. On December 7, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 10, 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 Complainant filed an amended Complaint on December 11, 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 December 11, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 31, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Parties on January 2, 2019 that it would proceed to panel appointment.
The Center appointed Assen Alexiev as the sole panelist in this matter on January 21, 2019. 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 business club whose objective is to help the development of management training and research and to provide financial support to the E.M. Strasbourg Business School based in Strasbourg and created in 2007. The club has 200 companies and organizations as members and serves as the link between these entities and the business school.
The Complainant is the registered owner of the following trademark registrations containing “E.M. STRASBOURG” (the “E.M. STRASBOURG trademark”):
- the French trademark E.M. STRASBOURG ECOLE DE MANAGEMENT DE STRASBOURG with registration No. 3001540, registered on January 12, 2000 for goods and services in International classes 9, 16, 35, 36, 38, 39, 41 and 42; and
- the French trademark E.M. STRASBOURG PARTENAIRES with registration No.3579101, registered on May 29, 2008 for goods and services in International classes 16, 35, 38 and 41.
The Complainant is also the registrant of the domain names <em-strasbourg.com>, <em-strasbourg.fr>, <em-strasbourg.eu>, <emstrasbourg.fr>, <emstrasbourg.eu>, <emstrasbourg.com> and <bde-em-strasbourg.com>.
The disputed domain name was registered on May 17, 2018. It resolves to a pornographic website.
5. Parties’ Contentions
The Complainant submits that the disputed domain name is confusingly similar to the E.M. STRASBOURG trademark in which the Complainant has rights, because the distinctive part of the disputed domain name reproduces the distinctive part of the E.M. STRASBOURG trademark entirely, while the addition of the descriptive term “connect” directly refers to the activities of the Complainant and does not diminish the confusing similarity with the E.M. STRASBOURG trademark.
According to the Complainant, the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not known under the disputed domain name and is not affiliated to the Complainant, does not have trademark rights in “E.M. STRASBOURG”, and the Complainant has not authorized the Respondent to register or to use the disputed domain name, especially for the purposes of a pornographic website displaying explicit pornographic content and pay-per-click links to third-party adult websites from which the Respondent is likely deriving revenues.
The Complainant claims that the Respondent has registered and is using the disputed domain name in bad faith. The Respondent knew of the Complainant when it registered the disputed domain name.
The disputed domain name was initially registered by a commercial partner of the Complainant in 2015, and the associated website was dedicated to alumni of the EM Strasbourg Business School. As a result of a mistake it was not renewed in 2018, and was soon registered by the Respondent, who then activated a pornographic website named “EM-STRASBOURGCONNECT SEX TUBE” offering pornographic videos. Thus, the Respondent is using the disputed domain name to intentionally attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant as the source, sponsorship, affiliation or endorsement of the website. In addition, several emails from a sender’s email address in the Russian Federation were sent to an email address that was displayed on the homepage of the website at the disputed domain name while it was still operated by the Complainant for the alumni of the EM Strasbourg Business School. By these email messages, the sender claimed that is was a hacker who had broken in the recipient’s email account and devices, and threatened to publish videos compromising the recipient unless it was paid significant amounts of money.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:
(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 Respondent has registered and is using the disputed domain name in bad faith.
In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with the Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.
By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…”
In this proceeding, the Respondent has not used the opportunity provided to it under the Rules and has not submitted a substantive Response addressing the contentions of the Complainant and the evidence submitted by it.
A. Identical or Confusingly Similar
The Complainant has provided evidence and has thus established its rights in the E.M. STRASBOURG trademark.
The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the general Top-Level Domain (“gTLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” gTLD section of the disputed domain name.
The relevant part of the disputed domain name is therefore the sequence “em-strasbourgconnect”. It consists of the elements “em”, “strasbourg” and “connect”. The combination of the “em” and “strasbourg” elements is identical to the distinctive elements of the E.M. STRASBOURG trademark, while the “connect” element is descriptive of one of the activities of the Complainant – to mediate and assist for making connections between various organizations and the E.M. STRASBOURG Business School and its alumni. Moreover, this was exactly how the disputed domain name was used for a period of three years before its registration lapsed and it was registered by the Respondent. In the Panel’s view, these considerations make it likely that Internet users may regard the disputed domain name as referring to an online location of the Complainant where its services are offered.
In view of the above, the Panel finds that the disputed domain name is confusingly similar to the EM STRASBOURG trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name, stating that the Respondent has not been authorized by the Complainant to use the E.M. STRASBOURG trademark, that the Respondent is not commonly known by the disputed domain name and is not carrying out a bona fide use of the disputed domain name, but uses it for a pornographic website. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Respondent has not submitted a Response and has not alleged that is has rights and legitimate interests in the disputed domain name and has not disputed the Complainant’s allegations in this proceeding.
The disputed domain name is confusingly similar to the E.M. STRASBOURG trademark and as discussed above in section 6.A, Internet users may regard it as being an official online location of the Complainant. The disputed domain name resolves to a pornographic website and this use has not been authorized by the Complainant.
In view of the above and in the lack of any denial by the Respondent of the above, the Panel is satisfied that the Respondent, being well aware of the goodwill of the Complainant’s E.M. STRASBOURG trademark, is likely to have registered and used the disputed domain name in an attempt to exploit the trademark’s goodwill to attract Internet users to the Respondent’s pornographic website. Such conduct is not legitimate and does not give rise to rights and legitimate interests of the Respondent in the disputed domain name.
Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(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 provisions of paragraph 4(b) of the Policy are without limitation, and bad faith registration and use may be found on grounds otherwise satisfactory to the Panel.
As discussed above, the disputed domain name fully incorporates the distinctive elements of the E.M. STRASBOURG trademark and is confusingly similar to it. The Respondent does not deny that for a period of three years the disputed domain had been registered by an entity affiliated to the Complainant and used as a portal for the alumni of the E.M. Strasbourg Business School, that the Respondent registered the disputed domain name soon after its previous registration had lapsed and that the Respondent has linked it to a pornographic website offering explicit adult content.
Taking the above into account, the Panel accepts that the Respondent is likely to have registered the disputed domain name with knowledge of the Complainant and targeting the E.M. STRASBOURG trademark in an attempt to attract traffic to the disputed domain name by confusing Internet users that they are reaching an official online location of the Complainant and then offer them pornographic content, likely for commercial gain. In view of this, the Panel accepts that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website at the disputed domain name, by creating a likelihood of confusion with the Complainant’s EM STRASBOURG trademark.
Therefore, the Panel finds that the disputed domain name has been registered and used in bad faith.
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 <em-strasbourgconnect.com> be transferred to the Complainant.
Date: February 6, 2019