WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
M.M.M. Finance Immobilier S.A. v. Whois Agent, Whois Privacy Protection Service, Inc. / Djordje Trbojevic
Case No. D2019-0067
1. The Parties
The Complainant is M.M.M. Finance Immobilier S.A. of Geneva, Switzerland, represented by Etude Fontanet & Associés, Switzerland.
The Respondent is Whois Agent, Whois Privacy Protection Service, Inc. of Kirkland, Washington, United States of America / Djordje Trbojevic of Arandjelovac, Serbia.
2. The Domain Name and Registrar
The disputed domain name <mmm-immobilier.com> is registered with eNom, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 11, 2019. On January 11, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 14, 2019, 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 January 16, 2019 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 January 25, 2019. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on January 25, 2019.
The Center verified that the Complaint together with the amendments 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 January 28, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 17, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 18, 2019.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on February 22, 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 Complainants are M.M.M. Finance Immobilier S.A., a Swiss corporation established in Geneva, Switzerland in December 2008 (“the first Complainant”) and Mr. Menico Mattielo, a director thereof (“the second Complainant”). The first Complainant owns real estate in Geneva that is rented to third parties.
The disputed domain name was created on May 11, 2018. Little is known regarding the Respondent, who appears to be a private individual based in Serbia. Screenshots of the website associated with the disputed domain name produced by the Complainants dated December 19, 2018 show what appears to be an online presence for the first Complainant’s business.
The Respondent’s said website is entitled “Welcome to M. M. M. FINANCE IMMOBILIER”. It lists the first Complainant’s correct business name, address and registered company number along with a contact email address using the disputed domain name, which the Complainants say is not the first Complainant’s correct email address. It also provides the correct personal name of the second Complainant under a heading of “Management” with a contact email address using the disputed domain name, which the Complainants say is not the second Complainant’s correct email address. Under the same heading, said website lists a contact email address using the disputed domain name for an alleged “Office Manager” named “Richard Ross” whom the Complainants say is unconnected with their business. The said website describes the business of the first Complainant as global investment management, which the Complainants say does not accord with the first Complainant’s statutory purposes.
5. Parties’ Contentions
As noted below in section 6A of this Decision, although the first Complainant’s director was added as a second Complainant within the Complaint itself, the Complainants’ submissions did not distinguish between the two and merely referred to “the Complainant” throughout. In summarizing the Complainants’ contentions, the Panel has adjusted these where appropriate to refer to the applicable Complainant.
The Complainants contend that the disputed domain name is identical or confusingly similar to a trademark in which they own rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name has been registered and is being used in bad faith.
The Panel notes in passing that the following submissions of the Complainants appear to be intended to refer to the first Complainant’s registered company name. The Panel considers it reasonable to make such inference based upon the context of the applicable contentions. The Complainants submit that they rely upon an unregistered common law mark regularly used since 2008, which has become a distinctive identifier. The Complainants state that such identifier is associated by consumers with the first Complainant’s services. The Complainants note that this has been used for more than a decade and is publicly registered in Geneva. The Complainants contend that such mark has acquired sufficient distinctiveness in Geneva, adding that the first Complainant has dealt with various banks, administrative agencies and companies all of whom use the mark in correspondence with the first Complainant. The Complainants produce sample correspondence, which illustrates the use of the first Complainant’s corporate name by such entities since 2008.
The Complainants assert that the disputed domain name is identical or at least confusingly similar to the name of the first Complainant, noting that the full name of the first Complainant appears clearly on the website associated with the disputed domain name.
The Complainants contend that the Respondent has no rights or legitimate interests in respect of the disputed domain name in that the Respondent has no registered trademark or other intellectual property rights associated therewith, is not commonly known by any such name and does not have the Complainants’ consent to use their mark.
The Complainants describe the homepage of the website associated with the disputed domain name, noting that the first Complainant’s name appears prominently thereon and that the name of the second Complainant likewise appears with an unauthorized and unknown email address. The Complainants add that they did not give permission to the Respondent to use the name or details of either of the Complainants.
The Complainants submit that the Respondent is presenting itself misleadingly as an employee or executive of the first Complainant, using publicly available details of the first Complainant and the name of the second Complainant. The Complainants contend that the Respondent uses the Complainants’ names to achieve a fraudulent objective. The Complainants note that the activities mentioned on the website associated with the disputed domain name cannot be part of the first Complainant’s business since these are non-compliant with its statutory purposes.
The Complainants assert that the Respondent is intentionally seeking to attract Internet users to its website by creating a likelihood of confusion with the Complainant’s name for commercial gain, adding that this leads to significant confusion and reputational damage to both of the Complainants.
The Complainants note that a different domain name, <mmm-financeimmobilier.com> was registered on January 13, 2016 and featured similar content but that this disappeared the same year. The Complainants add that the registrant of such domain name was a privacy service.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To succeed, the Complainants must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights;
(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.
A. Preliminary Issue – Consolidation of Complainants
The Panel notes that the present Complaint has been filed by multiple complainants. In connection with consolidation of complaints under the Policy, section 4.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) provides inter alia as follows:
“Paragraph 10(e) of the UDRP Rules grants a panel the power to consolidate multiple domain name disputes. At the same time, paragraph 3(c) of the UDRP Rules provides that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder.
In assessing whether a complaint filed by multiple complainants may be brought against a single respondent, panels look at whether (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation.”
It should also be noted that paragraph 10(a) of the Rules allows the Panel to conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and Rules.
In the present case, the Complainants have merely named a director of the first Complainant as an additional complainant and have arranged for him to sign the Complaint. It is not specified whether he has signed in his capacity as a director of the first Complainant, on his own behalf, or in both of such capacities. The Complainants have not expressly requested consolidation of their respective domain name disputes, nor have they provided much in the way of detail regarding their having been affected by common conduct of the Respondent. The Panel notes that common conduct might conceivably be inferred from the naming of both the first and second Complainants on the Respondent’s website and that the Complainants briefly note that has led to “reputational damage” to both Complainants, which is not further specified or discussed.
While the grievance of the first Complainant is reasonably apparent to the Panel from the facts and circumstances of this case, the Panel is not prepared to speculate as to what the specific grievance of the second Complainant might be, how such grievance is held in common with the first Complainant and what reputational damage either or both of the Complainants may have suffered. Furthermore, the Complainants’ submissions did not specifically discuss the equity and procedural efficiency of consolidation. No mention was made of the second Complainant’s rights, if any, in the relied-upon trademark deriving from the first Complainant’s corporate name nor any other rights apparently held in common between the Complainants. Finally, no request was made as to which of the Complainants should receive a transfer of the disputed domain name in the event of success in the Complaint.
In all of these circumstances, the Panel considers that the Complainants have not made out a case for consolidation of their respective complaints. The Panel notes that almost all of the Complainants’ evidence and submissions refer to the first Complainant only and to “Complainant” in the singular. It appears therefore that the second Complainant was included either in error or as an afterthought by the Complainants’ representatives. In these circumstances, and in terms of paragraph 10(a) of the Rules, the Panel directs that the present Complaint shall proceed in name of the first Complainant only. The Panel considers that no prejudice results to the Respondent from such determination. The first Complainant shall be referred to as “the Complainant” throughout the remainder of this Decision.
B. Identical or Confusingly Similar
There are two parts to the inquiry under this element of the Policy. The Complainant must first demonstrate that it has rights in a trademark and secondly that the disputed domain name is identical or confusingly similar to such trademark. The test is “a relatively low threshold test for a complainant, the object of which is to establish that there is a bona fide basis for the complaint”, The Perfect Potion v. Domain Administrator, WIPO Case No. D2004-0743.
The Complainant relies upon unregistered or common law trademark rights in its corporate name, “M.M.M. Finance Immobilier S.A.” Section 1.3 of the WIPO Overview 3.0 discusses the types of submissions and evidence, which a complainant may produce to successfully assert such rights under the Policy, namely that the mark has become a distinctive identifier which consumers associate with the complainant’s goods or services, relevant evidence of which includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys. Section 1.3 also notes that where a respondent is shown to have been targeting a complainant’s mark, for example based on the manner of use of the related website, this may support the complainant’s assertion that its mark has achieved significance as a source identifier.
In this context, the Complainant has produced company correspondence extending from 2008 to more recent dates, which shows that others use its corporate name when engaging with it on various business matters. This evidence goes some way towards satisfying the Panel that the Complainant has established a common law trademark in its corporate name, particularly when the Panel also takes into consideration the fact that the Complainant has used its name for more than a decade and has been recognised as such by a variety of entities from official agencies to suppliers. The Panel notes in passing however that the words “Finance” and “Immobilier” in the Complainant’s corporate name are not distinctive in and of themselves. Each has a descriptive quality, the word “immobilier” meaning “real estate” in the French language.
Nevertheless, in the Panel’s view, the three “M” initial letters, which form the first and most dominant element of the Complainant’s name provide a degree of distinctiveness when coupled with and prefixing the descriptive words. This view that the Complainant’s name may have the requisite degree of distinctiveness is fortified to some extent by the Complainant’s inclusion of a search dated January 3, 2019 from the “Google” search engine for the words “mmm finance immobilier geneve”. This returns links referring exclusively to the Complainant and to no other entity or to any general topic. It has been held in previous cases under the Policy that a search of this nature can add some support to a complainant’s claim to common law or unregistered trademark rights (see, for example, S.N.C. Jesta Fontainebleau v. Po Ser, WIPO Case No. D2009-1394).
In addition to the evidence brought forward by the Complainant in connection with the first element, which the Respondent did not challenge, the manner in which the Respondent appears to be impersonating the Complainant on the website associated with the disputed domain name may also be factored into the analysis if it appears prima facie that the respondent seeks to target a trademark through the disputed domain name (see sections 1.3 and 1.15 of the WIPO Overview 3.0). In the Panel’s opinion, the attempted impersonation of the Complainant’s business by the Respondent’s website in the present case strongly suggests that, at least in the mind of the Respondent, the Complainant’s corporate name serves as a distinctive source identifier. Accordingly, in terms of the specific facts of this case, the Panel finds that the Complainant has established that it has rights in an unregistered or common law trademark in its corporate name.
The Panel turns to a comparison of the Complainant’s mark with the disputed domain name, noting first that the applicable Top-Level Domain suffix in the disputed domain name is usually disregarded under the confusing similarity test as it is a technical requirement of registration only. On comparison, it may be seen that the second level of the disputed domain name repeats the “MMM” initials and the “Immobilier” element of the Complainant’s mark, domain names not being case sensitive. The disputed domain name does not contain the periods or full stops between said initials or the various spaces and instead features a hyphen or dash to separate the two elements. The Panel notes that the presence or absence of such punctuation marks cannot on its own avoid a finding of confusing similarity (see, for example, Six Continents Hotels, Inc. v. Helen Siew, WIPO Case No. D2004-0656 and the cases cited therein).
Perhaps of greater significance to the comparison exercise is the omission of the word “Finance” in the disputed domain name. Nevertheless, the Panel is satisfied that even with such word omitted, the disputed domain name can still be held to be confusingly similar to the Complainant’s mark. In the first place, the principal and most dominant element of the Complainant’s mark is the three “M” initials and these are found at the beginning of both such mark and the second level of the disputed domain name. Secondly, the way in which a respondent uses a domain name can likewise support a finding of confusing similarity if, as here, it appears from such domain name and the connected website that a respondent intends the users of such website to believe that it is associated with the complainant (see, for example, The Gaming Board for Great Britain v. gaming board, WIPO Case No. D2004-0739 and the comments of the panel in Bayerische Motoren Werke AG (“BMW”) v. Registration Private, Domains By Proxy, LLC / Armands Piebalgs, WIPO Case No. D2017-0156 (“whereas […] the mark is not present in its entirety, the content at the corresponding website serves to affirm a finding of confusing similarity”)).
In all of the above circumstances, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark. The requirements of paragraph 4(a)(i) of the Policy have been satisfied.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.
The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by the respondent, that the respondent has no rights or legitimate interests in a domain name. Where the panel finds that a complainant has made out such a prima facie case, the burden of production shifts to the respondent to bring forward evidence of such rights or legitimate interests.
In the present case, the Complainant submits that the Respondent has no registered trademark or other relevant intellectual property rights in connection with the disputed domain name, is not commonly known by the disputed domain name and does not have the Complainant’s consent to use its mark. The Complainant also puts forward a compelling case that the Respondent’s objective in registering and using the disputed domain name is to impersonate the Complainant, most probably in connection with a fraudulent purpose. The Panel is satisfied that the Complainant’s submissions make out the requisite prima facie case.
The Respondent has not availed itself of the opportunity to explain the reasons for its conduct or otherwise to point to any rights or legitimate interests which it might have asserted. In the absence of such explanation, the Panel notes that the evidence before it suggests that the disputed domain name has been or is being used to impersonate the Complainant. This could not on any view be considered to be a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy and paragraphs 4(c)(ii) and (iii) of the Policy equally do not apply.
In all of these circumstances, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name. The requirements of paragraph 4(a)(ii) of the Policy have been satisfied.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, 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 web site or other on line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
In the present case, the Panel has found that the disputed domain name is confusingly similar to the Complainant’s corporate name. The Complainant has asserted, with appropriate supporting evidence, that the Respondent’s website associated with such disputed domain name adopts and misuses the Complainant’s corporate identity. The Complainant demonstrates that its company registration number and registered address have been reproduced on such website along with details of its director, whose email contact address has been substituted with an address featuring the disputed domain name. An alleged additional officer’s name and associated email contact data has been published, which the Complainant says that it does not recognize. The Panel considers it reasonable to infer, in the absence of any countervailing evidence, that this is intended so that the person allegedly named “Richard Ross” may hold himself out as representing the Complainant in an official capacity despite having no entitlement to do so. The Respondent’s intent is presumably that any third party communications from those confused by such disputed domain name and website will be directed to the Respondent rather than the Complainant.
The actions of the Respondent in registering the disputed domain name, and in publishing the said website misusing the Complainant’s corporate identity, cannot be explained on any view by a possible good faith motivation. On the contrary, they are very strongly suggestive of registration and use in bad faith. The absence of any engagement by the Respondent with these proceedings, in the face of the Complainant’s serious allegations of the Respondent’s likely fraudulent purpose, further fortifies the Panel in such opinion.
In all of these circumstances, the Panel finds that the Respondent has registered and is using the disputed domain name in bad faith and accordingly that the requirements of paragraph 4(a)(iii) of the Policy have been 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 <mmm-immobilier.com> be transferred to the Complainant.
Andrew D. S. Lothian
Date: March 8, 2019