WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Brest Métropole v. Richard Fong
Case No. D2019-0073
1. The Parties
The Complainant is Brest Métropole of Brest, France, represented by SPARLANN, France.
The Respondent is Richard Fong of Irvine, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name, <seatechweek.com> (the “Domain Name”), 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 14, 2019. On January 14, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same date, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the 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 17, 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 amended Complaint on January 20, 2019.
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 January 22, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 11, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 12, 2019.
The Center appointed Tony Willoughby as the sole panelist in this matter on February 19, 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.
On February 19, 2019, in response to the Center’s Notification of Panel Appointment the Respondent sent an email to the Center stating “No mediation necessary. I am willing to sell this domain. Give me a good offer.”
4. Factual Background
The Complainant is a company based in France, which organises a biennial scientific event on the subject of marine science and technology under the name “Sea Tech Week”. The last event took place in October 2018 and the next one is planned for October 2020.
The Complainant is the owner of two French trade mark registrations, namely:
(i) No. 99813974 SEA TECH WEEK (device mark) September 21, 1999 for a variety of goods and services covering inter alia education, training, entertainment, sporting and cultural activities; and
(ii) No. 154230876 SEA TECH EVENT (word mark) November 27, 2015 for services associated with the arranging of colloquiums, conferences or congresses with regard to marine science and technology.
The Complainant operates a website at “www.seatechweek.eu”.
The Domain Name was first created on November 22, 2006. The Complainant claims to have acquired it in 2009 and “lost” it on failing to renew the registration, when it was acquired by the Respondent. The evidence before the Panel does not identify when the Respondent acquired the Domain Name, but from a huissier’s report filed by the Complainant it appears that it may have been as long ago as January 2017, if not before.
Until recently the Domain Name was connected to a website which appears to have been structured on a website of the Complainant, featuring as it does many design elements such as logos and headings substantially identical to those on the Complainant’s website at “www.seatechweek.eu”. The Respondent’s website featured advertisements and advertising links most of which have no obvious association with marine science and technology. Currently the Domain Name points to a page headed “Unknown Host” and containing a message to the effect that the server cannot be located.
5. Parties’ Contentions
The Complainant contends that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights; that the Respondent has no rights or legitimate interests in respect of the Domain Name; and that the Domain Name has been registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions, but, as stated in section 3 above, emailed the Center on February 19, 2019 stating: “No mediation necessary. I am willing to sell this domain. Give me a good offer.”
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
B. Identical or Confusingly Similar
The Complainant has two French trade mark registrations upon which it bases the Complaint. One is a device mark the only textual element of which is a prominent one reading SEA TECH WEEK and the other is a word mark, SEA TECH EVENT.
The Domain Name features, in addition to the “.com” generic Top-Level Domain, which may be ignored for the purposes of this assessment, the words “sea”, “tech”, and “week”.
The test for confusing similarity is explained in section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the opening paragraphs of which read as follows:
“It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name.
This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. (This may also include recognizability by technological means such as search engine algorithms.) In some cases, such assessment may also entail a more holistic aural or phonetic comparison of the complainant’s trademark and the disputed domain name to ascertain confusing similarity.
While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.”
In this case, SEA TECH WEEK, the prominent textual element of the Complainant’s device trade mark, is clearly recognisable in its entirety in the Domain Name. The Panel sees no reason to depart from the norm and finds that the Domain Name is confusingly similar to that trade mark.
C. Rights or Legitimate Interests
Precisely what has transpired in respect of the Domain Name is not entirely clear from the evidence of the Complainant, much of which (e.g., the huissier’s report) is in the French language. However, it certainly appears that the Domain Name was at one time owned by the Complainant until it was accidentally allowed to lapse. It was then acquired by the Respondent who used it as a pay-per-click parking page, but retaining many of the features of the Complainant’s website such as headings featuring the Complainant’s SEA TECH WEEK logo and a “Brest – France” address and the Complainant’s links labeled “Conferences & Work”, “Programme”, “Exhibition”, “B to B”, and “About”.
The advertising links on the Respondent’s website included “Firefighter Job Description & Requirements”, “Treadmill Desks Are The New Tech Gadget”, “Renting A Limousine Is Better Than A Sea Trip”, among many others.
The use to which the Domain Name is (or was until recently) being put is clearly deceptive, all of the advertising links on the Respondent’s website appearing alongside the prominent banner heading replicating that of the Complainant. The Respondent is not known by the name “Sea Tech Week” and on the evidence before it, the Panel can think of no reason why the Respondent could be said to have rights or legitimate interests in respect of the Domain Name.
The Respondent has a case to answer, but the only answer provided has been the email of February 19, 2019 stating: “No mediation necessary. I am willing to sell this domain. Give me a good offer.”
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
D. Registered and Used in Bad Faith
For the reasons given in section C above, the Panel has no hesitation in finding that the Domain Name has been used in bad faith. The Domain Name identifies the Complainant by reference to its SEA TECH trade mark, the Respondent’s website makes prominent reference to that trade mark and other elements of the Complainant’s website, yet the advertising links on the website bear no relation to anything associated with the Complainant. The use has been deceptive.
However, for a Complaint to succeed under this element of the Policy the Complainant has to establish to the satisfaction of the Panel that the Domain Name was both registered in bad faith and used in bad faith.
It may be that the Respondent has an answer to the Complainant’s allegations, but in the absence of any attempt on the part of the Respondent to justify what he has done, the Panel is left to conclude on the balance of probabilities that the Respondent acquired the Domain Name, knowing that it had previously been a domain name of the Complainant and hoping and intending that by using it and retaining many of the features of the Complainant’s website it would derive a commercial benefit from Internet users attracted into the website. Alternatively, indicated perhaps by the Respondent’s email of February 19, 2019 quoted above, the Respondent’s aim in registering the Domain Name was to sell it back to the Complainant at a profit.
The Panel finds that the Domain Name has been registered and is being used in bad faith within the meaning of paragraphs 4(a)(iii) and 4(b)(iv) (alternatively 4(b)(i)) 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 Domain Name, <seatechweek.com>, be transferred to the Complainant.
Date: March 5, 2019