WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Monoprix SA, Monoprix Exploitation SAS, “MPX” v. Fayat Lucie and Delage Jacqueline
Case No. D2019-0301
1. The Parties
The Complainants are Monoprix SA, France, and Monoprix Exploitation SAS, “MPX”, France, represented by Watrin Brault Associés, France.
The Respondents are Fayat Lucie, United Kingdom, and Delage Jacqueline, United Kingdom (collectively “the Respondent”).
2. The Domain Names and Registrar
The disputed domain names <mpx-sas.com> and <monop-mpx.com> are registered with Ascio Technologies Inc. (the “Registrar”).
3. Procedural History
The Complaint relating to the disputed domain name <mpx-sas.com> was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 8, 2019. On February 8, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 13, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name <mpx-sas.com> which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 19, 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 a first amended Complaint on February 22, 2019.
The Center verified that the Complaint, together with the first 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 February 25, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 17, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 19, 2019.
On March 6, 2019, the Center received a second amended Complaint from the Complainant, including a request to add the additional domain name <monop-mpx.com> to the proceedings.
The Center appointed Tobias Zuberbühler as the sole panelist in this matter on April 2, 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 April 17, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain name <monop-mpx.com>.
On April 25, 2019, the Panel issued Procedural Order No. 1, indicating that it would accept the addition of the disputed domain name <monop-mpx.com> to the proceeding and granting the Respondent a period of 20 days (until May 15, 2019) to provide any comments on the substantive allegations raised by the Complainant in its Complaint and supplemental submission. The Respondent did not submit any comments.
4. Factual Background
The first Complainant (Monoprix SA) and the second Complainant (Monoprix Exploitation SAS, “MPX”) are group companies of a well-known store chain in France.
The first Complainant owns the French trademarks (i) MONOPRIX, registered with the French Trademark Office (INPI) on June 18, 2009, under number 3658321, (ii) MONOP, registered with INPI on June 18, 2009, under number 3658320, and (iii) MPX MONOPRIX, registered with INPI on April 25, 1989, under number 1525977.
The first Complainant licensed its French trademark MPX MONOPRIX to the second Complainant, its parent company Monoprix Exploitation SAS, which had been registered in 2003 in the Commercial Registry of Paris with its official abbreviation “MPX”.
The disputed domain name <mpx-sas.com> was registered on October 25, 2018 and the disputed domain name <monop-mpx.com> on January 3, 2019. Both disputed domain names currently resolve to the Complainants’ main website “www.monoprix.fr”. According to evidence submitted by the Complainants, it appears that the Respondent is using the email handles “@mpx-sas.com” and “@monop-mpx.com” for potentially fraudulent activities. In the corresponding emails, the Respondent has purported to be a representative of Monoprix and contacted third parties to place orders for wholesale food products.
5. Parties’ Contentions
The Complainants allege that they have satisfied all elements of the Policy, paragraph 4.
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
A. Preliminary Matter – Respondent Consolidation
As a preliminary matter, the Panel considers the Complainant’s request for consolidation against multiple Respondents.
The disputed domain names appear to be nominally registered by different individuals. However, the Complainants have submitted evidence of a phishing scheme with common elements between both disputed domain names indicative of common control. Furthermore, the Respondents have the same administrative and technical contact, and the disputed domain names are registered with the same Registrar. Both disputed domain names were used to create email addresses, “[…]@mpx-sas.com” and “[…]@mopop‑mpx.com”, to send messages on behalf of the same person pretending to be an employee of the Complainants. Additionally, the Respondent did not submit any comments regarding consolidation in reply to the Procedural Order No. 1. Taking into account the circumstances of this case, the Panel finds: (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2).
Accordingly, the Panel accepts the Complainant’s request for consolidation.
B. Identical or Confusingly Similar
The Complainants have shown that they have rights in the MONOPRIX, MONOP and MPX MONOPRIX trademarks.
The MPX MONOPRIX trademark is partially reproduced in the disputed domain name <mpx-sas.com>. In addition, the suffix “SAS” relates to the legal form of the second Complainant, “société par actions simplifiée” (“simplified stock company”). It is the consensus view of UDRP panels that the addition of descriptive terms such as “SAS” does not prevent a finding of confusing similarity under the first element of the Policy (see WIPO Overview 3.0, sections 1.7 and 1.8).
The disputed domain name <monop-mpx.com> consists of the trademark MONOP and one part of the trademark MPX MONOPRIX. As a combination of elements of the Complainants’ trademarks, the disputed domain name <monop-mpx.com> must be considered as confusingly similar to the Complainants’ trademarks.
The Complainants have thus fulfilled the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
There are no indications before the Panel of any rights or legitimate interests of the Respondent in respect of the disputed domain names. The Complainants contend that the Respondent is neither affiliated with the Complainant nor making any bona fide use of the disputed domain names.
Based on the Complainants’ credible contentions, the Panel finds that the Complainants, having made out a prima facie case which remains unrebutted by the Respondent, have fulfilled the requirements of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Under the circumstances of this case, it can be inferred that the Respondent was aware of the Complainants’ trademarks when registering the disputed domain names.
As described in the Factual Background above, the disputed domain names currently resolve to the main website of the Complainants, while emails with the handles “@mpx-sas.com” and “@monop-mpx.com” appear to be used for fraudulent activities. By creating a likelihood of confusion with the Complainants’ trademarks for commercial gain and attempting to disrupt the Complainants’ business, the Respondent has registered and used the disputed domain names in bad faith.
Accordingly, the Complainant has also fulfilled paragraph 4(a)(iii) 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 names <mpx-sas.com> and <monop-mpx.com> be transferred to the second Complainant (Monoprix Exploitation SAS, “MPX”).
Date: June 3, 2019