WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Amundi Asset Management v. Whois Privacy Protection Foundation / daniel, clark
Case No. D2019-1335
1. The Parties
The Complainant is Amundi Asset Management, France, represented by Nameshield, France.
The Respondent is Whois Privacy Protection Foundation, Netherlands / daniel, clark, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <amundi.top> (the “Disputed Domain Name”) is registered with Hosting Concepts B.V. d/b/a Openprovider (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 11, 2019. On June 11, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 12, 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 June 14, 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 June 17, 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 June 18, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 8, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 11, 2019.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on July 16, 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 July 18 and July 24, 2019 email communications were received from the Respondent, in which the Respondent indicated that he was “open to the idea of selling the domain” to the Complainant.
4. Factual Background
The Complainant is a global asset management company and is one of the top ten biggest investment managers in the world, with EUR 1,425 billion in assets under its management and servicing clients in Europe, Asia-Pacific, the Middle East and the Americas.
The Complainant is the owner of the registered International trade mark AMUNDI (registration No. 1024160, registered on September 24, 2009 in class 36) and also owns the domain name <amundi.com>, which was registered on August 26, 2004 and incorporates the AMUNDI mark.
The Respondent is an individual based in London, United Kingdom, that had used a privacy service for the registration of the Disputed Domain Name. The Disputed Domain Name was registered by the Respondent on May 24, 2019 and does not currently resolve to an active website.
5. Parties’ Contentions
The Complainant’s primary contentions can be summarised as follows:
(a) the Disputed Domain Name is identical or confusingly similar to the Complainant’s registered trade mark AMUNDI;
(b) the Disputed Domain Name does not appear to have been used at all since registration, the Respondent is not commonly known by the Disputed Domain Name, and the Complainant has not licensed or otherwise authorized the Respondent, who is not affiliated with the Complainant in any way, to use its mark AMUNDI, therefore the Respondent has no rights or legitimate interests in the Disputed Domain Name; and
(c) given the reputation and distinctiveness of the Complainant’s trade mark, the Respondent’s passive holding of the Disputed Domain Name, combined with the fact that the Respondent incorporated the Complainant’s well-known mark AMUNDI into the Disputed Domain Name, support the fact that the Respondent is acting in bad faith.
The Respondent did not formally reply to the Complainant’s contentions except for his email communications dated July 18 and July 24, 2019.
The fact that the Respondent has not submitted a formal Response does not automatically result in a decision in favor of the Complainant. However, the Respondent’s failure to file a Response may result in the Panel drawing appropriate inferences from such default. The Panel may also accept all reasonable and supported allegations and inferences flowing from the Complaint as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies, WIPO Case No. D2009-1437 and Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403).
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark 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 Disputed Domain Name has been registered or is being used by the Respondent in bad faith.
A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in the AMUNDI trade mark, based on its International trade mark registration. The Disputed Domain Name incorporates the Complainant’s AMUNDI mark in its entirety.
It is well established that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the generic Top-Level Domain (“gTLD”) extension “.top” may be disregarded.
As such, the Panel finds that the Disputed Domain Name is identical or confusingly similar to the Complainant’s AMUNDI trade mark, and accordingly, paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Once a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent in a disputed domain name, the respondent then carries the burden of demonstrating that it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See Shutterstock, Inc. v. Rahele Mahdavi, WIPO Case No. DIR2014-0004; and Giorgio Armani S.p.A., Milan, Swiss Branch Mendrisio v. Hessamaldin Varposjty, WIPO Case No. DIR2014-0001.
The Panel accepts that the Complainant has not authorized the Respondent to use the AMUNDI mark, and there is no relationship between the Complainant and the Respondent which would otherwise entitle the Respondent to use the AMUNDI mark. Accordingly, the Panel is of the view that a prima facie case has been established and it is for the Respondent to show rights or legitimate interests in the Disputed Domain Name. As the Respondent has not submitted a Response, the Panel will assess the case based on the reasonable inferences that can be drawn from the Complainant’s evidence.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Name by demonstrating any of the following:
(1) before any notice to him of the dispute, the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name was in connection with a bona fide offering of goods or services; or
(2) the Respondent has been commonly known by the Disputed Domain Name, even if he has acquired no trade mark or service mark rights; or
(3) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
No evidence has been provided to demonstrate that the Respondent has trade mark rights corresponding to the Disputed Domain Name, or that he has become commonly known by the Disputed Domain Name.
The Disputed Domain Name does not currently resolve to an active website. There is therefore no evidence before the Panel that the Respondent has used, or has made any demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods or services or for noncommercial or fair use purposes.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
It is generally recognised that the passive holding of a domain name does not as such prevent a finding of bad faith use. As stated in Giorgio Armani S.p.A., Milan, Swiss Branch Mendrisio v. Hessamaldin Varposjty, WIPO Case No. DIR2014-0001, “[t]he panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant’s concealment of its identity”. See also section 3.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
In this case, the Panel finds that the passive holding of the Disputed Domain Name by the Respondent amounts to bad faith registration and use due to the following:
(i) the Complainant’s AMUNDI trade mark is wellknown, and has been in use since at least 2009. A quick Internet search shows that the top search results returned for the keyword “Amundi” are the Complainant’s website and affiliated social media pages, similar to the Internet search results provided by the Complainant in Annex 7 to the Complaint. As such, the Respondent must have known about the Complainant and that the Disputed Domain Name incorporated the Complainant’s AMUNDI mark;
(ii) the Respondent failed to respond to the Complainant’s contentions and has provided no evidence of any actual or contemplated good faith use by him of the Disputed Domain Name, or any explanation as to the reasons why he chose to register a domain name that incorporates “Amundi”;
(iii) the Respondent chose a privacy shield and thus concealed his identity in the WhoIs records; and
(iv) it is difficult to conceive of any plausible use of the Disputed Domain Name that would amount to good faith use, given the Disputed Domain Name is identical or at least confusingly similar to the Complainant’s AMUNDI mark and registered domain name. Any use of the Disputed Domain Name would likely result in misleading Internet users into believing the Disputed Domain Name is associated with the Complainant.
In addition, the Panel notes that on July 18, 2019 the Respondent sent an email to the Center stating that he is “open to the idea of selling” the Disputed Domain Name to the Complainant. Whilst the Respondent’s offer to sell the Disputed Domain Name is not necessarily in itself evidence of bad faith, in cases where the domain name at issue is identical or confusingly similar to a highly distinctive or well-known mark, UDRP panels have been inclined to view such circumstances as indicating that the respondent’s intent in registering the disputed domain name was in fact to profit in some way from the complainant’s trade mark, thereby constituting bad faith on the part of the respondent. See section 3.1.1 of the WIPO Overview 3.0.
In the circumstances, the Panel finds that the Respondent registered and has been using the Disputed Domain Name in bad faith, and paragraph 4(a)(iii) of the Policy has 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 <amundi.top> be transferred to the Complainant.
Date: July 29, 2019