WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Wavestone v. Wavestone group
Case No. D2019-2251
1. The Parties
The Complainant is Wavestone, France, represented by Marie-Emmanuelle Haas, France.
The Respondent is Wavestone group, India.
2. The Domain Name and Registrar
The disputed domain name <wavestoneconsulting.com> (the “Disputed Domain Name”) 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 September 16, 2019. On September 17, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 18, 2019, 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. In response to a clarification request by the Center, the Complainant filed an amendment to the Complaint on October 7, 2019.
The Center verified that the Complaint together with the amendment 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 October 8, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 28, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 30, 2019.
The Center appointed Nick J. Gardner as the sole panelist in this matter on November 6, 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 relevant facts are straightforward and can be summarized very briefly as follows:
The Complainant is a French consulting company. The filed evidence establishes it is a very large well-known consulting company operating internationally with offices in nine other countries. It has received numerous awards and is widely known in its field of activity. It is listed on the Euronext stock exchange.
The Complainant has various registrations for the trademark WAVESTONE including for example International trademark, WAVESTONE, No. 1345678, registered on December 9, 2016, in classes 35, 38, 41, 42 and protected in China, Morocco, Singapore, Switzerland, Turkey, United Kingdom, , and the United States of America.
These trademarks are referred to in this decision as the “WAVESTONE trademark”. It owns various domain names including the word “wavestone” including <wavestone.com>.
The Disputed Domain Name was registered by the Respondent on July 14, 2019. At the time of this decision the Disputed Domain Name does not resolve to an active website. However evidence filed with the Complaint shows it previously resolved to an active website (referred to in this decision as the “Respondent’s Website”). The Respondent’s Website purported to be the website of “Wavestone Consulting Group Inc.” which was said to be headquartered in the United Kingdom with subsidiaries in many other countries. The evidence establishes that no such entity exists and the information contained on the Respondent’s Website is untrue. By way of example the Respondent’s Website purports to show the headquarters building of “Wavestone Consulting Group Inc” but the image in question is in fact of an IBM building located in Japan. The evidence also establishes that there is no entity in India corresponding to “Wavestone Consulting” and the address given by the Respondent is fictitious.
The evidence establishes that the Respondent’s Website has been used in India to solicit applications for employment with “Wavestone Consulting Group Inc” and that fees are then sought from potential applicants in connection with seeking such employment. The Complainant has no knowledge at all of these arrangements or supposed employment opportunities.
5. Parties’ Contentions
The Complainant says that the Disputed Domain Name is confusingly similar to its WAVESTONE trademark.
The Complainant says that the Respondent has no rights or legitimate interests in the term “wavestone”. It says “wavestone” is a coined mark with no other meaning other than in relation to the Complainant.
The Complainant says that the Respondent’s registration and use of the Disputed Domain Name is in bad faith. It says it is clearly fraudulent and is using the Complainant’s reputation to attract prospective employees and defraud them.
No Response has been filed.
6. Discussion and Findings
The Panel notes that no communication has been received from the Respondent. However, given the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar, then the Panel considers that this satisfies the requirement in paragraph 2(a) of the UDRP Rules to “employ reasonably available means calculated to achieve actual notice”. Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondent’s failure to file any Response. While the Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default (see, e.g., Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909).
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(i) the Disputed Domain Name is identical with 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 Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has rights in the WAVESTONE trademark. The Panel finds the Disputed Domain Name is confusingly similar to this trademark.
The Disputed Domain Name involves the combination of the WAVESTONE trademark with the dictionary word “consulting”. Previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662). It is established that, where a mark is the distinctive part of a domain name, the domain name is considered to be confusingly similar to the registered mark (DHL Operations B.V. v. DHL Packers, WIPO Case No. D2008-1694).
It is also established that the addition of a descriptive term (such as here “consulting”) to a domain name does not prevent a finding of confusing similarity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253; PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189; and see section 1.8 of WIPO Overview 3.0).
It is also well established that the generic Top-Level Domain (“gTLD”), in this case “.com”, does not affect the Disputed Domain Name for the purpose of determining whether it is identical or confusingly similar. See, for example, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.
B. Rights or Legitimate Interests
The Panel finds the WAVESTONE trademark is a coined one and there is no evidence of anyone else using that term.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:
(i) before any notice to the respondent of the dispute, 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) the respondent has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is 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.
None of these applies in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the WAVESTONE trademark. The Complainant has prior rights in the WAVESTONE trademark which precede the Respondent’s registration of the Disputed Domain Name. The Complainant has therefore established a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see, for example, Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Panel finds that the Respondent has failed to produce any evidence to establish its rights or legitimate interests in the Disputed Domain Name. Accordingly, the Panel finds the Respondent has no rights or legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled.
C. Registered and Used in Bad Faith
Under paragraph 4(b) of the Policy a non-exhaustive list of factors evidencing registration and use in bad faith comprises:
(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 online 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.
The evidence filed by the Complainant clearly establishes that the Respondent has used the Disputed Domain Name in connection with a website which in effect impersonates the Complainant and which is being used as part of some form of dishonest and fraudulent scheme to obtain money from persons who believe they are being offered the potential opportunity to obtain employment with the Complainant. The Website concerned clearly is a deliberate attempt to impersonate the Complainant and contains material which overall clearly seeks to present the website as being that of the Complainant. Under the Policy evidence of registration and use in bad faith is established by, amongst other factors, circumstances which indicate that “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” (Policy paragraph 4(b)(iv)). In the present case the Panel concludes that the deliberate use of the Complainant's WAVESTONE trademark is part of as scheme intended to attract persons seeking employment of the Complainant who may then be misled into providing payment for the opportunity of an interview. That falls squarely within the type of circumstances to which the Policy refers. As such the Panel has no hesitation in concluding that the Disputed Domain Name has been registered and is being used in bad faith. It is well established that the establishment of a website which is associated with fraudulent activity provides compelling evidence of bad faith registration and use of the associated domain name – see for example Australia and New Zealand Banking Group Limited v. Bashar Ltd, WIPO Case No. D2007-0031, Grupo Financiero Inbursa, S.A. de C.V v. inbuirsa, WIPO Case No. D2006-0614, Halifax Plc. v. Sontaja Sunducl, WIPO Case No. D2004-0237, CareerBuilder LLC v. Stephen Baker, WIPO Case No. D2005-0251, Finter Bank Zurich v. N/A, Charles Osabor, WIPO Case No. D2005-0871, and Banca Intesa S.p.A. v. Moshe Tal, WIPO Case No. D2006-0228.
The Panel is further reinforced in this view by the fact that the name of the Respondent appears to be fictitious and its contact details are clearly false – see for example Salomon Smith Barney Inc v. Salomon Internet Services WIPO Case No. D2000-0668 (“The Panel bases its determination on the fact that Respondent has taken steps to conceal its true identity, by operating under a name that is not a registered business name and by actively provided false contact details…”).
In addition the Respondent has been given an opportunity to provide any legitimate explanation it may have as to its activities. Again, based on the evidence provided by the Complainant, the burden of production in this respect is shifted to the Respondent. The Panel finds that the Respondent has failed to produce any evidence to establish a good faith registration and use of the Disputed Domain Name.
Accordingly the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.
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 <wavestoneconsulting.com> be transferred to the Complainant.
Nick J. Gardner
Date: November 20, 2019