WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Albioma v. flesh Downey

Case No. D2019-2460

1. The Parties

The Complainant is Albioma, France, represented by GODIN Associés, France.

The Respondent is flesh Downey, United States of America.

2. The Domain Name and Registrar

The disputed domain name <a1bioma.com> is registered with Hostinger, UAB (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 9, 2019. On October 9, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 11, 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.

The Center verified that 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 29, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 18, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 19, 2019.

The Center appointed Zoltán Takács as the sole panelist in this matter on November 26, 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 Complainant, an independent energy producer, is a world leader in high-energy efficiency development of biomass in partnership with agro-industrial companies.

The Complainant is also a leading generator of photovoltaic power overseas where it constructs and operates innovative projects with integrated storage capabilities.

The Complainant owns a number of ALBIOMA trademarks, including:

- French Trademark Registration No. 3983307 for the word mark ALBIOMA registered on February 15, 2013, for services of classes 37, 39, and 40 of the Nice Agreement Concerning the International Classification of Good and Services for the Purpose of the Registration of Marks (the “Nice Classification”), and

- International Trademark Registration (“IR”) No. 1161904 for the word mark ALBIOMA registered on April 8, 2013, for goods and services of classes 30, 31, 37, 39, and 40 of the Nice Classification.

Since December 21, 2012, the Complainant owns the domain name <albioma.com>, which links to its principal website.

The disputed domain name <a1bioma.com> was created on August 27, 2019, and does not resolve to an active website.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name <a1bioma.com> is almost identical to its ALBIOMA trademark, the only difference being substitution of the letter “l” of the trademark with the number “1”.

The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name and is unable to rely on any of the circumstances set out in paragraphs 4(c)(i), (ii), or (iii) of the Policy.

The Complainant claims that the Respondent – despite of the fact of passive use – has registered and is using the disputed domain name in bad faith since a number of factors point toward this finding, e.g. implausibility of any good faith use to which disputed domain name may be put, use of false registration and contact details, as well as the registration of other suspicious domain names.

The Complainant requests that the disputed domain name <a1bioma.com> be transferred from the Respondent to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules requires that the Panel’s decision be made “on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

It has been a consensus view in UDRP decisions that a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

A complainant must evidence each of the three elements required by paragraph 4(a) of the Policy in order to succeed on the complaint, namely that;

(i) the disputed domain name is identical 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

Under paragraph 4(a)(i) of the Policy, there are two requirements which the Complainant must establish, first that it has rights in a trademark or service mark, and second that the disputed domain name is identical or confusingly similar to the trademark or service mark.

It has been a consensus view among UDRP panels that if the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights.

The Complainant produced adequate evidence on having registered rights in the trademark ALBIOMA, and for the purpose of this proceeding, the Panel finds that the French Trademark Registration No. 3983307 and IR No. 1161904 satisfy the requirement of having trademark rights for the purpose of the Policy.

Having determined the presence of trademark rights in the Complainant’s ALBIOMA mark, the Panel next assesses whether the disputed domain name <a1bioma.com> is identical or confusingly similar to it.

According to section 1.7 of the WIPO Overview 3.0, 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 disputed domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.

According to section 1.9 of the WIPO Overview 3.0, a domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for the purpose of the first element. This stems from the fact that the domain name contains sufficiently recognizable aspects of the relevant trademark.

According to section 1.11.1 of the WIPO Overview 3.0, the applicable Top-Level Domain (“TLD”) in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is generally disregarded under the first element confusingly similar test.

The only difference between the disputed domain name <a1bioma.com> and the Complainant’s distinctive ALBIOMA trademark is that the letter “l” of the trademark is substituted with the number “1”.

This alteration in view of the Panel does not affect the appearance of the disputed domain name; it actually creates an almost identical sign to the ALBIOMA trademark. In fact, this is a textbook example of the unlawful practice known as “typosquatting”, which e.g. relies on mistakes such as typos made by Internet users when inputting a website address into a web browser.

The applicable TLD in the disputed domain name, “.com”, should in relation to this administrative proceeding be disregarded.

On the basis of facts and circumstances discussed above the Panel finds that the disputed domain name <a1bioma.com> is confusingly similar to the Complainant’s ALBIOMA trademark and that the requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Under paragraph 4(c) of the Policy, a respondent may demonstrate its rights or legitimate interests in a domain name by showing any of the following circumstances, in particular but without limitation:

(i) its use of, or demonstrable preparation to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services;

(ii) it has been commonly known by the domain name;

(iii) it is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.

In the present case, the Complainant has submitted sufficient and uncontested evidence that it holds prior rights in the trademark ALBIOMA.

The Complainant never authorized the Respondent to use its ALBIOMA trademark in any way, and the Complainant’s prior rights in the ALBIOMA trademark long preceded the date of registration of the disputed domain name.

According to section 2.1 of the WIPO Overview 3.0, while the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent.

As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with the relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.

The Respondent defaulted and failed to respond, and by doing so failed to offer the Panel any type of evidence set forth in paragraph 4(c) of the Policy, or otherwise counter the Complainant’s prima facie case.

The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name in accordance with paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists a number of factors which, if found by the panel to be present, shall be evidence of registration and use of a domain name in bad faith. This non-exclusive list includes:

“(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 website 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 website or location or of a product or service on your website or location.”

The Respondent has been passively holding the disputed domain name since its registration.

According to section 3.3 of the WIPO Overview 3.0, from the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding.

While panelists look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence or actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.

The Panel is of the opinion that the following factors support applicability of the passive holding doctrine in this administrative proceeding:

- the Complainant’s ALBIOMA trademark is highly distinctive and it’s improbable that the Respondent was not aware of it when registering the dispute domain name strikingly similar to it,

- the Respondent did not reply to the Complainant’s call to resolve the dispute amicably,

- the Complainant provided conclusive and uncontested evidence of the Respondent’s use of false registration and contact details, as well as on the Respondent’s concurring registration of other domain names imitating trademarks of others in identical way as in the present case (e.g. <armace1l.com> and <vo1talia.com>, in both cases replacing letter “l” in the respective ARMACELL and VOLTALIA trademarks with the number “1”); and

- the Panel is unable to presume any credible good faith use to which the Respondent may put the disputed domain name.

Typo of a widely-known trademark per se, and in particular the Respondent’s targeting of trademarks of others in the same or similar fashion, including factors discussed above support finding of bad faith on the part of the Respondent.

The Respondent chose not to address and counter the claims made by the Complainant, whereas the Complainant made out a case that the Respondent has registered and is using the disputed domain name in bad faith.

On the basis of the above facts and circumstances the Panel finds that paragraph 4(a)(iii) of the Policy is satisfied.

7. Decision

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 <a1bioma.com> be transferred to the Complainant.

Zoltán Takács
Sole Panelist
Date: December 8, 2019