WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Union InVivo v. Super Privacy Service LTD c/o Dynadot

Case No. D2019-2552

1. The Parties

The Complainant is Union InVivo, France, represented by Dentons Europe AARPI, France.

The Respondent is Super Privacy Service LTD c/o Dynadot, United States of America.

2. The Domain Names and Registrar

The disputed domain names <aladinbyinvivo.com> and <aladininvivo.com> (the “Disputed Domain Names”) are registered with Dynadot, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 17, 2019. On October 17, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On October 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.

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 24, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 13, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 15, 2019.

The Center appointed John Swinson as the sole panelist in this matter on November 22, 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 is Union InVivo, a company incorporated in France. The Complainant was founded in or around 1945. According to the Complaint, the Complainant is France’s leading agricultural cooperative group, with 206 cooperatives, more than 300,000 farmers and 10,200 employees in 34 countries.

The Complainant is the owner of a number of trade marks for ALADDIN, ALADIN and INVIVO (alone or together), including:

- French registered trade mark number 4417706 for ALADIN, registered on May 4, 2018;

- French registered trade mark number 4417708 for ALADDIN, registered on October 12, 2018; and

- European Union registered trade mark number 014811335 for, registered on April 16, 2016, (the “Trade Marks”).

The Complainant is also the owner of the following more recent trade marks:

- European Union trade mark application number 018029031 for ALADIN BY INVIVO, submitted on February 28, 2019 and registered on September 21, 2019; and

- European Union trade mark application number 018029049 for submitted on February 28, 2019, and registered on September 21, 2019 (the “New Trade Marks”).

The Respondent is Super Privacy Service LTD c/o Dynadot. No Response was received from the Respondent. The Respondent is a privacy service / the Registrar. The Disputed Domain Names were registered on February 28, 2019. The Disputed Domain Names resolve to parking pages, both offering the relevant domain for sale.

5. Parties’ Contentions

The Complainant makes the following submissions.

A. Complainant

Identical or Confusingly Similar

The Complainant has trade mark rights in the signs ALADIN, ALADDIN and INVIVO (alone or associated) both in France and the European Union. The Disputed Domain Names incorporate the entirety of the Trade Marks. The Disputed Domain Names are confusingly similar to the Trade Marks.

The Disputed Domain Names are also identical to the Complainant’s prior corporate name Aladin by Invivo.

Rights or Legitimate Interests

The Respondent does not have rights in the Disputed Domain Names because:

- The trade mark INVIVO is naturally associated with the Complainant, as it is registered as a trade mark in its name, and also has been used to identify the goods and services rendered by the Complainant for years.

- There is no business or legal relationship between the Complainant and the Respondent.

- The Respondent has not been authorised by the Complainant to use the names ALADDIN, ALADIN and/or INVIVO.

- The registration of the Disputed Domain Names cannot be a coincidence. The Disputed Domain Names were registered on the same day as the Complainant filed applications to register the New Trade Marks, which they reproduce identically.

- The Disputed Domain Names are not active, and therefore the Respondent has no legitimate interest in registering or using the Disputed Domain Names. This also demonstrates the Respondent is not using the Disputed Domain Names in connection with a bona fide offering of goods or services in good faith and there is no evidence of demonstrable preparations to use the Disputed Domain Names in good faith. The offering of the Disputed Domain Names for sale does not constitute a bona fide offering.

Registered and Used in Bad Faith

The Respondent has registered and used the Disputed Domain Names in bad faith because:

- The Respondent has registered the Disputed Domain Names with the aim of taking advantage of the reputation of the Complainant’s INVIVO trade mark. The Disputed Domain Names are not active, but the passive holding of a domain name does not prevent a finding of bad faith in order to take advantage of the reputation of the Complainant. There is no real and substantial offer of goods and/or services on the websites associated with the Disputed Domain Names.

- The Respondent’s registration of the Disputed Domain Names post-dates the registration of the Complainant’s long-standing rights in the INVIVO trade mark. The Respondent registered the Disputed Domain Names on the same day the Complainant applied to register the New Trade Marks. This is a strong indication that the Respondent knew of the Complainant and its rights in the Trade Marks when it registered the Disputed Domain Names.

- The Respondent is passively holding the Disputed Domain Names since its registration, which constitutes bad faith use. There is no evidence that the Respondent uses or intends to use the Disputed Domain Names other than to offer them for sale at a price that is likely to substantially exceed its out of pocket costs of registration, and the price that the Disputed Domain Names command would largely be based on the Trade Marks.

- The Respondent’s use of a proxy service to obscure its true identity evidences bad faith registration and use of the Disputed Domain Names.

B. Respondent

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

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:

(i) the Disputed Domain Names are 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 Disputed Domain Names; and

(iii) the Disputed Domain Names have been registered and are being used in bad faith.

The onus of proving these elements is on the Complainant even though the Respondent failed to submit a response.

A. Procedural Issues

Consolidation

This Complaint is in relation to two Disputed Domain Names. Paragraph 3(c) of the Rules provides that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder. Paragraph 10(e) of the Rules gives the Panel discretion to decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and the Rules.

In this instance, the Disputed Domain Names are owned by the same Respondent and both relate to trade marks owned by the Complainant. Accordingly, this Panel concludes that the consolidation of the multiple domain name disputes asserted by the Complainant against the Respondent is consistent with the Policy and Rules.

Response

The Respondent’s failure to file a formal Response does not automatically result in a decision in favor of the Complainant (see, e.g., Airbus SAS, Airbus Operations GmbH v. Alesini Pablo Hernan / PrivacyProtect.org, WIPO Case No. D2013-2059). However, the Panel may draw appropriate inferences from the Respondent’s lack of a formal Response.

B. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Names are identical or confusingly similar to the Trade Marks.

The Disputed Domain Names incorporate the entirety of the ALADIN and INVIVO trade marks, and in the case of <aladinbyinvivo.com> the word “by”. Where a domain name incorporates the entirety of a trade mark, 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 (see section 1.7 the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). The addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) do not prevent a finding of confusing similarity under the first element (see section 1.8 of WIPO Overview 3.0). In this case the term “by” does not dispel confusing similarity.

The Disputed Domain Names are confusingly similar to the Trade Marks. The Disputed Domain Names are also both identical to one of the New Trade Marks.

The Complainant succeeds on the first element of the Policy.

C. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.

The Panel considers the Complainant has made out a prima facie case. This finding is based on the following:

- The Respondent is not using (and there is no evidence that the Respondent has demonstrable preparations to use) the Disputed Domain Names in connection with a bona fide offering of goods or services. The Disputed Domain Names each resolve to a parking page containing an offer to sell (or inviting offers to purchase) the respective Disputed Domain Names.

- The Complainant has not authorised the Respondent to use the Trade Mark in the Disputed Domain Names.

- There is no evidence that the Respondent has been commonly known by the Disputed Domain Names or has registered or common law trade mark rights in relation to this name.

- The Respondent has not been making a legitimate noncommercial or fair use of the Disputed Domain Names without intent for commercial gain. The Disputed Domain Names shows that they are “available for sale”.

The Respondent had the opportunity to demonstrate its rights or legitimate interests but failed to do so. As such, the prima facie case established by the Complainant has not been rebutted and the Complainant succeeds on the second element of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Names in bad faith.

On the undisputed evidence before the Panel, the Trade Marks and the Complainant are well-known worldwide, having been in operation since 1945. The Complainant has developed a significant reputation in the Trade Marks. Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trade mark by an unaffiliated entity can by itself create a presumption of bad faith (see section 3.1.4 of WIPO Overview 3.0).

The Panel also considers it unlikely that it is a coincidence that the Respondent applied to register the Disputed Domain Names on the same day the Complainant applied to register the New Trade Marks. Given that the Disputed Domain Names are almost identical to the Trade Marks and the New Trade Marks, and without the benefit of a response from the Respondent, the Panel can reasonably infer that the Respondent knew that its registration would be identical or confusingly similar to the Complainant’s Trade Marks and New Trade Marks. The Panel finds that the Disputed Domain Names were registered in bad faith.

The Disputed Domain Names resolve to parking pages with shows that they are “available for sale”. The fact that the Disputed Domain Names are not being used does not preclude a finding of bad faith (see section 3.3 of WIPO Overview 3.0 and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

Section 3.3 of the WIPO Overview 3.0 considers passive holding and explains that:

While panelists will 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 of 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 particular circumstances of this case which lead to a conclusion of bad faith use are:

- the Trade Marks and the Complainant’s brands have a strong reputation and are widely known, as evidenced by substantial use and numerous registrations in France and the European Union and the Complainant’s evidence of its reputation and size, namely that it is France’s leading agricultural group;

- the Respondent has not submitted a response or provided any evidence of actual or contemplated good-faith use;

- the Respondent has taken active steps to conceal its true identity through a privacy service (see section 3.6 of WIPO Overview 3.0);

- the Disputed Domain Names were registered on the same day that the Complainant applied to register the New Trade Marks;

- the Disputed Domain Names resolved to parking pages at some point in time advertising the Disputed Domain Names for sale respectively at a listed price of USD 990 for <aladininvivo.com> and higher than USD 550 for <aladinbyinvovo.com>. These prices likely substantially exceed the Respondent’s out-of-pocket costs of registration, and this is likely due to the value of the Trade Marks;

- taking into account all of the above, it is not possible to conceive any plausible good-faith use by the Respondent.

In light of the above and in the absence of a Response and any evidence rebutting bad faith registration and use, the Complainant has succeeded on the third element of the Policy.

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 Names, <aladinbyinvivo.com> and <aladininvivo.com>, be transferred to the Complainant.

John Swinson
Sole Panelist
Date: December 4, 2019