WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Movitex v. Contact Privacy Inc. Customer 0154576873 / Anthony Felix, Pedi Confort

Case No. D2019-2587

1. The Parties

The Complainant is Movitex, France, represented by Bureau Duthoit Legros Associes, France.

The Respondent is Contact Privacy Inc. Customer 0154576873, Canada / Anthony Felix, Pedi Confort, France.

2. The Domain Name and Registrar

The disputed domain name <pediconfort-officiel.com> is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 22, 2019. On October 22, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 22, 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 October 30, 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 November 4, 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 November 12, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 2, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 4, 2019.

The Center appointed Jane Seager as the sole panelist in this matter on December 13, 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 a French company, specialized in direct-to-consumer sales of home and personal items, including ready-to-wear apparel, lingerie, and footwear. For use in connection with its products, the Complainant has registered the following trademarks:

- French Trademark Registration No. 1505035, PEDI CONFORT, registered on December 20, 1988;

- International Trademark Registration No. 536356, PEDI CONFORT, registered on March 20, 1989; and

- European Union Trade Mark Registration No. 830265, PEDI CONFORT, registered on March 5, 2002.

The Complainant is also the owner of the domain names <pediconfort.com> and <pediconfort.fr>, which both redirect to the Complainant’s official retail website maintained at “www.daxon.fr”.

The disputed domain name was registered on April 26, 2019, using a privacy service. At the time that the Complaint was filed, the disputed domain name resolved to a website (the “Respondent’s website”) purporting to offer the same products as those sold by the Complainant under its PEDI CONFORT trademark, i.e., shoes for the elderly. At the time of this decision, the disputed domain name no longer resolves to an active website.

On August 28, 2019, the Complainant sent a cease-and-desist letter to the address listed in the legal-notice section of the Respondent’s website. The cease-and-desist letter was returned as undeliverable, marked “addressee unknown at marked address”.

5. Parties’ Contentions

A. Complainant

The Complainant asserts rights in the PEDI CONFORT trademark. The Complainant submits that the disputed domain name is confusingly similar to the Complainant’s PEDI CONFORT trademark, as it integrates the Complainant’s trademark in its entirety as its dominant element. The Complainant asserts that the addition of the term “officiel” (French for “official”) is non-distinctive. In this regard, the Complainant argues that the addition of “officiel” may serve to increase confusion as Internet users will be led to believe that the disputed domain name is under the official control of the Complainant.

The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant states that it has not found any trademarks for PEDI CONFORT or similar registered in the name of the Respondent. The Complainant further states that it has not granted any license or other rights for the Respondent to use the Complainant’s PEDI CONFORT trademark, in a domain name or otherwise. The Complainant submits that the Respondent is not using the disputed domain name in connection with any bona fide offering of goods or services. The Complainant asserts that the Respondent has only ever used the disputed domain name for fraudulent purposes, namely to create a website purporting to sell goods under the Complainant’s PEDI CONFORT trademark, thereby creating confusion as to the source of the goods offered on the Respondent’s website amongst the relevant public. The Complainant provides copies of complaints received by email from consumers who ordered shoes from the Respondent’s website, but never received them, thinking that they were ordering shoes from the Complainant’s website. The Complainant submits that the Respondent is not commonly known by the disputed domain name, and that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.

The Complainant submits that the disputed domain name was registered and is being used in bad faith. The Complainant claims that its PEDI CONFORT trademark was created in 1988, and is now well known in connection with shoes for the elderly that are sold bearing the trademark. The Complainant’s rights in the PEDI CONFORT trademark substantially pre-date the Respondent’s registration of the disputed domain name. The Complainant asserts that the Respondent was fully aware of the Complainant and its prior rights in the PEDI CONFORT trademark when it registered the disputed domain name. The Complainant submits that the Respondent has made use of the Complainant’s trademark on its website, without authorization, in order to take advantage of the Complainant’s rights, and to obtain commercial gain by encouraging consumers to pay for products that the Respondent has no intent of delivering. The Complainant asserts that the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s trademark, in bad faith pursuant to paragraph 4(b)(iv) of the Policy. The Complainant argues that the Respondent’s use of a privacy service to hide its identity may be considered further evidence of the Respondent’s bad faith.

The Complainant requests transfer of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

In order to prevail in its Complaint, the Complainant must prove, on the balance of probabilities, that it has satisfied the requirements of paragraph 4(a) of the Policy, namely:

(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 the disputed domain name; and

(iii) the disputed domain name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has established trademark rights in its PEDI CONFORT trademark by virtue of its registration and use, the details of which are provided in the factual background section above.

The disputed domain name incorporates the Complainant’s trademark in its entirety as its leading element, altered only by the omission of the space (which is not capable of representation in a domain name per se) between the elements “pedi” and “confort” making up the Complainant’s trademark. By comprising the Complainant’s trademark in such a manner, the Panel finds the Complainant’s trademark to be easily recognizable in the disputed domain name. The addition of the term “officiel”, i.e. “official” in French, separated from the Complainant’s trademark by a hyphen, does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark; see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8. The generic Top-Level Domain “.com” is disregarded here for the purposes of comparison under the first element, being a technical requirement of registration; see WIPO Overview 3.0, section 1.11.1.

The Panel finds the disputed domain name to be confusingly similar to the Complainant’s trademark. The Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

At the time that the Complaint was filed, the disputed domain name resolved to a website purporting to offer the same goods as those sold under the Complainant’s PEDI CONFORT trademark, namely shoes for the elderly. The Complainant has provided evidence in the form of emails from dissatisfied customers who, despite having placed orders and having made payment for shoes advertised on the Respondent’s website, had not received delivery of any goods. The Panel notes that the Complainant’s attempts to contact the Respondent making use of contact information contained in the legal-notice section of the Respondent’s website remained unanswered; indeed the Complainant’s courier was returned as undeliverable.

The Panel finds that the Respondent is not using the disputed domain name in connection with any bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. Based on the evidence produced by the Complainant, it appears that the Respondent has used the disputed domain name in connection with a fraudulent scheme whereby the Respondent is making unauthorized use of the Complainant’s trademark in order to create a misleading impression of association with the Complainant, with a view to receiving payment for goods advertised on the Respondent’s website, having no intention to make actual delivery of such goods. Despite having been duly notified of the present proceeding, the Respondent has not come forward to assert otherwise. Prior UDRP panels have categorically held that the use of a domain name for illegal activity, such as phishing, impersonation/passing off, or other types of fraud, can never confer rights or legitimate interests on a respondent; see WIPO Overview 3.0, section 2.13.

In the circumstances, the Respondent cannot legitimately claim to be commonly known by the disputed domain name or a name corresponding to the disputed domain name, as contemplated by paragraph 4(c)(ii) of the Policy, nor is the Respondent making a legitimate noncommercial or fair use of the disputed domain name within the meaning of paragraph 4(c)(iii) of the Policy.

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

C. Registered and Used in Bad Faith

The Complainant has produced evidence indicating that the registration of its PEDI CONFORT trademark substantially pre-dates the registration of the disputed domain name. Since the first use of the Complainant’s PEDI CONFORT trademark, the Complainant’s mark has become well known amongst the relevant public in connection with the Complainant’s footwear products for the elderly.

The Respondent’s knowledge of the Complainant and its PEDI CONFORT trademark is easily inferred from the contents of the Respondent’s website. The Panel finds that by registering the disputed domain name, consisting of the Complainant’s trademark together with the term “officiel”, or “official” in French, the Respondent has sought to imply affiliation with the Complainant, as the term “officiel” suggests that the disputed domain name is either the official domain name of the Complainant, or that of an authorized distributor. In reality there is no such relationship between the Complainant and the Respondent. The Panel finds that the disputed domain name was registered in bad faith.

The Panel further finds that by using the disputed domain name in the manner described above, the Respondent has sought to mislead Internet users into believing that the goods offered on its website were genuinely offered by the Complainant, when the evidence suggests that the Respondent’s use of the disputed domain name was aimed at defrauding unsuspecting customers of the Complainant. The Panel accepts the Complainant’s contention that the Respondent has attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s trademark as to the source of the goods offered on the Respondent’s website, in bad faith pursuant to paragraph 4(b)(iv) of the Policy. Moreover, prior UDRP panels have found that given that the use of a domain name for per se illegitimate activity such as the sale of counterfeit goods or phishing can never confer rights or legitimate interests on a respondent, such behavior is manifestly considered evidence of bad faith; see WIPO Overview 3.0, section 3.14. Accordingly, the Panel finds that the disputed domain name has been used in bad faith. The fact that the disputed domain name no longer resolves to an active website does not alter the Panel’s findings in any material way.

In the circumstances, the Panel finds the Respondent’s registration of the disputed domain name using a privacy service together with the Respondent’s failure to reply to the Complainant’s cease-and-desist letter to be additional indicators of the Respondent’s bad faith.

The Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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 name <pediconfort-officiel.com> be transferred to the Complainant.

Jane Seager
Sole Panelist
Date: December 27, 2019