WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ingenico Group v. Contact Privacy Inc. Customer 1245626487 / Name Redacted
Case No. D2019-2899
1. The Parties
The Complainant is Ingenico Group, France, represented by GPI Marques, France.
The Respondent is Contact Privacy Inc. Customer 1245626487, Canada / Name Redacted.1
2. The Domain Names and Registrars
The disputed domain name <be-ingenico.com> is registered with Google LLC. The disputed domain name <ingenico-be.com> is registered with Namebay (collectively, the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 26, 2019. On November 26, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 26, 2019, Google LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name <be-ingenico.com> which differed from the named Respondent and contact information in the Complaint. On December 4, 2019, Namebay transmitted by email to the Center its verification response for the disputed domain name <ingenico-be.com>, disclosing registrant and contact information which differed from the information in the Complaint. The Center sent an email communication to the Complainant on December 6, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. That same day the Center sent an email communication to the Parties in English and French, indicating the language of the registration agreements is French, and inviting the Parties to submit their preference as to the language of the proceeding. The Complainant filed an amended Complaint on December 9, 2019, and requested that English be the language of the proceeding. The Respondent did not submit any comments.
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 January 8, 2020. On January 27, 2020, the Center received an email communication from the Complainant. In accordance with the Rules, paragraph 5, the due date for Response was January 28, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 30, 2020.
The Center appointed Lorenz Ehrler as the sole panelist in this matter on February 19, 2020. 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
Ingenico Group is a company active in the field of seamless payments. It provides end-to-end payment solutions to enable commerce across all channels, namely in-store, online and mobile. It is present in 170 countries.
The Complainant owns two international trademarks, namely the word trademark INGENICO, registration no. 1004927, registered on October 9, 2008 and a combined trademark INGENICO, registration no. 1210578, registered on January 3, 2014. Both trademarks claim goods and services in classes 9, 35, 36, 37, 38, and 42 and are protected in several countries, in particular in the European Union. Since 1998, the Complainant holds the domain name <ingenico.com>, which resolves to its official website.
The disputed domain names were registered by the Respondent or the person behind it in October 2019 and are thus clearly posterior to the Complainant’s trademarks.
The disputed domain names are inactive. However, one of the disputed domain names, namely <be-ingenico.com>, was used as an email address for messages sent to third parties in the name of the Complainant.
5. Procedural Issues
A. Language of the Proceeding
Pursuant to paragraph 11 of the Rules, the language of the administrative proceeding is the language of the registration agreement(s), subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
In the case at hand, the Complainant filed its Complaint in English even though the registration agreements appear to have been made in French. The Complainant has therefore requested that English be determined to be the procedural language instead of French. It argues, in particular, that English is the common language in international business and that translating the Complaint into French would cause undue delay in the current proceedings. Furthermore, it points out that the emails sent by the Respondent (Annex 4 of the Complaint) were in English, which shows that the Respondent does speak English.
Several scenarios may warrant proceeding in another language than that of the registration agreement, e.g. if it is proven or highly probable that the Respondent can understand the language of the complaint and/or if it would appear unfair to cause any delays in the proceedings by ordering the Complainant to translate the Complaint.
On the one hand, the panel notes that English is indeed the lingua franca in international business, and in Europe (including in Belgium), every schoolchild learns English. Additionally, the Respondent has not filed any response and therefore has not expressed any views on the language of the proceedings, which indicates that this issue is indifferent to him. In light of these circumstances, and taking into account the emails sent by the Respondent in English, it seems fair and appropriate to accept the complaint in English and to carry on these proceedings in English.
B. Identity Theft
The Complainant, in an email dated January 27, 2020 to the Center requests that the name of the person who was identified by the Registrar as the actual registrant of the disputed domain names should not appear in the proceedings because said person is in reality not the actual holder and registrant of the disputed domain names. As the Complainant argues, the supposed registrant is the victim of an identity theft and his reputation and image could be damaged if his name appears as the Respondent’s name in these proceedings. Previous UDRP panels have dealt with cases in which the respondent themselves alleged that they were not the actual domain name holder. In these cases, the panels required appropriate evidence for the alleged identity theft (see Moncler S.r.l. v. Name Redacted, WIPO Case No. D2010-1677; Boehringer Ingelheim Pharma GmbH & Co. KG v. Name Redacted, WIPO Case No. D2012-0890). In the present case, the Panel considers that no particular evidence is required because the request has not been put forward by the interested party, i.e. the supposed Respondent, but by his adversary, i.e. the Complainant. The request being in the supposed Respondent’s interest, it seems evident that they support the Complainant’s request. The alleged identity theft is therefore (as between the Parties) a non-contested fact, and it appears to be more than plausible that the individual identified as the registrant of the domain names in dispute is not the actual registrant and that his name has been instrumentalized by a third party to pursue illicit purposes. Accordingly, the Panel decides to redact the Respondent’s name from the caption and body of this decision.
6. Parties’ Contentions
The Complainant contends that the disputed domain names, <be-ingenico.com> and <ingenico-be.com>, are confusingly similar to its INGENICO trademarks.
Furthermore, the Complainant states that the Respondent is not affiliated with its group and that no license has been granted to the Respondent to use the Complainant’s trademarks. Also, the Respondent does not use the disputed domain names otherwise than for fraudulent emails which can obviously not represent any fair use.
Lastly, the Complainant contends that the Respondent registered and “uses” the disputed domain names in bad faith, even though neither of them resolves to any website, in particular because the Respondent knew or should have known of the Complainant’s trademark, which is proven by the fact that they sent fraudulent emails to third parties, presenting themselves as a company of the Complainant’s group.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The disputed domain name registered by the Respondent 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
The trademarks put forward by the Complainant demonstrate that the Complainant has rights in INGENICO.
Under the UDRP, the requirement under paragraph 4(a) of the Policy requires the disputed domain name to be identical or confusingly similar to the Complainant’s trademarks. There is no requirement of similarity of goods and/or services.
The existence of confusing similarity within the meaning of paragraph 4(a) of the Policy is not in doubt in the present case, given that the main element in the disputed domain names, i.e. “ingenico”, is identical with the Complainant’s distinctive trademark INGENICO. The incorporation of a trademark in its entirety is typically sufficient to establish that a disputed domain name is identical or confusingly similar to a trademark. The other element of the disputed domain name, i.e. the element “be” corresponds to the country code of Belgium and is thus descriptive, and not sufficient to avoid confusing similarity. The fact that “be” was meant to be read as the Belgian country code also results from the fact that the emails sent by the Respondent to third parties contained several references to Belgium, so that the Respondent’s intention likely was to induce the recipient into believing that the emails stemmed from a Belgian office or subsidiary of the Complainant.
As far as the generic Top-Level Domain (“gTLD”) “.com” is concerned, this element has a technical function and therefore is typically not taken into account when assessing the issue of identity or confusing similarity.
The Panel thus finds that the disputed domain name is confusingly similar with the Complainant’s trademark INGENICO.
B. Rights or Legitimate Interests
The Complainant contends that the Respondent does not have any rights or legitimate interests in the disputed domain names, in particular that the Respondent has not at any time been commonly known by the disputed domain names and the Respondent is not making legitimate use of said disputed domain names. The Complainant clearly states that it has not granted the Respondent any rights to use its trademarks.
UDRP panels found in previous decisions that in the absence of any license or permission from the Complainant to use widely known trademarks, no bona fide or legitimate use of a disputed domain name may reasonably be claimed (LEGO Juris A/S v. DomainPark Ltd, David Smith, Above.com Domain Privacy, Transure Enterprise Ltd, Host master, WIPO Case No. D2010-0138).
Furthermore, by not submitting any response to the Complaint, the Respondent failed to invoke any circumstance that might demonstrate, pursuant to paragraph 4(c) of the Policy, that it holds any rights or legitimate interests in the disputed domain names (Ahead Software AG v. Leduc Jean, WIPO Case No. D2004-0323; see also, Nintendo of America, Inc., v. Tasc, Inc. and Ken Lewis, WIPO Case No. D2000-1563 (finding that respondent’s default was sufficient to conclude that it had no rights or legitimate interests in the disputed domain names).
Last, but not least, the Complainant rightly points out that the emails sent by the Respondent impersonating the Complainant and one of its employees is all the contrary of a bona fide use (Ingenico Group v. Sammi Wilhi, Lng Group Pty Ltd, WIPO Case No. D2019-1079). Where the respondent demonstrably uses the domain name in bad faith, it is obvious that they do not have any rights or legitimate interests in the disputed domain names.
Accordingly, the Panel finds that the Complainant has shown that the Respondent does not have any rights or legitimate interests in the disputed domain names.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must, in addition to the matters set out above, demonstrate that the disputed domain name has been registered and is being used in bad faith.
The undisputed prima facie evidence establishes that the Respondent is not affiliated with the Complainant and has no license or other authorisation to use the Complainant’s trademark.
Respondent registered the disputed domain names well after the Complainant’s trademark was in use. The Panel finds that the Respondent should have known about the Complainant’s trademark and business when registering the disputed domain names. This Panel considers that the disputed domain names for themselves are a strong indication that the Respondent was aware of the Complainant’s trademark INGENICO, as it seems more than unlikely that the Respondent would have created – randomly – disputed domain names that are almost identical with the Complainant’s distinctive trademark (cf. Motul v. Contact Privacy Inc. Customer 0138693539 / Konstantin Speranskii, WIPO Case No. D2016-2632).
Any remaining doubt in this respect can be excluded when considering the fact that the Respondent, after only a few weeks following registration of the domain name <be-ingenico.com>, sent emails to third parties ordering goods in the name of the Complainant with delayed payment. This shows indeed that the Respondent registered the domain names in view of a fraudulent scheme, which implies that it was well aware of the Complainant’s company and trademark.
Previous UDRP panels have recognized that one of the ways in which domain names may be used is in connection with email fraud schemes, whereby it is irrelevant whether the domain name in dispute resolves to a website or not. One of such fraud schemes consists in ordering goods or services on the account of the complainant, whose trademark is contained in the domain name, for the illicit profit of the domain name holder (B & H Foto & Electronics Corp. v. Whois Privacy Protection Service, Inc. / Jackie Upton, WIPO Case No. D2010-0841).
This Panel therefore holds the view that the disputed domain names were registered and used in bad faith. The Complainant therefore has established registration and use of the disputed domain names in bad faith.
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 <be-ingenico.com> and <ingenico-be.com> be transferred to the Complainant.
Date: March 11, 2020
1 The Respondent appears to have used the name and contact details of a third party when registering the disputed domain names. In light of the potential identity theft, the Panel has redacted the Respondent’s name from this Decision. However, the Panel has attached as Annex 1 to this Decision an instruction to the Registrar regarding transfer of the disputed domain names, which includes the name of the Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this decision shall not be published due to the exceptional circumstances of this case. See ASOS plc. v. Name Redacted, WIPO Case No. D2017-1520.