WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Robertet SA and Robertet Africa v. Otumba David
Case No. D2019-2930
1. The Parties
The Complainants are Robertet SA and Robertet Africa, France, represented by Novagraaf France, France.
The Respondent is Otumba David, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <robertet--africa.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 28, 2019. On November 28, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 30, 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 and contact information for the disputed domain name.
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 December 12, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 1, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 3, 2020.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on January 17, 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
The Complainants are part of the French group that was created in 1850 and develops flavor and perfume additives and ingredients. The First Complainant is the owner of the following trademark registrations (Annex 6 to the Complaint):
- European Union Trade Mark Registration No. 13154811 for ROBERTET, registered on December 31, 2014, in classes 1, 3 and 30; and
- French Trademark Registration No. 93476071 for ROBERTET, registered on July 7, 1993, and subsequently renewed, in classes 1 and 3.
The Second Complainant initiated its activities on February 21st, 2018 and holds the registered commercial name of Robertet Africa (Annex 5 to the Complaint).
The disputed domain name <robertet--africa.com> was registered on October 11, 2019. No active webpage resolves from the disputed domain name.
5. Parties’ Contentions
The Complainants assert to be one of the 10 developers of flavor and perfume additives and ingredients in the world, having become very well established in this field of activity in France and throughout the world.
In the Complainants’ view, the disputed domain name incorporates their ROBERTET trademark and ROBERTET AFRICA trade name entirely, creating consumer confusion. Previous UDRP panels have recognized that when a domain name wholly incorporates a registered mark, that is sufficient to establish identity or confusing similarity under the Policy.
According to the Complainants, the Respondent has no rights or legitimate interests in the disputed domain name given that:
(i) the Respondent has registered the disputed domain name without the Complainants’ consent;
(ii) the Respondent is passively holding the disputed domain name; and
(iii) the Respondent has no trademark or patronymic rights over the ROBERTET denomination.
The Complainants contend that the disputed domain name was registered and used in bad faith and is being passively held what is further corroborated by the lack of reply to the warning letter and subsequent reminder sent prior to this proceeding (Annex 11 to the Complaint). In addition to that, the Complainants indicate that mail servers have been configured on the disputed domain name (Annex 13 to the Complaint), being it possible that the Respondent has used the disputed domain name to send fraudulent emails in an attempt to pass off as the Complainants or for other unlawful purposes.
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and
(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.
The Complainants must prove in this administrative proceeding that each of the aforesaid three elements is present in order to obtain the transfer of the disputed domain name.
A. Identical or Confusingly Similar
The Complainants have established rights in the ROBERTET trademark, duly registered.
The Panel finds that the disputed domain name <robertet--africa.com> reproduces the Complainants’ mark in its entirety, being the addition of the geographical term “Africa” insufficient to avoid a finding of confusing similarity under the Policy which, as recognized by past UDRP panels involves a “comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name” (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, “WIPO Overview 3.0”, section 1.7).
The first element of the Policy has therefore been established.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that indicate a respondent’s rights to or legitimate interests in a disputed domain name. These circumstances are:
(i) before any notice of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, in spite of not having acquired trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has failed to invoke any of the circumstances which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights to and/or legitimate interests in the disputed domain name. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden is still on the Complainant to first make a prima facie case against the Respondent.
In that sense, the Complainants indeed indicate not to have given their consent to the registration of the disputed domain name to the Respondent.
Also, the absence of any indication that the Respondent has rights in a term corresponding to the disputed domain name, or any possible link between the Respondent and the disputed domain name that could be inferred from the details known of the Respondent or the webpage relating to the disputed domain name, corroborate with the Panel’s finding of the absence of rights or legitimate interests.
Another element to consider is the fact that no active use of the disputed domain name appears to have taken place which makes it even more difficult to conceive which rights or legitimate interests the Respondent would have in a domain name that reproduces in its entirety the Complainants’ trademark.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name.
C. Registered and Used in Bad Faith
The Policy indicates in paragraph 4(b) that bad faith registration and use can be found in view of:
(i) circumstances indicating that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring it to the Complainant who is the owner of a trademark relating to the disputed domain name or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the Respondent has registered the disputed 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 the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other location, by creating a likelihood of confusion with the Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.
Past UDRP panels have already dealt with the question of whether the “passive holding” of a domain name could constitute bad faith. Section 3.3 of the already quoted WIPO Overview 3.0 states that “[f]rom 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 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”.
In the present case, the passive holding of the disputed domain name by the Respondent amounts to the Respondent acting in bad faith, given that the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use of the disputed domain name. In addition to that, and as decided in past cases under the Policy, it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.
Two other factors corroborate the finding of the Respondent’s bad faith conduct in this case: the Respondent’s lack of reply to the warning letter and reminders sent (Annex 11 to the Complaint) and the use of a false address in the WhoIs data and, consequently, the Center not being able to have the communication delivered to it.
For the reasons stated above, the Respondent’s conduct amounts, in this Panel’s view, to bad faith registration and use of the disputed domain name.
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 <robertet--africa.com> be transferred to the Complainant.
Wilson Pinheiro Jabur
Date: January 23, 2020