WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

A et A – MÄDER v. Anatole Le Boursicaud

Case No. D2019-3008

1. The Parties

The Complainant is A et A – MÄDER, France, represented by Cabinet Beau de Lomenie, France.

The Respondent is Anatole Le Boursicaud, France.

2. The Domain Names and Registrar

The disputed domain names <mader-aero.com> and <maderaero.com> are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 5, 2019. On December 6, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 9, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 20, 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 December 23, 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 December 27, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 16, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 22, 2020.

The Center appointed Benjamin Fontaine as the sole panelist in this matter on February 11, 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 Complainant is A et A – MÄDER, a French company acting in the field of industrial paints and composites. It generates an annual turnover of around EUR 190 million and operates in 70 countries.

Until very recently, the Complainant operated in particular its activities in the aeronautic field, with the supply of paint and composite elements for major actors of the sector. For example, a statement of the Complainant available in its website indicates that “Mäder has operated in the Aeronautics sector for over 25 years, developing unique expertise in high-technology paint, satisfying the most stringent specifications at the request of sector industrial firms, designers and manufactures of components and subassemblies”.

The Complainant even operated in this field through a specific subsidiary, Mäder Aero. This entity was acquired by another group very recently, but this has no impact on the outcome of this case.

For the purpose of this case, the Complainant relies on several earlier trade marks, including:

- European Union Trade Mark MÄDER (word) No. 4240347 filed on January 14, 2005, and registered on June 5, 2010 for goods in classes 2 and 17;

- French trade mark MÄDER (word) No. 3257225 filed on November 17, 2003, for goods in class 17;

- French trade mark MÄDER (word) No. 1220552 filed on January 12, 1982, for goods in class 2.

In support of its activities, the Complainant operates the domain name <mader-group.com>, through which it hosts its website.

The disputed domain names <mader-aero.com> and <maderaero.com> were registered by the Respondent on December 16, 2018. After the Complaint was filed, the Registrar notified to the Center that the disputed domain name was held by an individual named “Anatole Le Boursicaud”, with an alleged address in France. At the moment of the filling of the Complaint neither of the disputed domain names resolved to an active site.

Some time during the first semester of 2019, and with the intermediation of the Registrar, the Complainant contacted the Respondent with the objective of purchasing the disputed domain names. On May 20, 2019, the Respondent indicated – through the Registrar and without declining his identity – that the disputed domain names were one sale for USD 12,000.

On September 17, 2019, the Complainant’s legal representative sent a warning letter to the Respondent, through the Registrar, asking for the voluntary transfer of the disputed domain names in view of the infringement of its intellectual property rights. It indicated that it was solely prepared to reimburse out‑of‑pockets disbursements linked to the registration of the disputed domain names. The Respondent did not react, and accordingly this Complaint was filed on December 5, 2019.

On December 16, 2019, the disputed domain names expired without having been renewed by the Respondent. However, in view of the existence of this proceeding the Registrar confirmed that these domain names would remain under “lock” status until further notice.

Finally, and in order to provide a full picture of the relevant facts, mention should also be made of the simultaneous registration by the Respondent of two identical domain names under the French country-code Top Level Domain, namely <mader-aero.fr> and <maderaero.fr>. These registrations were cancelled ex‑officio by the .FR Registry (“AFNIC”) on February 28, 2019, because of the failure of the respondent to confirm his identification data in compliance with the French Naming Policy.

5. Parties’ Contentions

A. Complainant

On the first element of the Policy, the Complainant argues that the disputed domain names <mader‑aero.com> and <maderaero.com> are confusingly similar to the earlier trade marks MÄDER. It claims in particular that “[t]he disputed domain names are similar in structure to the domain name <mader‑group.com> that Complainant is the legal editor. They all include the MADER word to a generic suffix ‘aero’ or ‘group’”. It adds that “the disputed domain names are confusingly similar to the MÄDER trademark to the extent the public could believe this is the aeronautical division of MÄDER”.

On the second element of the Policy, the Complainant indicates that the Respondent has no rights or legitimate interests in the disputed domain names, and that it has no relationship with the Respondent and has not authorized him to register and use the trade mark MÄDER on any account. The Complainant notes, also, that the Respondent is not making any legitimate, bona fide, offering of goods or services under the disputed domain names. Rather, the disputed domain names are inactive.

On the third element of the Policy, the Complainant highlights a number of circumstances which, in its opinion, demonstrate that the disputed domain names <mader-aero.com> and <maderaero.com> were registered, and are being used, in bad faith. These include: (1) the use of a privacy shield service, (2) the fact that the Respondent would have immediately located the earlier trade marks of the Complainant if it had checked them, (3) the fact also that any inquiry on a search engine, over “Mader”, or even “Mader Aero”, would have provided the Complainant’s website as first result, (4) the retail price of the disputed domain names, in the excessive amount of USD 12,000, (5) the failure of the Respondent to respond to the Cease and Desist letter of the Complainant. The Complainant raises also the issue of the cancellation of the domain names <mader-aero.fr> and <maderaero.fr> by AFNIC because of deficient and unconfirmed contact details. Finally, the Complainant argues that “by passively holding the disputed domain names, the Respondent has precluded the Complainant from using its trademark MÄDER in a corresponding domain name”.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that the Complainant prove all of the following three elements in order to be successful in these proceedings:

(i) the disputed domain name is identical or confusingly similar to a trademark 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 name; and

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

A. Identical or Confusingly Similar

The Complainant, under the first requirement of paragraph 4(a) of the Policy, needs to establish that the disputed domain names are confusingly similar to a trade mark or a service mark in which it has rights.

The Complainant owns several trade marks over the sign MÄDER. These trade marks are fully reproduced in the disputed domain names <mader-aero.com> and <maderaero.com>. The addition of the element “aero” does not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview3.0”).

The disputed domain names <mader-aero.com> and <maderaero.com> are therefore confusingly similar to the trade marks of the Complainant.

B. Rights or Legitimate Interests

Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain names. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

As indicated by the Complainant, the Respondent does not appear to be known by the disputed domain names, or to have been licensed or otherwise authorized by the Complainant to use its trade mark in a domain name or otherwise.

Likewise, the Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services. The disputed domain names have simply not been used for a period of over one year.

The Complainant is therefore deemed to have satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

In order to prevail under the third element of paragraph 4(a)(iii) of the Policy, the Complainant must demonstrate that the disputed domain names have been registered and are being used in bad faith.

Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. These are:

(i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant 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 complainant from reflecting the complainant’s trademark or service 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 online location, by creating a likelihood of confusion with the complainant’s 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.

The Panel concurs with the Complainant that the disputed domain names were registered, and are being passively used, in bad faith by the Respondent.

The factors which are normally taken into account for a finding of bad faith passive holding are listed in section 3.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), as follows: (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.

These factors are met in this case, but not only:

First, while the Complainant’s trade mark MÄDER is most likely not known by the general public, it is however a longstanding and relevant high-end player in the sector of paints and composites, including in the aeronautic sector. In this professional field, the trade mark MÄDER enjoys at least a certain reputation. Besides and in any event, MÄDER is inherently distinctive for these activities.

Second, the Respondent has failed to file a response to the Complaint. He also failed to respond to the cease and desist letter of the Complainant. Actually, the only occasion when he engaged into a discussion was to offer the disputed domain names for sale.

Third, the Respondent has taken active steps to conceal his true identity by providing an inexistent postal address. Indeed, the street name mentioned in the registration does not exist in the city which is also indicated.

Fourth, the Panel does not conceive any possible use in good faith of the disputed domain names. Much to the contrary, the Respondent specifically targeted the Complainant’s business, by associating its trade mark MÄDER to a name which describes one of its activities. “Aero” is indeed a common shortening for “aeronautic”, and as mentioned in the statement of facts, the Complainant operated through a subsidiary which company name was “Mäder Aero”. At the time when the disputed domain names were registered, the Complainant had not yet transferred its activities in the aeronautic sector.

Fifth, the Respondent did not, provide any reasonable explanation as to why the purchase of the disputed domain names by the Respondent required an investment of USD 12,000. This is very excessive for the disputed domain names which make a clear connection between the trade mark MÄDER and the field in which it is, or was, used. The Respondent only pretended to make undue benefits at the expenses of the Complainant, by inducing it to purchase a number of similar domain names. It should be recalled that no less than six domain names associating the elements “Mäder” and “aero” were registered simultaneously by the Respondent.

Sixth, and finally, the bad faith of the Respondent is confirmed with the cancellation by AFNIC of its domain names <mader-aero.fr> and <maderaero.fr> because of deficient and unconfirmed contact details.

Accordingly, the third criteria set out in paragraph 4(a) of the Policy is also 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 names <mader-aero.com> and <maderaero.com> be transferred to the Complainant.

Benjamin Fontaine
Sole Panelist
Date: February 25, 2020