WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mirova v. WhoisGuard Protected, WhoisGuard, Inc. / Brian Tranter
Case No. D2020-0142
1. The Parties
The Complainant is Mirova, France, represented by Inlex IP Expertise, France.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Brian Tranter, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <mirovas.com> (the “Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 21, 2020. On January 21, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 22, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 22, 2020, 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 January 29, 2020.
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 29, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 18, 2020. On January 30, 2020, the Center received an email communication from a third-party regarding proceeding. The Respondent did not submit any formal response. Accordingly, on February 28, 2020, the Center notified to the Parties that it was proceeding to the panel appointment stage.
The Center appointed Wolter Wefers Bettink as the sole panelist in this matter on March 6, 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 active in the field of sustainable financial and investment solutions. It enables its customers to collect funds and transfer cash to third-party accounts for remote and proximity payments and to easily integrate payments.
The Complainant holds the following trademark registrations (the “Trade Marks”)
- European Union registration MIROVA No. 10787307, registered on September 10, 2012;
- European Union registration of a device mark with MIROVA No. 11123726, registered on January 23, 2013; and
- International registration MIROVA No. 1146522, based on a registration in France with priority date February 15, 2012.
The Domain Name was registered on November 11, 2019. The Domain Name has been used in emails sent by a third party in an attempt to fraudulently obtain payment from a customer of the Complainant, by copying the email to email addresses combining the Domain Name with names of existing persons working for the Complainant.
5. Parties’ Contentions
According to the Complainant there is a likelihood of confusion between the Domain Name and the Trade Marks as the Domain Name contains the mark MIROVA of which the Trade Marks consist.
The Complainant submits that the addition of the letter “s” at the end of the Domain Name can be perceived by the consumer as indicating the plural and is not likely to avoid a confusion and that the consumer will be led to think that the Domain Name is owned by the Complainant.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name since it has no prior rights (including trademark rights) in respect of the name MIROVAS as the Respondent registered the Domain Name only after the Complainant had registered the Trade Marks. Furthermore, the Complainant points out, there is no business or legal relationship between the Complainant and the Respondent and the Complainant has neither authorized nor licensed the Respondent to use the Trade Marks. In addition, the Complainant states, the Domain Name does not resolve to a website so that the Respondent has no legitimate interests in registering or using the Domain Name, while the Domain Name has been registered and used for fraudulent purposes in order to mislead the consumer. The Complainant submits that the Domain Name was registered and is being used in bad faith, as the Respondent, when registering the Domain Name, has hidden its identity by using a privacy service, while the Domain Name is involved in a scam against a client of the Complainant. According to the Complainant emails were sent to this client using an email address containing a misspelling of the domain name of the investor bank of the client, requesting the payment of a large amount of money as capital contribution to an investment fund of the Complainant and, apparently in an attempt to give additional credibility to the email, with copy conform to email addresses containing names of employees of the Complainant and the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has shown that it has registered rights in the Trade Marks. The Domain Name is confusingly similar to the Trade Marks as it incorporates the term “Mirova”, of which the Trade Marks consist, in its entirety. The addition of letter “s” does not avoid a finding of confusing similarity between the Domain Name and the Trade Marks as it is a misspelling of the Trade Marks, while it can be perceived as indicating a plural (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.9; see also, inter alia, Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775, and Tetra Laval Holdings & Finance S.A. v. Prince Amin, Access Point Technologies, WIPO Case No. D2016-1052). The generic Top-Level Domain (“gTLD”) “.com” is typically disregarded under the confusing similarity test, since it is a technical registration requirement (see WIPO Overview 3.0, section 1.11).
Therefore, the Panel finds that the Domain Name is confusingly similar to the Trade Marks in which the Complainant has rights.
B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, the second element a complainant has to prove is that a respondent lacks rights or legitimate interests in a domain name. This may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. In order to satisfy the second element, the Complainant has to make out a prima facie case that the Respondent does not have rights or legitimate interests in the Domain Name. If the Complainant succeeds in doing so, the burden of production on this element shifts to the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the Domain Name. If the Respondent fails to come forward with such relevant evidence, the Complainant is deemed to have satisfied the second element (see WIPO Overview 3.0, section 2.1).
Based on the evidence and the undisputed submissions of the Complainant, the Panel concludes that the Respondent has not received the Complainant’s consent to use the Trade Marks as part of the Domain Name, is not commonly known by the Domain Name, and has not acquired trade mark rights in the Domain Name. Furthermore, in view of the fact that email addresses containing names of employees of the Complainant and the Domain Name have been used in connection with a phishing operation, the Respondent is not making a legitimate noncommercial or fair use of the Domain Name (paragraph 4(c)(iii) of the Policy), nor can such use be considered to be in connection with a bona fide offering of goods or services, in accordance with paragraph 4(c)(i) of the Policy.
Therefore, the Panel concludes that the Respondent has no rights to or legitimate interests in the Domain Name in terms of paragraph 4(c) of the Policy.
C. Registered and Used in Bad Faith
Based on the information and the evidence provided by the Complainant, the Panel finds that at the time of registration of the Domain Name the Respondent was or should have been aware and indeed specifically targeted, the Complainant and the Trade Marks. In particular, such knowledge and intent is derived from the following facts: (i) the Respondent’s registration of the Domain Name occurred over 7 years after the registration of the earliest of the Trade Marks; (ii) the element MIROVA of which the Trade Marks consists, is incorporated in its entirety in the Domain Name, and does not appear to be a name of which a registrant is likely to spontaneously or accidentally think; (iii) a simple trade mark register search, or even an Internet search, prior to registration of the Domain Name in its name would have informed the Respondent of the existence of the Trade Marks. In view of these circumstances and the use of email addresses containing names of employees of the Complainant and the Domain Name in connection with a phishing operation, the fact that the Respondent tried to hide its identity through the use of a privacy service and the fact that the Respondent did not file a Response, the Panel concludes that the Respondent registered and used the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to the website or other online location creating a likelihood of confusion with the Trade Marks as to the source, sponsorship, affiliation or endorsement of the website or location or of the services on the website to which the Domain Name resolves, in accordance with paragraph 4(b)(iv) of the Policy.
Therefore, the Panel finds that the Respondent has registered and is using the Domain Name 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 name <mirovas.com> be transferred to the Complainant.
Wolter Wefers Bettink
Date: March 16, 2020