WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

KILOUTOU S.A.S v. Contact Privacy Inc. Customer 1245279263 / Bouchet Pierre-Alain

Case No. D2020-0545

1. The Parties

The Complainant is KILOUTOU S.A.S, France, represented by Cabinet Beau de Lomenie, France.

The Respondent is Contact Privacy Inc. Customer 1245279263, Canada / Bouchet Pierre-Alain, France.

2. The Domain Name and Registrar

The disputed domain name <kiloutouenergie.info> is registered with Google LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 5, 2020. On March 5, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 6, 2020, 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 March 9, 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 March 12, 2020.

The Registrar also indicated that the language of the Registration Agreement was French. The Complaint was filed in English. The Center sent an email communication to the Complainant on March 9, 2020 inviting the Complainant to provide sufficient evidence of an agreement between the Parties for English to be the language of proceeding, a Complaint translated into French, or a request for English to be the language of proceedings. The Complainant filed a request for English to be the language of proceedings on March 11, 2020. 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 in both English and French, and the proceedings commenced on April 6, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 26, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 27, 2020.

The Center appointed William Lobelson as the sole panelist in this matter on May 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 - the KILOUTOU S.A.S Company (hereafter also referenced as KILOUTOU) - was created in 1980 in France. It is one of the European leaders in equipment’s rental services for the industry, for the construction and public works sector as well as for the particular and is established in France, Poland, Italia, Germany and Spain. KILOUTOU is the owner of and uses two principal websites “www.kiloutou.com” and “www.kiloutou.fr”, which allow clients renting online all kind of equipment.

KILOUTOU also owns and uses websites especially dedicated to energy / drone / module / event / industry fields of activities, such as: “www.kiloutou-energie.com” and “www.kiloutou-energie.fr” (energy rental services).

The KILOUTOU Company is the owner of several well established rights on the KILOUTOU trademarks, among which:

- French trademark KILOUTOU LOUE PRESQUE TOUT (+ device), of December 9, 1982, registration number 1221258, in classes 6 - 12, 16, 20, 28, 37, 39, 40 and 41.

- French trademark KILOUTOU MULTI-LOCATION (+ device), of July 1, 1994, registration number 94527182, in classes 1 – 9, 11, 12, 16 – 22, 24, 25, 27, 35 –42 and 45.

- International trademark KILOUTOU MULTI LOCATION (+ device), of July 1, 1994 registration number 628442, in classes 1—9, 11, 12, 16-25, 27, 35-42.

- French trademark KILOUTOU No1 MULTI-LOCATION (+ device), of July 1, 1994, registration number 94527183, in classes 1 – 9, 11, 12, 16 – 22, 24, 25, 27, 35 – 42 and 45.

- European Union trademark KILOUTOU, of August 21, 2003, registration number 003332814, in classes 2, 3, 7, 8, 9, 11, 12, 16, 21, 35, 37 - 45.

- European Union trademark KILOUTOU (+ device), of August 21, 2003, registration number 003393634, in classes 2, 3, 7, 8, 9, 11, 12, 16, 21, 35, 37 - 45.

- Brazilian trademark KILOUTOU (+device), of July 23, 2010 registration numbers 830688242, 830688285 and 830688234 respectively in classes 40, 3 and 41.

- Polish trademark KILOUTOU (+device), of October 17, 2013, registration number NR 278459, in classes 35, 37-45.

- French trademark KILOUTOU (+ device), of January 25, 2016, registration number 164243185 in classes 2, 3, 6-9, 11, 12, 16, 17, 21, 35, 37-45.

- African Intellectual Property Organization (“OAPI”) trademark KILOUTOU, of August 26, 2016, registration number 90643, in classes 35, 37-45.

- OAPI trademark KILOUTOU, of August 26, 2016, registration number 90644, in classes 35, 37-45.

- International trademark KILOUTOU, of January 17, 2019, registration number 1482668, in classes 2, 3, 37-40, 42 45.

The disputed domain name is <kiloutouenergie.info>. It has been registered on August 18, 2019, anonymously.

Pursuant to the filing of the present UDRP complaint, the Registrar disclosed the identity of the Respondent, namely an individual with a place of residence in Paris, France.

The disputed domain name resolves towards a DNS ERROR page.

5. Parties’ Contentions

A. Complainant

The Complainant claims that the disputed domain name is likely to be confused with its earlier rights vested in the trademark KILOUTOU and in the domain names <kiloutou-energie.fr> and <kiloutou-energie.com>, that the Respondent has no rights or legitimate interests in the disputed domain name, and that the disputed domain name has been registered and is being used in bad faith.

B. Respondent

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

6. Discussion and Findings

Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects under the Rules set out in paragraph 4(a) of the Policy. Namely, the Complainant must prove that:

(i) The disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i));

(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name (paragraph 4(a)(ii));

(iii) The disputed domain name has been registered and is being used in bad faith (paragraph 4(a)(iii)).

A. Language of the proceeding

Paragraph 11(a) of the Rules indicates that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”.

In this case, the Complaint was submitted in English and the Registrar confirmed that the language of the registration agreement was French. The Complainant requested English to be the language of proceeding.

Noting that the Respondent did not object to this request and that did not submit a response, and that the website at the disputed domain name is not in French, the Panel accepts the Complainant’s request to issue a decision in English.

B. Identical or Confusingly Similar

The disputed domain name is <kiloutouenergie.info>.

The Complainant is the owner of trademark registrations formed – exclusively or not, with the name KILOUTOU.

The Complainant also has two domain names <kiloutou-energie.fr> and <kiloutou-energie.com>.

The trademark KILOUTOU is phonetically identical to the expression “qui loue tout”, which is the French literal translation of “who rents anything”. But the spelling “KILOUTOU” is fanciful and does confer to the Complainant’s trademark its distinctive character.

In addition, the Panel notes that the disputed domain name <kiloutouenergie.info> is almost identical to the Complainant’s domain names <kiloutou-energie.fr> and <kiloutou-energie.com>.

Except for the hyphen and the generic top-level domain “.info”, the domain names are identical to the disputed domain name.

The disputed domain name reproduces the Complainant’s trademark KILOUTOU in its entirety. The addition of the dictionary word “energie” (energy in English) does not prevent a finding of confusing similarity.

Consequently, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy

C. Rights or Legitimate Interests

To demonstrate rights or legitimate interests in a domain name, non-exclusive respondent defenses under UDRP paragraph 4(c) include the following:

(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 and services;

(ii) The Respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if the Respondent has acquired no trademark or service mark rights;

(iii) The Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleading divert consumers or to tarnish the trademark or service mark at issue.

The Panel notes that the Respondent has not filed a response and thus did not deny the Complainants assertions, nor brought any information or evidence for demonstrating any rights or legitimate interests.

The Complainant has made a prima facie showing that the Respondent does not have any rights or legitimate interests in the disputed domain name, particularly by asserting that the Respondent is not affiliated with it in any way and that it never authorized the Respondent to use its trademark as part of the disputed domain name.

The Complainant further contends that the Respondent is not known under the disputed domain name, does not own any trademark or company name pertaining thereto and thus does not make any bona fide use of the same, being emphasized that the disputed domain name does not resolve towards any active web page, but only a DNS error page.

The Panel finds that the Complainant has met the requirement under the Policy of showing that the Respondent does not have any rights or legitimate interests in the disputed domain name.

Accordingly, the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

The Complainant claims that the Respondent has registered the disputed domain name and uses the same in bad faith, even though the said domain name does not resolve towards any active web page.

It is a consensus view among UDRP panelists that, with comparative reference to the circumstances set out in paragraph 4(b) of the UDRP deemed to establish bad faith registration and use, the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith.

The Panel must examine all the circumstances of the case to determine whether the Respondent is acting in bad faith.

Examples of what may be cumulative circumstances found to be indicative of bad faith include the Complainant having a well-known trademark, no response to the complaint having been filed, and the registrant’s concealment of its identity. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration

The Complainant has substantiated the fact that its trademark KILOUTOU, which has been registered and used in France for years, now benefits from a high level of public’s awareness. Earlier UDRP decisions have acknowledged the Complainant’s trademark reputation (Kiloutou v. Domain Drop SA, WIPO Case No. D2006-1105 and Kiloutou v. Marylin Martin, WIPO Case No. D2006-1104).

The disputed domain name was registered using a privacy service, but when the identity of the Respondent was disclosed by the Registrar, it was confirmed that this individual was based in France.

The Complainant’s investigations reveal that the details of the Respondent, and in particular his address and phone number are not genuine.

But, and even when assuming that his name is not fake, the fact that the Respondent used French name, address and phone number implies that he is genuinely French or at least has connections with France, where the Complainant’s mark is very well known.

Besides, it is worth highlighting the fact that the Respondent has adopted the very same unusual spelling as the Complainant in respect of the name KILOUTOU. As specified above, KILOUTOU is phonetically identical to “qui loue tout”, which is the literal French translation of “who rents anything”. Rather than using the regular spelling “qui loue tout”, the Respondent chose to adopt the same fanciful orthography “KILOUTOU” as the Complainant’s trademark.

The addition of “energie” to the Complainant’s trademark does not deprive the latter from its autonomy and leads the public to believe that the disputed domain name <kiloutouenergie.info> is owned and used by the Complainant in relation with a specific range of goods or services branded after its house mark KILOUTOU, but dedicated to the energy area.

In light of the above, this Panel finds that the Respondent had the Complainant’s trademark in mind when he registered the disputed domain name.

The Panel also notes that the Respondent concealed his identity when he registered the disputed domain name, and that he did not reply to the Complaint.

The Panel infers from the above that the Respondent acted in bad faith when he registered the disputed domain name, and is using the disputed domain name in bad faith.

Such passive holding is to be regarded as use in bad faith (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574; Ladbroke Group Plc v. Sonoma International LDC, WIPO Case No. D2002-0131; Westdev Limited v. Private Data, WIPO Case No. D2007-1903; Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393; Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273).

Consequently, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy are 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 name <kiloutouenergie.info> be transferred to the Complainant.

William Lobelson
Sole Panelist
Date: May 8, 2020