WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Amundi Asset Management v. David Joel Claude Zachara, I Visa Services Co ltd
Case No. D2020-1251
1. The Parties
The Complainant is Amundi Asset Management, France, represented by Nameshield, France.
The Respondent is David Joel Claude Zachara, I Visa Services Co ltd, Mauritius.
2. The Domain Name and Registrar
The disputed domain name <amundi-financeemissions.com> (“Domain Name”) is registered with Instra Corporation Pty Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 18, 2020. On May 18, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 19, 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 May 21, 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 May 22, 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 May 26, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 15, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 16, 2020.
The Center appointed Nicholas Smith as the sole panelist in this matter on June 25, 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 French financial services company operating in 37 countries that specializes in asset management. The Complainant presently has EUR 1,425 billion under management and serves over 100 million retail, institutional, and corporate clients. The Complainant operates numerous websites including a website from the domain name <amundi-finance-emissions.com> (the “Complainant’s Domain Name”).
The Complainant holds a registered trade mark for the term AMUNDI (the “AMUNDI Mark”), International registration number 1024160, for financial services in class 36, registered on September 24, 2009.
The Domain Name <amundi-financeemissions.com> was registered on May 11, 2020 and presently redirects to a website at “www.encombrantsparis.com”, which is a website that appears to offer private bulk garbage collection to residents of Paris.
5. Parties’ Contentions
The Complainant makes the following contentions:
(i) the Domain Name is identical or confusingly similar to the Complainant’s AMUNDI Mark;
(ii) the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the AMUNDI Mark having registered the AMUNDI Mark in France and other jurisdictions. The Domain Name wholly incorporates the AMUNDI Mark along with the descriptive words “finance” and “emissions” and the “.com” generic Top-Level Domain (“gTLD”).
There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Complainant has not granted any license or authorization for the Respondent to use the AMUNDI Mark. The Respondent does not use the Domain Name for a bona fide purpose or legitimate noncommercial purpose. Rather the Domain Name resolves to a website at “www.encombrantsparis.com” which does not provide the Respondent with rights or legitimate interests.
The Domain Name was registered and is being used in bad faith. Given the reputation of the AMUNDI Mark, which is a coined and distinctive term, the registration of the Domain Name can only be taken as an attempt by the Respondent to gain an unfair benefit from the Complainant’s reputation. The Respondent is diverting Internet users to a third-party commercial website, which is using the Domain Name for commercial purposes. This amounts to bad faith use.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the AMUNDI Mark, having registrations for the AMUNDI Mark as a trade mark in France. The Domain Name wholly incorporates the AMUNDI Mark along with the terms “finance” and “emissions”, and the “.com” gTLD (which can be viewed as an essential element of any domain name, and accordingly may be disregarded under the first element confusing similarity test). Other UDRP panels have repeatedly held that where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8. Here, the AMUNDI Mark is clearly recognizable in the Domain Name.
The Panel finds that the Domain Name is confusingly similar to the Complainant’s AMUNDI Mark.
Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Respondent is not affiliated with the Complainant in any way. The Respondent has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the AMUNDI Mark or a mark similar to the AMUNDI Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a legitimate noncommercial fair use or a bona fide offering of goods and services; the use of the Domain Name to redirect to what appears to be a third party site with no connection to the Complainant, the Respondent or the Domain Name itself does not (by itself) amount to use for a bona fide offering of goods and services. Furthermore, the composition of the Domain Name, containing the AMUNDI Mark and additional dictionary words used in the Complainant’s Domain Name, carries a risk of implied affiliation with the Complainant and accordingly does not constitute fair use in these circumstances. See WIPO Overview 3.0, section 2.5.1.
The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has had the opportunity to provide evidence of its rights or legitimate interests, including submissions as to why its conduct amounts to a right or legitimate interest in the Domain Name under the Policy. In the absence of such a Response, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) the Respondent has registered the Domain Name in order to prevent the owner of the trade mark 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 Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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. (Policy, paragraph 4(b)).
The Panel finds that the Respondent must have been aware of the Complainant and its reputation in the AMUNDI Mark at the time the Respondent registered the Domain Name. The AMUNDI Mark consists of a coined term that has been in use by the Complainant, a significant international company, for 10 years. Moreover the Domain Name is almost identical to the Complainant’s Domain Name, deleting only the second hyphen. The Respondent has provided no explanation, and none is immediately obvious, why an entity would register a domain name incorporating the AMUNDI Mark (and two dictionary words that result in a domain name almost identical to the Complainant’s Domain Name) unless there was an awareness of and an intention to create a likelihood of confusion with the Complainant and its AMUNDI Mark. In these circumstances, the Respondent’s conduct in registering the Domain Name, when it was aware of the Complainant’s rights and lacking rights or legitimate interests of its own, amounts to registration in bad faith.
While the Respondent’s conduct does not strictly amount to passive holding, the Respondent has provided no explanation for why it has registered a domain name almost identical to the domain name of a leading financial services provider and redirected it to a third party website apparently unconnected to either the Complainant or the Respondent. Given the nature of the Domain Name, the lack of any possible legitimate use of the Domain Name connected to its inherent meaning and the failure by the Respondent to participate in this proceeding or otherwise provide any explanation of its conduct in a registering the Domain Name, the Panel finds on the balance of probabilities that the Domain Name is most likely being held pending sale or for use as a website or email addresses that will misleadingly create an association with the Complainant. As such, the Panel finds that the Domain Name is being used in bad faith.
Accordingly, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith under paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <amundi-financeemissions.com> be transferred to the Complainant.
Date: July 7, 2020