WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Indigo Group, SAS v. Indigo investissement, Indigo investissement / Dominique Legrand, indigo-group / Patrick Hemich, Indigo parking
Case No. D2020-1629
1. The Parties
The Complainant is Indigo Group, SAS, France, represented by PROMARK, France.
The Respondent is Indigo investissement, Indigo investissement / Dominique Legrand, indigo-group / Patrick Hemich, Indigo parking, all of United States of America.
2. The Domain Names and Registrar
The disputed domain names <indigo-group.info>, <indigo-investissement.com> and <parking-indigo.com> (“Domain Names”) are registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 22, 2020. On June 22, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On June 22, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 2, 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 July 7, 2020.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy ( “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 July 8, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 28, 2020. The Center received a late Response from InMotion Hosting on August 1, 2020 and the Panel has exercised its discretion to accept this late Response.
The Center appointed Nicholas Smith as the sole panelist in this matter on August 14, 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.
On August 31, 2020, the Panel issued Procedural Order 1 to the parties, the relevant text being reproduced below:
“Under the Rules for Uniform Domain Name Dispute Resolution Policy (the ‘Rules’), the Panel may, at its sole discretion request, in addition to the complaint and the response, further statements or documents from either of the Parties.”
The Panel notes that:
1. The Response submitted on August 1, 2020 consented to the transfer of the disputed domain names <indigo-group.info>, <indigo-investissement.com> and <parking-indigo.com> (the “Domain Names”) to the Complainant.
2. The Response was filed by InMotion Hosting, the reseller of the Domain Names, not from the WhoIs and Registrar confirmed registrants (Indigo investissement, Indigo investissement, Dominique Legrand, indigo-group and Patrick Hemich, Indigo parking).
The Panel seeks confirmation that the Response consenting to the transfer of the Domain Names was filed on behalf or with the consent of the Respondent, prior to making an order to give effect to the consent provided in the Response.
Therefore the Panel makes the following orders:
“1. The Respondent or InMotion Hosting has until September 7, 2020 to provide any further confirmation to the Center that the Response was filed on behalf of the Registrar confirmed registrants (Indigo investissement, Dominique Legrand, indigo-group and Patrick Hemich, Indigo parking) and/or that the registrants consent to the transfer of the Domain Names to the Complainant.
The additional material should be submitted to the WIPO Arbitration and Mediation Center by email to [...]@wipo.int for forwarding to the Panel.
2. The Panel will deliver its decision on or before September 13, 2020.
Please note that the Panel does not seek any submissions from the Complainant in this matter. If further submissions are sought from the Complainant a separate Order shall be issued.”
On September 8, 2020, the Center received a response from InMotion Hosting indicating that it had attempted to contact its customer on August 31, 2020 and requested that it acknowledge the transfer of the Domain Names. It had not received a response from the Respondent.
4. Factual Background
The Complainant is a French company specialising in parking solutions for private (airports and shopping centres) and public clients. The Complainant adopted its current corporate identity in 2014.
The Complainant is the owner of a trade mark registration No. 014443204 for the word mark INDIGO (the “INDIGO Mark”) being a European Union trade mark registered on January 9, 2019 for goods and services in classes 9, 35, 37, 38 and 39 relating to parking and transportation.
The Domain Names <indigo-group.info>, <indigo-investissement.com> and <parking-indigo.com>, were registered on April 21, 2020, May 3, 2020 and March 4, 2020 respectively and each resolve to inactive websites. The Complaint provides evidence that the Domain Names have been used to send emails purporting to be from the Complainant, offering recipients the opportunity to invest with the Complainant and/or purchase parking spaces in the Complainant’s projects. The emails referred to individuals employed by the Complainant and reproduced the Complainant’s logo and address.
5. Parties’ Contentions
The Complainant makes the following contentions:
(i) that the Domain Names are identical or confusingly similar to the Complainant’s INDIGO Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Names; and
(iii) that the Domain Names have been registered and are subsequently being used in bad faith.
The Complainant is the owner of INDIGO Mark, having registered this mark in the European Union. The Domain Names are confusingly similar to the INDIGO Mark, incorporating the INDIGO Mark in its entirety with the addition of the descriptive terms “group”, “investissement” and “parking”.
There are no rights or legitimate interests held by the Respondent in respect of the Domain Names. The Respondent has no licence or right to use the Domain Names and has never been granted any permission by the Complainant for the registration of the Domain Names. The Domain Names do not resolve to active websites but are used for emails impersonating the Complainant for the purpose of committing a fraud on the Complainant’s customers and potential customers. Such a use is not bona fide.
The Domain Names were registered and are being used in bad faith. The Domain Names have been used to create emails that impersonate the Complainant.
A Response was filed by InMotion Hosting, the reseller of the Domain Names, but it was not clear whether InMotion Hosting is acting on behalf of the Respondent. The Response does not admit fault or liability or respond substantively to the allegations raised by the Complainant but indicates that InMotion Hosting is willing to voluntarily transfer the Domain Names to the Complainant.
6. Discussion and Findings
A. Identity of the Respondent and Consolidation of Proceedings
There was a question raised in the Complaint regarding the identity of the Respondent and the possible need to consolidate the proceedings against multiple respondents. These have been clarified by the Response filed by InMotion Hosting. The Response (which offered to transfer each of the Domain Names) confirms that each of the Domain Names are registered to or under the control of the same Respondent. In any event, the Panel notes that the Domain Names have the same address and same phone number and are registered with the same registrar. In addition, the Domain Names are all used for fraudulent email purposes. In view of these circumstances, the Panel finds that the Domain Names or corresponding websites are subject to common control, and the consolidation is fair and equitable to all parties.
B. Consent to Transfer
The Response contained a statement consenting to the transfer of the Domain Names to the Complainant. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.10, states, in response to the question “How do panels handle cases involving a respondent’s informal or unilateral consent for the transfer of the domain name to the complainant outside the ‘standard settlement process’ described above?” that:
“Where parties to a UDRP proceeding have not been able to settle their dispute prior to the issuance of a panel decision using the ‘standard settlement process’ described above, but where the respondent has nevertheless given its consent on the record to the transfer (or cancellation) remedy sought by the complainant, many panels will order the requested remedy solely on the basis of such consent. In such cases, the panel gives effect to an understood party agreement as to the disposition of their case (whether by virtue of deemed admission, or on a no-fault basis).
In some cases, despite such respondent consent, a panel may in its discretion still find it appropriate to proceed to a substantive decision on the merits. Scenarios in which a panel may find it appropriate to do so include (i) where the panel finds a broader interest in recording a substantive decision on the merits – notably recalling UDRP paragraph 4(b)(ii) discussing a pattern of bad faith conduct, (ii) where while consenting to the requested remedy the respondent has expressly disclaimed any bad faith, (iii) where the complainant has not agreed to accept such consent and has expressed a preference for a recorded decision, (iv) where there is ambiguity as to the scope of the respondent’s consent, or (v) where the panel wishes to be certain that the complainant has shown that it possesses relevant trademark rights.”
In the present case it is not entirely clear that the entity that filed the Response, consenting to the transfer of the Domain Names, was authorised to file the Response on behalf of the Respondent. The Panel issued a Panel Order, seeking to clarify the relationship between the entity that filed the Response and the Respondent and is not satisfied that the Respondent has provided a genuine, unconditional and unilateral consent to the transfer of the Domain Names to the Complainant. As such the Panel shall proceed to a decision on the merits.
C. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and each of the Domain Names must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the INDIGO Mark, having registrations for the INDIGO Mark as a trade mark in the European Union.
The Domain Names consist of the INDIGO Mark along with the additional descriptive words “-group”, “‑investissement” (translated into English as “investment”) and “parking-”. The addition of a descriptive term to a complainant’s mark is insufficient to dispel the impression of confusing similarity, see Wal-Mart Stores, Inc. v. Henry Chan, WIPO Case No. D2004-0056. The Panel finds that each of the Domain Names are confusingly similar to the Complainant’s INDIGO Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
D. 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.
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 trade mark or service mark rights; or
(iii) you are making legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.”
The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Names or to seek the registration of any domain name incorporating the INDIGO Mark or a mark similar to the INDIGO Mark. There is no evidence that the Respondent is commonly known by the Domain Names or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Names in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Rather, it appears from the evidence submitted by the Complainant that the Respondent has used the Domain Names to send emails passing itself off as the Complainant (or intermediaries of the Complainant) purportedly offering the recipient of the email the opportunity to purchase parking spaces and encouraging the recipient to transfer the purchase price to an account connected with the Respondent. Such conduct is fraudulent and is not a bona fide offering of goods or services.
The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Names. The Respondent has had an opportunity to rebut the prima facie case that it lacks rights or legitimate interests but has chosen not to do so. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names under paragraph 4(a)(ii) of the Policy.
E. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii), 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 (Policy, paragraph 4(b)):
(i) circumstances indicating that the Respondent has registered or has acquired the Domain Names primarily for the purpose of selling, renting, or otherwise transferring the Domain Names to the Complainant who is the owners 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 Names; or
(ii) the Respondent has registered the Domain Names 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 Names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line 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 finds that the Respondent was aware of the Complainant at the time the Domain Names were registered. The Domain Names have been used to create email accounts from which the Respondent sent emails purporting to be emails from the Complainant, including emails reproducing the Complainant’s logo. The Respondent does not provide, nor is it apparent to the Panel, any reason why the Domain Names were registered other than by reference to the Complainant. The registration of the Domain Names in awareness of the Complainant and its rights in the INDIGO Mark and in the absence of rights or legitimate interests amounts to registration in bad faith.
The Respondent is using the Domain Names to send emails seeking to mislead recipients as to the identity of the sender for its own commercial gain. Such conduct is deceptive, illegal, and in previous UDRP decisions has been found to be evidence of registration and use in bad faith, see The Coca-Cola Company v. Marcus Steiner, WIPO Case No. D2012-1804. The Panel finds that the Respondent is using the Domain Names in bad faith.
Accordingly, the Panel finds that the Respondent has registered and is using the Domain Names 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 Names <indigo-group.info>, <indigo-investissement.com> and <parking-indigo.com> be transferred to the Complainant.
Date: September 13, 2020