WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Jean-Baptiste Pastor et Fils v. Xiao Lei Xue
Case No. D2020-2305
1. The Parties
Complainant is Jean-Baptiste Pastor et Fils, Monaco, represented by Monaco Intellectual Property (Mipro), Monaco.
Respondent is Xiao Lei Xue, China.
2. The Domain Name and Registrar
The disputed domain name <pastorjb.com> (the “Domain Name”) is registered with Network Solutions, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 3, 2020. On September 3, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 4, 2020, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. Complainant filed an amendment to the Complaint on September 9, 2020.
The Center verified that the Complaint together with the amendment to the 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 Respondent of the Complaint, and the proceedings commenced on September 9, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 29, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 30, 2020.
The Center appointed Robert A. Badgley as the sole panelist in this matter on October 9, 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
Complainant is a construction firm in Monaco that goes back at least to the 1930s. Complainant holds a Monaco trademark for J.B. PASTOR & FILS for construction services and other activities. The mark was registered under Registration No. 11.28527 on May 19, 2011. Complainant states that it has used the mark J.B. PASTOR & FILS since at least as early as 1943. One of the construction projects for which Complainant is best known is the Principality Stadium, a project begun in 1936. Complainant’s latest annual turnover in Monaco exceeded EUR 200 million.
Complainant maintains a website at “www.jbpastoretfils.com”. Complainant notes that a Google search for “pastor jb” (the characters in the Domain Name) yields as first results Complainant, its history, and so forth.
The Domain Name was registered on December 31, 2019. The Domain Name resolves to a website in Chinese language with various sexual images. There also appear to be links to online gambling sites. This is alleged in the Complaint, and is not contested by Respondent.
Complainant asserts that it has never authorized Respondent to use its trademark, in a domain name or otherwise.
Complainant’s counsel sent a cease-and-desist letter to Respondent on May 8, 2020, in both English and Chinese language. Respondent did not reply.
5. Parties’ Contentions
Complainant asserts that it has established each element required for a transfer of the Domain Name.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel concludes that Complainant has rights in the trademark J.B. PASTOR & FILS through registration and use demonstrated in the record. The Panel also concludes that the Domain Name is confusingly similar to that mark. The dominant portion of the mark – J.B. PASTOR – is clearly recognizable within the Domain Name. (The characters “& fils” mean “and son” in French; many family-owned businesses named for their founder carry terms such as “and son” to underscore the family continuity of the enterprise.)
The Domain Name inverts the dominant text, J.B. PASTOR, to “pastorjb,” but this does little to overcome the confusing similarity between the mark and the Domain Name.
Complainant has established Policy paragraph 4(a)(i).
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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 Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name. Respondent has not come forward in this proceeding to articulate or prove Respondent’s bona fides vis-à-vis the Domain Name. On the record before the Panel, nothing is known of Respondent, other than the undisputed (and plausible) allegations that Respondent has no relationship with Complainant, Respondent conducts no business under the name “Pastor JB,” Respondent operates a website containing sexual material and hyperlinks to apparently commercial websites that offer online gambling, and Respondent did not respond to a cease-and-desist letter. Nothing in this record vests Respondent with any rights or legitimate interests in the Domain Name.
Complainant has established Policy paragraph 4(a)(ii).
C. Registered or Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Respondent registered and is using the Domain Name in bad faith. On the undisputed record before the Panel, it is more likely than not that Respondent had Complainant’s J.B. PASTOR & FILS mark in mind when registering the Domain Name. The confusing similarity, discussed above, between that mark and the Domain Name, coupled with Respondent’s failure to explain Respondent’s motivations with regard to the Domain Name, allow this Panel to conclude that Complainant has carried its burden of proving bad faith registration of the Domain Name.
As respects bad faith use, the above-quoted Policy paragraph 4(b)(iv) applies here. The website to which the Domain Name resolves appears to provide Respondent with pay-per-click revenue via hyperlinks to gaming sites.
Complainant has established Policy paragraph 4(a)(iii).
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 <pastorjb.com> be transferred to Complainant.
Robert A. Badgley
Date: October 23, 2020