WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Société d’Economie Mixte d’Aménagement et de Gestion du Marché d’Intérêt National de la Région Parisienne v. Super Privacy Service LTD c/o Dynadot / 颜超,Yan Chao

Case No. D2020-3234

1. The Parties

The Complainant is Société d´Economie Mixte d’Aménagement et de Gestion du Marché d’Intérêt National de la Région Parisienne, France, represented by Cabinet Alain Bensoussan Selas, France.

The Respondent is Super Privacy Service LTD c/o Dynadot / 颜超, Yan Chao, China.

2. The Domain Name and Registrar

The disputed domain name <relaisderungis.com> is registered with Dynadot, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 1, 2020. On December 2, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 3, 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 December 10, 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 December 14, 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 December 18, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 7, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 8, 2021.

The Center appointed Peter J. Dernbach as the sole panelist in this matter on January 29, 2021. 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 company that provides services related to the management, administration and promotion of a wholesale market for agri-food products. The Complainant owns the following trademark registrations (hereinafter referred to as the “RUNGIS Mark”):

, French trademark Reg. No. 14 4 085 296, in classes 9, 16, 25, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45, registered on April 17, 2014;

, French trademark Reg. No. 19 4 560 777, in classes 8, 9,14,16,18, 21, 24, 25, 29, 30, 31, 32, 33, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45, registered on June 18, 2019;

, European Union trademark Reg. No. 18 085 337, in classes 8, 9,14,16,18, 21, 24, 25, 29, 30, 31, 32, 33, 35, 36, 37, 38, 39, 41, 42, 43, 44 and 45, registered on January 4, 2020; and

, European Union trademark Reg. No. 16 815 789, in classes 9,16, 35, 38, 41, 42, and 43, registered on November 8, 2017.

The Complainant registered its official websites <rungisinternational.eu> and <rungisinternational.com>.

The Disputed Domain Name was registered by the Respondent on July 30, 2020, and resolved to a website presenting links to other pornographic websites.

5. Parties’ Contentions

A. Complainant

The Complainant requests that the Disputed Domain Name be transferred to the Complainant based on the following grounds:

(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant has obtained several trademarks for the term RUNGIS in different jurisdictions before the Respondent registered the Disputed Domain Name. The Complainant has been using the sign RUNGIS for over 50 years and the distinctive value of the RUNGIS term has been recognized by the French Industrial Property Office. The Complainant also provides materials to show the reputation of the RUNGIS term in worldwide.

The Disputed Domain Name incorporates the distinctive “RUNGIS” element in its entirety. The addition of “relais” is a generic word means relay in English, which does not prevent the confusing similarity between the Disputed Domain Name and the Complainant’s RUNGIS Mark. Further, the “relais” term damages the reputation of the Complainant’s RUNGIS Mark because of the possible negative connotation attached to the French word “relais”.

(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

The Respondent has no trademark rights composed with the “RUNGIS” term, nor does it have legitimate interests in the Disputed Domain Name. The Respondent has not received any license from the Complainant to use a domain name which features the RUNGIS Mark. The Respondent is not making a legitimate noncommercial use of the Disputed Domain Name. The fact that the Disputed Domain Name redirects to several links and pornographic content shows the Respondent intends to generate commercial gain through misleading Internet users.

(iii) The Disputed Domain Name has been registered and is being used in bad faith.

The Complainant has a long established reputation in the use of RUNGIS Mark for over 50 years. RUNGIS is not a common word in France or other languages and it is only designate to the Complainant. There is no reason for the Respondent to choose the “RUNGIS” element incorporated in the Disputed Domain Name other than creating an association with the Complainant’s trademark.

The Respondent’s use of the Disputed Domain Name to redirect Internet users to the pornographic content is considered tarnishment for commercial gain. In view of the foregoing, 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

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable Provider, in compliance with the Rules of Procedure, that (i) [the disputed domain name] is identical or confusingly similar to a trademark or service mark in which the complainant has rights[.]”

Based on the evidence submitted, the Panel finds that the Complainant has established that it owns rights in the RUNGIS Mark, which contains figurative element, the “RUNGIS” element, and other word elements (i.e. “Marché International ”, “Village””). As the figurative element would be incapable of representation in domain names, these elements can be disregarded in the comparison between the disputed domain name and the mark. See Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031; Bollore SE v. Fabrice Armand, WIPO Case No. D2020-2657; WIPO Overview 3.0, Section 1.10. In addition, the Complainant has proved that the “RUNGIS” element is the most distinctive element in the RUNGIS Mark. Therefore, when comparison of the disputed domain name and the mark, the Panel places more focus on the predominant and distinctive part of the textual component, that is, the “RUNGIS” element.

The Disputed Domain Name incorporates the distinctive “RUNGIS” element in its entirety. The addition of “relais” element, which means “relay” or “hotel” in English is only a dictionary word. The addition of “de” element is a preposition in France. Therefore, the “relais” and “de” element do not prevent a confusing similarity finding.

The Panel concludes that the Disputed Domain Name is confusingly similar to the Complainant’s RUNGIS Mark. The condition of paragraph 4(a)(i) of the Policy has been fulfilled.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable Provider, in compliance with the Rules of Procedure, that [...] (ii) [the respondent has] no rights or legitimate interests in respect of the [disputed] domain name[.]”

Paragraph 4(c) of the Policy sets out the following several circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy: (i) before any notice to the respondent 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 or services; or (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; or (iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

A complainant may show a prima facie case that a respondent lacks rights or legitimate interests in a disputed domain name, after which the burden of production passes to the respondent. (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455)

The Complainant has established that it is the owner of the RUNGIS Mark and confirmed that the Respondent is not connected with nor affiliated to the Complainant nor is the Respondent authorized to use the RUNGIS Mark to register the Disputed Domain Name.

Nothing in the record suggests that the name of the Respondent is at all related to “RUNGIS,” nor is there any evidence that the Respondent is commonly known by that name. According to the evidence filed by the Complainant, the Disputed Domain Name directs Internet users to a webpage that host pornographic material. It is clear that the Respondent is using the Disputed Domain Name to attract Internet users and divert consumers for commercial gain. Therefore, the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name.

The Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. The burden of production thus shifts to the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the Disputed Domain Name. However, the Respondent did not submit any allegation or evidence to support a finding that the Respondent has rights or legitimate interests in the Disputed Domain Name.

The Panel concludes that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service provider], in compliance with the Rules of Procedure, that […] (iii) [the respondent’s] domain name has been registered and is being used in bad faith.”

Paragraph 4(b) of the Policy explicitly states, in relevant part, that “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: [...] (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”

Porno-squatting is a practice where confusion with a well-known trademark is used to divert customers to a pornographic website for a commercial purpose, and that the pornographic content is sufficient to find a bad faith (Vivendi v. Guseva Svetlana, WIPO Case No. D2018-2631; Red Bull GmbH v. Whois Agent, Domain Protection Services, Inc. / esco escortlar, escort sitesi, WIPO Case No. D2017-1639; L’Oréal v. Robert Caceres, Dollerviews, WIPO Case No. D2015-1200).

The Complainant’s RUNGIS Mark have been registered in many jurisdictions in the world. The Respondent chose to use the Complainant’s trademark as the distinctive part of the Disputed Domain Name, adding the French term “relais” and the French preposition “de”. Those descriptive words can further contribute to confusion in the mind of the Internet users that the Disputed Domain Name has an affiliation with the Complainant. No allegation or evidence suggests that the Respondent selected the RUNGIS Mark as used in the Disputed Domain Name for any reason other than the reputation of the Complainant’s trademarks. Therefore, the Panel finds that the Disputed Domain Name has been registered in bad faith.

According to the evidence filed by the Complainant, the Disputed Domain Name resolves to a website that hosts pornographic material. It appears that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to pornographic and gambling websites by creating a likelihood of confusion with the Complainant’s RUNGIS Mark. Given the above, the Disputed Domain Name is being used in bad faith.

As the Disputed Domain Name has been registered and is being used in bad faith, the Panel finds that the condition of paragraph 4(a)(iii) of the Policy has been fulfilled.

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 <relaisderungis.com> be transferred to the Complainant.

Peter J. Dernbach
Sole Panelist
Date: February 12, 2021