WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Qwant v. Privacy service provided by Withheld for Privacy ehf / Mike Jones

Case No. D2021-1059

1. The Parties

Complainant is Qwant, France, represented internally.

Respondent is Privacy service provided by Withheld for Privacy ehf, Iceland / Mike Jones, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <searchqwant.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 8, 2021. On April 8, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 8, 2021, 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 Complainant on April 9, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on April 13, 2021.

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 Respondent of the Complaint, and the proceedings commenced on April 14, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 4, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 5, 2021.

The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on May 10, 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

Complainant operates an Internet search engine under the domain name <qwant.com>, which it registered in 2011. Complainant owns various trademark registrations for its QWANT trademark (Complainant’s Mark or “QWANT Mark”) including French registration number 3917946 (registered May 4, 2012) and International Registration number 1153375 (registered January 11, 2013).

The disputed domain name <searchqwant.com> was registered by Respondent on January 28, 2021 and resolves to an Internet search engine website that mimics Complainant’s search engine website located at its <qwant.com> domain name.

5. Parties’ Contentions

A. Complainant

Complainant contends that its QWANT Mark is used identically in the disputed domain name and that the addition of the word “search” and the generic Top-Level Domain (“gTLD”) “.com” as part of the disputed domain name does not lessen the likelihood of confusion with Complainant’s Mark.

Complainant contends that it has no connection with Respondent and has not authorized Respondent to use the QWANT Mark in which Complainant has exclusive rights. Complainant therefore asserts that Respondent has no rights or legitimate interests in respect of the disputed domain name.

Complainant further asserts that that the disputed domain name chosen by Respondent is not a common or generic name, as it is protected as a trademark in France in the European Union. Complainant alleges that in view of the seniority of QWANT trademarks and the association within the disputed domain name of the name QWANT with a term such as “search” which is directly related to Complainant's field of activity, Respondent could not have been unaware of the existence of Complainant’s rights at the time it registered the disputed domain name. Complainant also contends that the use of the disputed domain name constitutes a deliberate act of infringement in bad faith because the domain name links to a search engine that improperly copies many of the visual features of the search engine service provided by Complainant. According to Complainant, this “counterfeit website” displays a search engine with results provided by Bing and Google, which damages Complainant’s reputation, since Complainant’s search engine product refrains from using third party cookies, does not rely on results provided by Complainant’s competitors, and are based on the development and use of Complainant’s own search technologies. Complainant further contends that Respondent’s use of false contact information on the website located at the disputed domain name and its use of a proxy service to anonymize its identity in the WhoIs database further confirms Respondent’s bad faith registration and use of the disputed domain name.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:

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

(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name was registered and is being used in bad faith.

Furthermore, section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states:

“Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding?

Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true.” Thus, even though Respondent has failed to address Complainant’s contentions, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340.

A. Identical or Confusingly Similar

Ownership of a nationally or internationally registered trademark constitutes prima facie evidence that the complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant has provided evidence that it has rights in the QWANT Mark through its French and International registrations.

With Complainant’s rights in the QWANT Mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the Top-Level Domain (“TLD”) in which each domain name is registered) is identical or confusingly similar to Complainant’s Mark. It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. WIPO Overview 3.0, section 1.7. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. Id.

Here, the disputed domain name fully incorporates the QWANT Mark. The addition of the dictionary term “search” before Complainant’s Mark in the disputed domain name does nothing to prevent a finding of confusing similarity under the first element. “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 under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements.” WIPO Overview 3.0, section 1.8.

The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its trademark rights and showing that the disputed domain name is confusingly similar to its QWANT Mark.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.

Paragraph 4(c) of the Policy lists the ways that the respondent may demonstrate rights or legitimate interests in the disputed domain name:

(i) before any notice of the dispute, 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 it has acquired no trade mark 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 trade mark or service mark at issue.

Here, Complainant has alleged that Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not submitted any arguments or evidence to rebut Complainant’s contention that it has never authorized, licensed or permitted Respondent to use the QWANT Mark in any way. Respondent also does not appear to be using the disputed domain name in connection with any bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the disputed domain name. Respondent’s offering of goods and services that are identical to those provided by Complainant under a trademark it was not authorized or licensed to use cannot be considered bona fide within the meaning of paragraph 4(c)(i) of the Policy. A finding to the contrary would run against the intent of paragraph 4(c)(i) of the Policy. See American Eyewear, Inc. v. Thralow, Inc., WIPO Case No. D2001-0991 (stating “[a]lthough use in connection with the sale of goods and services, is apparent, our inquiry must go further since not all such use qualifies as bona fide use. ‘To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy.’” (quoting Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com", WIPO Case No. D2000-0847)). In this case, Respondent used the disputed domain name to direct Internet users to a website intended to mimic that of Complainant, ostensibly to capitalize on misdirected Internet traffic to this imposter website. Lastly, there is no evidence suggesting that Respondent is commonly known by the disputed domain name.

Therefore, the Panel concludes that Respondent does not have rights or legitimate interests in the disputed domain name within the meaning of Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found when, by using a disputed domain name, a 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 a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.

Among the circumstances panels take into account when assessing whether the respondent’s registration of a domain name is in bad faith are: (i) the nature of the domain name (e.g., a typo of a widely-known mark, or a domain name incorporating the complainant’s mark plus an additional term such as a descriptive or geographic term, or one that corresponds to the complainant’s area of activity or natural zone of expansion), (ii) the content of any website to which the domain name directs, including any changes in such content and the timing thereof, (iii) the clear absence of rights or legitimate interests coupled with no credible explanation for the respondent’s choice of the domain name, and (iv) other indicia generally suggesting that the respondent had somehow targeted the complainant.

In this case, bad faith can be found in the registration and use of the disputed domain name. Complainant provided evidence to show the use and registration for the QWANT Mark that long predates Respondent’s registration of the disputed domain name. Therefore, Respondent was likely aware of the QWANT trademark when it registered the disputed domain name, or knew or should have known that it was identical or confusingly similar to Complainant’s Mark. See WIPO Overview 3.0, sections 3.2.1 and 3.2.2; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited, WIPO Case No. D2016-1973.

Furthermore, the disputed domain name resolves to a website that makes copious use of Complainant’s Mark, closely resembles the website located at Complainant’s primary domain name, <qwant.com>, and offers a nearly identical service which Complainant offers under the QWANT Mark. This is clear evidence that Respondent not only knew about Complainant’s Mark but also actively targeted it for unfair exploitation. This conclusion is bolstered by the inclusion of the term “search” in the disputed domain name, which is a clear reference in this context to Complainant’s Internet search engine services provided under the QWANT Mark. The Panel finds it likely that Respondent was engaging in a concerted effort to attract Internet users, for commercial gain, to Respondent’s website, by creating a likelihood of confusion with Complainant’s Mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of a product or service on Respondent’s website.

For these reasons, this Panel finds that Respondent’s registration and use of the disputed domain name was in bad faith, pursuant to paragraph 4(b)(iv) of the Policy.

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 names <searchqwant.com> be transferred to Complainant.

Brian J. Winterfeldt
Sole Panelist
Date: May 11, 2021