WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Conforama France v. Benjamin Kouassi

Case No. D2021-1166

1. The Parties

The Complainant is Conforama France, France, represented by SANTARELLI, France.

The Respondent is Benjamin Kouassi, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <conforama-france.com> is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 15, 2021. On April 16, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 16, 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 the Complainant on April 20, 2021providing 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 April 20, 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 the Respondent of the Complaint, and the proceedings commenced on April 22, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 12, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 14, 2021.

The Center appointed Torsten Bettinger as the sole panelist in this matter on May 20, 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 well-known furniture retailer in France and the owner of several French trademark registrations for the trademark CONFORAMA, including:

- French Trademark Registration No. 1513512, registered in February 8, 1989 and duly renewed;

- French Trademark Registration No. 3170429, registered in June 21, 2002 and duly renewed;

- French Trademark Registration No. 4357608, registered in April 26, 2017 and duly renewed.

The Respondent registered the disputed domain name on December 20, 2020. The disputed domain redirects Internet users to Complainant’s own website at <conforama.fr>.

5. Parties’ Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case.

With regard to the requirement of identity or confusing similarity between the trademark and the disputed domain name pursuant to paragraph 4(a)(i) of the Policy, the Complainant asserts that:

- the domain name reproduces the Complainant’s trademark CONFORAMA in its entirety;

- the addition of the geographic term “France” does not distinguish the disputed domain name from Complainant’s trademark CONFORAMA; and

- the generic Top-Level-Domain (“gTLD”) “.com” is not to be taken into consideration when examining the identity or similarity between a trademark and a domain name since it is viewed by the public as a technical requirement.

With regard to the Respondent having no rights or legitimate interests in the disputed domain name, the Complainant submitted that:

- the Respondent lacks any rights or legitimate interests in respect of the disputed domain name;

- the Respondent is unknown to the Complainant and has not been authorized to register or use the disputed domain name;

- the Respondent is not commonly known under the disputed domain name;

- the redirection of the disputed domain name to Complainant’s own website at “conforama.fr” is an attempt to mislead Internet users and therefore does not constitute a noncommercial or fair use of the disputed domain name pursuant to Paragraph 4 (c) of the Policy.

Finally, with regard to the disputed domain name having been registered and being used in bad faith, the Complainant argues that:

- the Respondent intentionally attempted to attract internet users to the Respondent’s website for commercial gain by creating a likelihood of confusion with the Complainant’s mark as to the sponsorship, affiliation, or endorsement of the Respondent's website or services offering;

- the Respondent obviously knew, or should have known, that it was registering a domain name identical to the Complainant’s mark as the registration of the disputed domain name occurred only a few months after numerous press articles were released dealing with the take-over of the Complainant;

- as “CONFORAMA” is a coined word solely associated with the Complainant it is obvious that the disputed domain name registration was made with fraudulent intent;

- it has been decided on numerous occasions that the mere registration of a domain name that is identical or confusingly similar (particularly domain names incorporating the mark plus a descriptive term) to a famous or widely-known trademark creates by itself a presumption of bad faith;

- the redirection of the disputed domain name to a website owned by the Complainant is in bad faith as the control over the redirection creates an implied or real threat to the Complainant;

- there is no reason whatsoever which might sustain the registration or use of the disputed domain name for legitimate purposes.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy states that the Complainant must prove each of the three following elements:

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

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

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

A. Identical or Confusingly Similar

The Complainant has demonstrated that it owns multiple trademark registrations for the mark CONFORAMA in France prior to the registration of the disputed domain name on December 20, 2020.

It is well-established that the test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the trademark is used or other marketing and use factors usually considered in trademark infringement cases. (See sections 1.1.2 and 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

In this case, the disputed domain name only differs from the Complainant’s trademark “CONFORAMA” by the addition of the term “France” which is perceived by consumers as a geographic term referring to the country where the Complainant is located or the Complainants’ goods or services may originate or be sold. The addition of a merely geographic wording to a trademark in a domain name does not prevent a finding of confusing similarity under the first element of the UDRP (see section 1.8 of WIPO Overview 3.0).

Furthermore, it is well accepted under the UDRP case law that the specific gTLD designation such as “.com”, “.net”, “.org” is not to be taken into account when assessing the issue of identity and confusing similarity, except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) section 1.11).

For the foregoing reasons the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s CONFORAMA trademarks in which the Complainant has exclusive rights.

B. Rights or Legitimate Interests

Pursuant to Paragraph 4 (c) of the Policy a 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 [the 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 [the 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 [the 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 Complainant has asserted and presented evidence that the disputed domain name redirects Internet users to Complainant’s own website at <conforama.fr> and that it has not authorized the Respondent to register or use the disputed domain name.

These assertions and evidence are sufficient to establish a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

Where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

The Respondent chose not to contest the Complainant’s allegations and has failed to come forward with any evidence to refute the Complainant’s prima facie showing that the Respondent lacks rights or legitimate interests. The Panel therefore accepts these allegations as undisputed facts.

From the record in this case, it is evident that the Respondent was, and is, aware of the Complainant and its CONFORAMA mark and does not have any rights or legitimate interests in the disputed domain name.

The Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the evidence demonstrates that the Respondent has used the disputed domain name to redirect Internet users to the Complainant’s own website through the disputed domain name.

It is common view that use of the disputed domain name to redirect Internet users to the Complainant’s own website cannot confer any rights or legitimate interests in the disputed domain name to the Respondent. (See, e.g., Ann Summers Limited v. Domains By Proxy, LLC / Mingchun Chen, WIPO Case No. D2018-0625; Carrefour v. WhoisGuard, Inc., WhoisGuard Protected / Robert Jurek, Katrin Kafut, Purchasing clerk, Starship Tapes & Records, WIPO Case No. D2017-2533; FXCM Global Services LLC v. WhoisGuard Protected, Whoisguard Inc. / Jenny Sohia, WIPO Case No. D2018-1111).

In light of the circumstances of this case, including the level of reputation the Complainant has acquired in its CONFORAMA marks in connection with furnishing products, the Panel concludes that the selection of the disputed domain name incorporating the Complainant’s CONFORAMA mark cannot be considered bona fide and that therefore the Respondent has no rights or legitimate interests in the disputed domain name as set forth by paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, 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 disputed domain name primarily for the purpose of selling, renting or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the disputed domain name; or

(ii) the Respondent has registered the disputed 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 the Respondent has engaged in a pattern of such conduct; or

(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed 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.

The Complainant holds multiple trademark registrations for the mark CONFORAMA in France that predate the registration of the disputed domain name.

Given that the term CONFORAMA is an invented word that Complainant has used as a trademark and company name in connection with furnishing products for many years and that the disputed domain name contains the geographic term “France” were the Respondent is located it is inconceivable that the Respondent coincidentally selected the disputed domain name without any knowledge of the Complainant and its trademark CONFORAMA.

The Panel therefore concludes that the Respondent registered the disputed domain name in bad faith.

Based on the record in this proceeding it is also undisputed that the disputed domain name redirects Internet users to Complainant’s own website at <conforama.fr>.

Use of a domain name incorporating a trademark by an unauthorized third party to redirect Internet users to a complainant’s (or a competitor’s) website is evidence of bad faith under paragraph 4(b)(iv) of the Policy. See WIPO Overview 3.0, section 3.1.4 (“Panels have moreover found the following types of evidence to support a finding that a respondent has registered a domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark: … redirecting the domain name to the complainant’s (or a competitor’s) website…”).

A respondent redirecting a domain name to the complainant’s website can establish bad faith insofar as the respondent retains control over the redirection thus creating a real or implied ongoing threat to the complainant. See Ann Summers Limited v. Domains By Proxy, LLC / Mingchun Chen, WIPO Case No. D2018-0625 ("[T]he redirection from the disputed domain name to Complainant's official website reinforces the likelihood of confusion. Internet users are likely to consider the disputed domain name as in some way endorsed by or connected with Complainant, particularly taking into consideration the reputation of the Mark…UDRP panels have pointed out in previous redirection UDRP cases, that as long as the complainant does not itself control the disputed domain name, it could be redirected to an unauthorized site at any time.”).

Furthermore, noting that there is no active website at the disputed domain name, but rather redirects to the Complainant's website, even if this case is considered from the perspective of the passive holding of a domain name, in certain circumstances, passive holding does not prevent a finding of bad faith under the Policy. (See, e.g., Teachers Insurance and Annuity Association of America v. Wreaks Communications Group, WIPO Case No. D2006-0483; Telstra Corporation Limited. v. Nuclear Marshmallows, WIPO Case No. D2000-0003; see also WIPO Overview 3.0, section 3.3.)

While UDRP panels will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include:

(i) the degree of distinctiveness or reputation of the complainant’s mark,

(ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use;

(iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement); and

(iv) the implausibility of any good faith use to which the domain name may be put. (See Telstra Corporation Limited v. Nuclear Marshmallows, supra; see also WIPO Overview 3.0, section 3.3.)

The circumstances of the present case are sufficiently similar to those present in Telstra to establish bad faith passive holding of the disputed domain name.

Based on the record in this proceeding, the Panel is satisfied that the Complainant’s CONFORAMA mark is highly distinctive, and well-known in France.

Given the fact that the Respondent redirects the disputed domain name to Complainant’s own website it is inconceivable that the Respondent did not have knowledge of the Complainant’s CONFORAMA trademark at the time of registration of the disputed domain name <conforama-france.com> in 2020.

Respondent failed to provide any response or evidence of actual or contemplated good-faith use. Given that the Complainant’s CONFORAMA mark is solely connected with the Complainant, and noting the composition of the disputed domain name, it is not susceptible to be use in a good faith sense.

The Panel therefore concludes that the Respondent’s registration and use is a clear-cut case of cybersquatting and that the Complainant has also satisfied their burden under paragraph 4(a)(iii) 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 name, <conforama-france.com>, be transferred to the Complainant.

Torsten Bettinger
Sole Panelist
Date: June 3, 2021