WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Robertet SA v. Registration Private, Domains By Proxy, LLC / Robert Emshoff
Case No. D2021-1367
1. The Parties
The Complainant is Robertet SA, France, represented by Novagraaf France, France.
The Respondent is Registration Private, Domains By Proxy, LLC, United States of America (“United States”) / Robert Emshoff, United States.
2. The Domain Name and Registrar
The disputed domain name <robertets.com> is registered with Wild West Domains, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 4, 2021. On May 4, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 6, 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 May 7, 2021 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 May 7, 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 May 10, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 30, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 3, 2021.
The Center appointed Mihaela Maravela as the sole panelist in this matter on June 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 French registered company, that has been active since 1850 in raw materials and natural ingredients for the aroma, perfume, and beauty industry and is one of the world leaders in the fragrance industry.
The Complainant is the exclusive owner of a number of registered trademarks consisting of ROBERTET, including the International trademark registration No. 665371 for ROBERTET registered on October 3, 1996, the European Union Trade Mark registration ROBERTET No. 013154811, registered on December 31, 2014, the French trademark registration ROBERTET No. 93476071, registered on July 7, 1993. The Complainant owns since January 12, 2000 the domain name <robertet.com> that it uses as an official website.
The disputed domain name was created on October 29, 2020 and does not resolve to an active website.
5. Parties’ Contentions
The Complainant argues that the disputed domain name is confusingly similar to the Complainant’s commercial name, domain names, and trademarks ROBERTET, because it reproduces the latest and just adds a final “s”. The Complainant argues that in French, the “s” as a final letter is silent, so phonetically, its trademark ROBERTET and the disputed domain name are identical.
With respect to the second element, the Complainant argues that as per its verification, the Respondent has no legitimate interests in holding the disputed domain name, no registered right on this denomination, and the Complainant has never authorized registration of the disputed domain name.
About the third element, the Complainant argues that the Respondent holds the disputed domain name without operating it, and that the Complainant sent a cease-and-desist letter to the Respondent via the Registrar but the Complainant has never received any response from the Respondent. The Complainant also argues that mail servers are configured on the disputed domain name, and it is therefore possible that the registrant has created an email address in order to send fraudulent emails to customers, service providers, or suppliers, pretending to be the Complainant to collect personal data, or to place orders in the name of the company or share information about them. The Complainant also argues that the Respondent could not have been unaware of the existence of the Complainant’s trademarks and domain names given its renown.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Notwithstanding the fact that no Response has been filed, the Panel shall consider the issues present in the case based on the statements and documents submitted by the Complainant.
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”, paragraph 15(a) of the Rules.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following elements:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has proved its rights over the ROBERTET trademark.
The disputed domain name consists of the obvious misspelling of the ROBERTET trademark of the Complainant, with the addition of the letter “s” in the disputed domain name. This misspelling in the disputed domain name, also referred as typosquatting, is insufficient to avoid a finding of confusing similarity, as the trademark is recognizable in the disputed domain name. Section 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
It is well accepted by UDRP panels that a generic Top-Level Domain (“gTLD”), such as “.com”, is typically ignored when assessing whether a domain name is identical or confusing similar to a trademark. See section 1.11 of the WIPO Overview 3.0.
This Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark and therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate the respondent’s rights or legitimate interests in the disputed domain name:
(i) before any notice to it 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 has been commonly known by the disputed domain name, even if it 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.
The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in section 2.1 of the WIPO Overview 3.0, which states: “[w]hile the overall burden of proof in UDRP proceedings is on the complainant, […] 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 domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
In the present case the Complainant has established a prima facie case that it holds rights over the trademark ROBERTET and claims that the Complainant has never authorized registration of the disputed domain name.
There is no evidence that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services or that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name. Also, there is no evidence that the Respondent is commonly known by the disputed domain name. The Panel notes that the Respondent’s first name appears to be Robert, but the Respondent failed to respond and to provide any evidence that might support a finding that he was commonly known by the disputed domain name at the registration date. See section 2.3 of the WIPO Overview 3.0.
By not replying to the Complainant’s contentions, the Respondent has failed to invoke any circumstances which could demonstrate any rights or legitimate interests in the disputed domain name. Accordingly, the Panel gives prevalence to the Complainant’s affirmation that the Complainant has never authorized registration of the disputed domain name.
Furthermore, the nature of the disputed domain name carries a risk of implied affiliation and cannot constitute a fair use as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. See section 2.5.1 of the WIPO Overview 3.0.
With the evidence on file, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
To fulfill the third requirement of the Policy, the Complainant must prove that the disputed domain name was registered and is being used in bad faith.
The disputed domain name was registered many years after the Complainant has obtained registration of its ROBERTET trademarks. The disputed domain name consists of a misspelling of the Complainant’s trademark. Under these circumstances, it is most likely that the Respondent was aware of the Complainant’s trademark at the registration of the disputed domain name and sought to take advantage of the ROBERTET trademark.
As regards the use of the disputed domain name, the fact that the website at which the disputed domain name resolves is inactive does not preclude a finding of bad faith, nor does it detract from the Respondent’s bad faith. “While panelists 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.” (section 3.3 of the WIPO Overview 3.0).
The Panel takes into account, in particular the fact that the Respondent has provided no evidence of actual or contemplated good-faith use of the disputed domain name, having failed to respond to the Complaint, the Respondent’s use of a privacy service, and the distinctiveness of the Complainant’s trademark. Moreover, given that the Respondent has registered the disputed domain name with a misspelling of the Complainant’s trademarks (“typosquatting”), an intention of the Respondent to attract Internet users and consumers for commercial gain by creating a likelihood of confusion with the Complainant and its business can be inferred.
Based on the evidence and circumstances of this case, the Panel concludes that the disputed domain name was registered and used in bad faith.
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 <robertets.com> be transferred to the Complainant.
Date: July 13, 2021