WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Marlink SAS v. Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / Jatin Hariani
Case No. D2021-1589
1. The Parties
The Complainant is Marlink SAS, France, represented by Inlex IP Expertise, France.
The Respondent is Domain Admin, Privacy Protect, LLC (PrivacyProtect.org), United States of America (“United States”) / Jatin Hariani, United States.
2. The Domain Name and Registrar
The disputed domain name <supportmarlink.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 21, 2021. On May 21, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 22, 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 25, 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 26, 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 26, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 15, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 16, 2021.
The Center appointed Alistair Payne as the sole panelist in this matter on June 22, 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.
The Panel issued an Administrative Panel Order No. 1 on July 6, 2021 as follows:
“The Panel notes that the Complainant in this case is the French company Marlink SAS although the registered trade marks relied upon are all owned by a Belgian company Marlink SA, and the Complaint proceeds on the basis that Marlink SA is the Complainant. While the claim is made that Marlink SAS is a ‘related company’ of Marlink SA, there is no evidence to demonstrate that Marlink SAS is a subsidiary of Marlink SA, and/or that Marlink SAS has the authorization of Marlink SA to file the Complaint in this proceeding, and therefore that Marlink SAS has standing to bring the Complaint. The Panel issues the present Procedural Order No. 1, and requests the Complainant to submit such evidence. The Panel grants the Complainant five (5) calendar days from the date of this Administrative Panel Order to answer the present Administrative Panel Order. The Respondent has leave to file a submission in response within (5) calendar days of receiving the Complainant’s evidence. The Panel informs the Parties that the due date to submit the Decision to the Center is extended to July 19, 2021.”
By way of response, an internal legal representative of the Complainant filed a declaration on July 8, 2021 confirming that Marlink SAS and Marlink SA, located at Rue de Stalle 140, B-1180 Brussels, Belgium are both companies in the same Marlink Group and have the same interests in this matter.
4. Factual Background
The Complainant is the French member company of the international Marlink Group of companies which provides telecommunications and cybersecurity services in the maritime industry and which also has affiliate companies in the United States (Marlink, Inc) and in the Netherlands (Marlink AS) and in Belgium (Marlink SA) (hereafter referred to as the “Marlink Group”). The Marlink Group through its Belgian affiliate owns and uses various trade mark registrations incorporating the MARLINK mark including European Union word mark registration 015333487 registered on October 4, 2016. Marlink SA also owns the domain name <marlink.com> which resolves to the official website of the Group.
The disputed domain name was registered on May 1, 2021 and at the time of filing this Complaint resolved to an error page.
5. Parties’ Contentions
The Complainant submits that the Marklink Group owns registered trade mark rights as noted above and that the disputed domain name wholly contains its MARLINK mark and that the addition of the descriptive term “support” does not detract from the confusing similarity of the disputed domain name to the Complainant’s registered trade mark.
The Complainant says further that the Respondent has no rights to the MARLINK mark as the disputed domain name was only registered after the Complainant had registered its trade marks and that there appears to be no trade mark filing or registration for SUPPORT MARLINK under the name of Jatin Hariani. Further, the Complainant confirms that there is no business or legal relationship between the Complainant or the Marlink Group and the Respondent and that the Complainant or the Marlink Group has neither authorized nor licensed the Respondent to use its trade marks in any way. It submits that the fact that the disputed domain name does not resolve to a website reflects the absence of any right or legitimate interest in the disputed domain name by the Respondent except that it wishes to take unfair advantage of the reputation of the Complainant’s trade mark.
As far as bad faith is concerned the Complainant submits that the Respondent’s registration and use of the disputed domain name amounts to a passive holding in bad faith. It submits that its MARLINK mark is a well known trade mark, that the Respondent failed to submit a response but did seek to conceal its identity using a privacy service and that objectively the only reason for the Respondent to have registered the disputed domain name is to create confusion in the public’s mind. It notes that the email servers have been activated so that emails with addresses in the format “[…]@supportmarlink.com” can be sent or received, which it suggests raises a potential phishing and scam risk. In summary the Complainant says that the Respondent has registered the disputed domain name in bad faith for the sole purpose of taking advantage of MARLINK trade mark.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Internal legal counsel for the Complainant has submitted a declaration upon behalf of the Complainant that the Complainant and Marlink SA, the Belgian corporate member of the Marlink Group and the registered proprietor of European Union word mark registration 015333487 registered on October 4, 2016 are members of the same corporate group (the Marlink Group). Accordingly, the Panel finds that the Complainant as a member of the Marklink Group enjoys rights in the said European Union trade mark for the purposes of bringing this Complaint.
The disputed domain name wholly incorporates the MARLINK mark and is therefore confusingly similar to it. The inclusion of the common English word “support” in the disputed domain name does not prevent a finding of confusing similarity. As a result, the Panel finds that the Complaint succeeds under this element of the Policy.
B. Rights or Legitimate Interests
The Complainant has submitted that the Respondent has no rights or legitimate interests to the MARLINK mark as the disputed domain name was only registered after the Complainant had registered its trade marks and that there appears to be no trade mark filing or registration for SUPPORT MARLINK under the name of Jatin Hariani. It has also asserted that there is no business or legal relationship between the Complainant and the Respondent and that the Complainant has neither authorized nor licensed the Respondent to use the MARLINK mark in any way. The Complainant has also submitted that the fact that the disputed domain name does not resolve to a website is consistent with the Respondent having no rights or legitimate interests in the disputed domain name.
The Panel finds that the Respondent has made out a prima facie case that the Complainant has no rights or legitimate interests in the disputed domain name, which has not been rebutted by the Respondent. For this reason and as set out under Part C below, the Panel finds that the Complaint succeeds under this element of the Policy.
C. Registered and Used in Bad Faith
The disputed domain name was registered on May 1, 2021, some years after the registration of the European Union word mark registration 015333487 registered on October 4, 2016, relied upon by the Complainant. The MARLINK mark is very distinctive and as found by the panel in Marlink SA v. Contact Privacy Center, Inc, Customer 1245005519 / Roberts Matthew, marl Link LLC, WIPO Case No. D2019-1653, “A quick Internet search shows that the top search results returned for the keyword ‘marlink’ are the Complainant’s official website and affiliated social media pages”.
Therefore, in the Panel’s view it is more likely than not that the Respondent was aware of the MARLINK mark when it registered the disputed domain name in May 2021 and did so with knowledge of the Marlink Group’s use of the mark, if not of its rights.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), at section 3.3 lists 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.
In this case the MARLINK mark is very distinctive and it enjoys some degree of reputation although there is insufficient evidence to support a finding that it is “well known” as submitted by the Complainant. The Respondent failed to submit a response and sought to mask its identity using a privacy service. In circumstances that the MARLINK mark appears to be a distinctive coined term and that the Complainant has submitted that the Respondent has no relationship of any kind with the Complainant or any right to use the MARLINK mark, it appears to the Panel very implausible that the Respondent could have registered the disputed domain name with the intention of using it in good faith. In addition and based on the Complainant’s submission that the email servers have been activated so that emails with addresses in the format “[…]@supportmarlink.com” could be used by the Respondent, it seems very unlikely that this could be for good faith purposes without the express authorization of the Marlink Group.
As a consequence, the Panel finds that the disputed domain name has both been registered and used in bad faith and the Complaint also succeeds under this element of the Policy.
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 <supportmarlink.com> be transferred to the Complainant.
Date: July 16, 2021