WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Citya Immobilier v. Whois Agent, Domain Protection Services, Inc. / Thu Thao Nguyen, Profimobility s.r.o.

Case No. D2021-1631

1. The Parties

The Complainant is Citya Immobilier, France, represented by Cabinet Bouchara, France.

The Respondent is Whois Agent, Domain Protection Services, Inc., United Sates of America / Thu Thao Nguyen, Profimobility s.r.o., Czech Republic.

2. The Domain Names and Registrar

The disputed domain names <citya.net> and <citya.org> are registered with Name.com, Inc. (Name.com LLC) (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 26, 2021. On May 26, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 26, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 27, 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 27, 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 June 2, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 22, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 23, 2021.

The Center appointed Marilena Comanescu as the sole panelist in this matter on June 30, 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 Complainat is a French real estate agency network providing services in the fields of sale, purchase and rental management, co-ownership management and commercial real estate. The Complainant is active in France since 1991 and its network counts nearly 200 real estate agencies and 3,500 employees.

The Complainant holds trademark registrations for CITYA in France, such as registration number 4649914 filed on May 22, 2020 and registered on November 27, 2020, and covering goods and services in Nice classes 16, 35, 36, 37, 38, 41, 42, 43, and 45.

The Complainant holds the domain name <citya.com> registered on June 28, 2001.

The disputed domain names were registered both on September 11, 2020 and, at the time of filing the Complaint, they were both used in connection with pay-per-click pages (“PPC”) with sponsored links related to, inter alia, services similar to those offered by the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain names are identical and confusingly similar to its highly distinctive CITYA trademark, the Respondent has no rights or legitimate interests in the disputed domain names, and the Respondent registered and is using the disputed domain names in bad faith. The Complainant requests the transfer of the disputed domain names to it.

B. Respondent

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

6. Discussion and Findings

In view of the absence of a Response, the discussion and findings will be based upon the contentions in the Complaint and any reasonable position that can be attributable to the Respondent. Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the following circumstances are met:

(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.

The Panel will further analyze the potential concurrence of the above circumstances.

A. Preliminary Procedural Issue. Consolidation of Multiple Disputed Domain Names

According to the provisions of paragraph 10(e) of the Rules, the Panel has the power to decide the consolidation of multiple domain names disputes. Further, paragraph 3(c) of the UDRP Rules provides that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.
In the present case, there are two disputed domain names. According to the information provided by the Registrar, the disputed domain names are registered by the same Respondent, Thu Thao Nguyen, Profimobility s.r.o.

The present disputed domain names: (i) were registered in the name of the same privacy shield, with the same Registrar and on the same day; (ii) were created in a similar manner, reproducing the Complainant’s trademark; and (iii) were used in a similar manner, for PPC pages.

The Respondent had the opportunity to comment on the consolidation request made by the Complainant but it chose to remain silent.

For the above, the Panel finds that the disputed domain names are registered by the same person and while this alone would support the filing of a complaint as against both disputed domain names without the need to specifically request a consolidation, in any event it would be equitable and procedurally efficient to decide the consolidation of multiple disputed domain names in the present procedure. See also section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

B. Identical or Confusingly Similar

The Panel finds that the Complainant holds rights in the CITYA trademark.

The disputed domain names <citya.net> and <citya.org> reproduce exactly the Complainant’s trademark CITYA.

Further, it is well established in decisions under the UDRP that the generic Top-Level Domain (“gTLD”) (e.g.,”.com”, “.site”, “.info”, “.shop”) may typically be disregarded for the purposes of consideration of identity or confusing similarity between a trademark and a domain name. See section 1.11 of the WIPO Overview 3.0.

Given the above, the Panel finds that the disputed domain names are identical to the trademark CITYA, pursuant to the Policy, paragraph 4(a)(i).

C. Rights or Legitimate Interests

The Complainant asserts that the Respondent does not hold any trademark rights, license, or authorization whatsoever to use the mark CITYA, that the Respondent is not commonly known by the disputed domain names and that the Respondent has not used the disputed domain names in connection with a legitimate noncommercial or fair use or a bona fide offering of goods or services.

Under the Policy, “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”. See section 2.1 of the WIPO Overview 3.0.

The Respondent has not replied to the Complainant’s contentions and has not come forward with relevant evidence to rebut the Complainant’s prima facie case.

There is nothing in the record suggesting that the Respondent has ever been commonly known by the disputed domain names or that the Respondent made a bona fide offering of goods or services or a legitimate noncommercial use under the disputed domain names.

The Respondent has used the disputed domain names in connection with parking pages displaying PPC links, promoting services of the Complainant’s competitors. UDRP panels have constantly found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s marks or otherwise mislead Internet users. See section 2.9 of the WIPO Overview 3.0.

For these reasons, the Panel finds that the second element of the Policy is established, and the Respondent has no rights or legitimate interests in respect of the disputed domain names, pursuant to the Policy, paragraph 4(a)(ii).

D. Registered and Used in Bad Faith

The Complainant has held trademark rights in CITYA since 2002.

The disputed domain names were created in September 2020 and incorporate the Complainant’s mark in its entirety.

Given the fact that the Complainant’s trademark is distinctive, registered for almost two decades, and the disputed domain names reproduce the Complainant’s trademark exactly, the Panel finds that it is impossible to believe that the Respondent chose to register the disputed domain names randomly with no knowledge of the Complainant’s trademark.

For the above, the Panel finds that particularly in the absence of a reply advancing a reason for the registration of the disputed domain names, the disputed domain names were registered in bad faith, knowing the Complainant and targeting its trademark.

At the time of filing the Complaint, the disputed domain names resolve to parking pages providing links to services similar to those offered by the Complainant.

Paragraph 4(b)(iv) of the Policy provides that the use of a domain name to intentionally attempt “to attract, for commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] website or location or of a product or service on [the respondent’s] website or location” is evidence of registration and use in bad faith.

The Respondent was using without permission the Complainant’s distinctive trademark seemingly in order to get traffic on its web portal and to misleadingly divert Internet users to third parties websites, and thus to obtain commercial gain from the false impression created with regard to a potential affiliation or connection with the Complainant.

Further, the Respondent registered the disputed domain names under a privacy service, provided inaccurate contact information in the WhoIs, and refused to participate in the present proceedings in order to put forward any arguments in its favor. Having in view the other circumstances of this case, such facts constitute further evidence of bad faith behavior.

For all the above reasons, the Panel finds that the Respondent registered and is using the disputed domain names in bad faith, pursuant to the Policy, paragraph 4(a)(iii).

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 <citya.net> and <citya.org> be transferred to the Complainant.

Marilena Comanescu
Sole Panelist
Date: July 14, 2021