WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nexeo Consulting v. Mal Lad
Case No. D2021-1658
1. The Parties
The Complainant is Nexeo Consulting, France, represented by Domgate, France.
The Respondent is Mal Lad, United States of America.
2. The Domain Name and Registrar
The disputed domain name < nexeo-fr.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 27, 2021. On May 27, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 28, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 15, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 5, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 8, 2021.
The Center appointed Miguel B. O’Farrell as the sole panelist in this matter on July 24, 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
NEXEO is a French company created in 2002 specialized in business consulting and Information Systems transformation for clients in banking, financial services and insurance fields. It helps clients adapt and transform their processes and information systems.
NEXEO became Financiere DS and is the holding company of the group, including the Complainant Nexeo Consulting, which is a French company created in 2004.
The Complainant owns several NEXEO trademarks and domain names duly registered, including the following:
French Trademark Registration No. 3171101 NEXEO, filed and registered on June 26, 2002, for services in classes 35, 38, 41, and 42.
European Trademark Registration No. 18145983 GROUPE NEXEO, filed on October 31, 2019 and registered on May 27, 2020, for services in classes 35, 36, 41, and 42.
The Complainant is also the owner of several domain names with the word “nexeo” associated with dictionary terms such as “consulting”, “groupe” or “Switzerland” and an extension.
The disputed domain name <nexeo-fr.com> was registered on November 26, 2020, and does not relate to an active website.
On December 24, 2020, the Respondent sent a fraudulent email to an employee of Euronext Paris, one of the Complainant’s customers seeking payment of invoices, which appeared to be sent by the Complainant’s billing manager, and was addressed to a genuine employee of the Complainant’s customer. The only difference in the email address: “c[…].m[…]@nexeo-fr.com” instead of “c[…].m[…]@nexeo.fr”.
5. Parties’ Contentions
The Complainant claims that the disputed domain name is confusingly similar with the trademarks NEXEO and NEXEO GROUP in which the Complainant has rights; that the Respondent has no rights or legitimate interests in the disputed domain name, which was registered and is being used in bad faith.
More specifically, the Complainant has not given the Respondent permission to use the Complainant’s trademarks in any manner. To the best of the Complainant’s knowledge, the Respondent is not the owner of any NEXEO trademark, and for sure he is not commonly known by the disputed domain name.
The Respondent has used the disputed domain name for an email address to impersonate an employee of the Complainant in an attempt to defraud a customer of the Complainant.
The Respondent used the same fraudulent activity in a previous UDRP case concerning the domain name <tessi-ch.com> and the panel confirmed that “on no basis could such use be said to give rights or legitimate interests in respect of the domain name in the hands of the Respondent” (See TESSI (S.A) v. Mal Lad, WIPO Case No. D2021-0518).
Finally, the Complainant requests the Panel to issue a decision ordering that the disputed domain name be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the disputed domain name, the Complainant must prove each of the following, namely that:
(i) the disputed domain name is identical or confusingly similar with 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 was registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has proved that it has rights in the service marks NEXEO and GROUPE NEXEO mentioned in paragraph 4 above (Factual Background).
The standing test for confusing similarity involves a reasoned but relatively straightforward comparison between the trademark and the disputed domain name to determine whether the disputed domain name is confusingly similar with the trademark. The test involves a side-by-side comparison of the disputed domain name and the service mark NEXEO to assess whether the mark is recognizable within the disputed domain name.
The disputed domain name entirely includes the Complainant’s mark with the addition of a dash and the letters “fr” which stand for “France” and are insufficient to prevent a finding of confusing similarity between the disputed domain name <nexeo-fr.com> and the service mark NEXEO in which the Complainant has rights.
For the purposes of assessing identity or confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) “.com”, as it is viewed as a standard registration requirement, as noted in section 1.11.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Panel finds that the disputed domain name is confusingly similar with the service mark NEXEO in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following non-exclusive defenses:
(i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the 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 domain name, without intent for commercial gain, to misleadingly divert consumers.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well-established, as it is put in section 2.1 of WIPO Overview 3.0, that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such prima facie case is made, the burden of production 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.
There is no evidence in the present case that the Respondent has been commonly known by the disputed domain name, enabling it to establish rights or legitimate interests therein.
Furthermore, there is no evidence in the file to prove any of the circumstances mentioned in paragraph 4(c) of the Policy, nor any other circumstances to suggest that the Respondent has rights or legitimate interests in the disputed domain name.
Likewise, and as further discussed under section 6.C of this decision, it does not seem that the Respondent is making any legitimate noncommercial or fair use of the disputed domain name, but rather that it intends to use the disputed domain name for the purpose of deriving unfair monetary advantage by confusing Internet users and leading them to believe that the site to which the disputed domain name may relate is an official site of the Complainant.
As established in section 2.5 of WIPO Overview 3.0: “Fundamentally, a respondent’s use of a domain name will not be considered ‘fair’ if it falsely suggests affiliation with the trademark owner; the correlation between a domain name and the complainant’s mark is often central to this inquiry.” Here, the nature of the disputed domain name carries a risk of implied affiliation.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the disputed domain name (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name and that the requirements of paragraph 4(a)(ii) of the Policy have been fulfilled.
C. Registered and Used in Bad Faith
The Panel is satisfied that the Respondent must have been aware of the Complainant’s trade name and trademark NEXEO when it registered the disputed domain name on November 26, 2020.
By registering the disputed domain name, the Respondent was targeting the Complainant and its business by incorporating the Complainant’s trademark NEXEO in its entirety with the intention to confuse Internet users and capitalize on the fame of the Complainant’s name and trademark for its own monetary benefit.
In addition to the fraudulent email of December 24, 2020, mentioned in Section 4 above (Factual Background), the Respondent followed up with an email on January 5, 2021, providing payment instructions having no connection with any account of the Complainant (AIB an Irish bank).
On January 11, 2021, the Respondent sent a reminder asking if the payment was processed.
On January 12, 2021, the Respondent gave new IBAN details and asked for the payment of other invoices.
In April 2021, the Complainant discovered the fraud as a result of some emails exchanged with its client Euronext and the Irish bank concerned. In the same month, the Complainant representative filed a complaint for usurpation of identity among other claims.
The fact that there is a clear absence of rights or legitimate interests coupled with no credible explanation for the Respondent’s choice of the disputed domain name is also a significant factor to consider that the disputed domain name was registered in bad faith (as stated in section 3.2.1 of WIPO Overview 3.0).
The Panel finds that the Respondent registered and was using the disputed domain name intentionally to attempt to confuse and commit fraud against the Complainant’s customers for its own monetary benefit, which amounts to bad faith under paragraph 4(b)(iv) of the Policy.
As mentioned above, the Respondent’s activity in this case is similar to the one it used in the previous UDRP case concerning the domain name <tessi-ch.com> where the panel ordered the transfer of the disputed domain name to the complainant (TESSI (S.A) v. Mal Lad, see supra).
Furthermore, UDRP panelists have found that a domain name that resolves to an inactive website does not prevent a finding of bad faith under the doctrine of “passive holding” when circumstances exist such as the distinctiveness or reputation of the complainant’s mark, the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good faith use, and the implausibility of any good faith use to which the disputed domain name may be put. The Panel finds that all these circumstances are relevant to this administrative proceeding and that the current non-use of the disputed domain name does not prevent a finding of bad faith in these circumstances (section 3.3 of WIPO Overview 3.0).
For the above reasons, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy have been fulfilled.
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, <nexeo-fr.com> be transferred to the Complainant.
Miguel B. O’Farrell
Date: August 7, 2021