WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Fondia Oyj v. ozyurt hakan

Case No. D2021-1858

1. The Parties

The Complainant is Fondia Oyj, Finland, represented internally.

The Respondent is ozyurt hakan, France.

2. The Domain Name and Registrar

The disputed domain name <fondia.net> (hereafter referred to as the “Disputed Domain Name”) is registered with Ligne Web Services SARL (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 14, 2021. On June 14, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 15, 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 June 15, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an Amendment to the Complaint. In addition, the Center sent an email communication in both French and English regarding the language of the proceeding on June 15, 2021. The Complainant filed an amendment to the Complaint and requested the proceeding to be in English on June 17, 2021.

The Center verified that the Complaint together with the amendment to 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 in both English and French, and the proceedings commenced on June 21, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 11, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 12, 2021.

The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on July 15, 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, Fondia Oyj, is a public company that provides legal services in Finland, Sweden, Estonia, and Lithuania.

The Complainant is the holder of the following trademarks:

- FONDIA European Union (“EU”) word mark registered under No. 004180105 on March 28, 2006, in classes 35, 36, 41, and 42;
- FONDIA, EU word mark registered under No. 010624013 on July 5, 2012, in classes 9 and 42;
- FONDIA, EU word mark registered under No. 017946810 on December 14, 2018, in class 45.

The Complainant also owns the domain name <fondia.fi>, registered on February 10, 2004, and redirecting to the Complainant’s main website linked to the domain name <fondia.com>.

The Disputed Domain Name was registered on May 2, 2021. Based on an undated screen print, the Complainant claims that the Disputed Domain Name redirected to the Complainant’s official website. The Complainant also provides evidence of an email sent by a third party, YouTube, LLC, to a person that used the name “Fondia” and an email address linked to the Disputed Domain Name to file a copyright complaint against a video posted on YouTube.

On May 26, 2021, the Complainant sent a cease and desist email to the Respondent requesting the Respondent to immediately:

- cease and desist from using and taking advantage of the Complainant’s trademarks;
- cease and desist from directing any traffic from the Disputed Domain Name to the “fondia.com” website;
- cease and desist from presenting itself as an authorized representative of the Complainant;
- surrender all correspondence and communication that it has conducted by fraudulently presenting itself as an authorized representative of the Complainant;
- surrender the Disputed Domain Name to the Complainant or alternatively, immediately shut down the Disputed Domain Name; and
- terminate any YouTube account that it has set up for fraudulent activities that refer to the Complainant or make use of the @fondia.net email address.

There is no evidence of any answer to this email.

5. Parties’ Contentions

A. Complainant

The Complainant considers the Disputed Domain Name identical to a trademark in which it claims to have rights. The Complainant further claims that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. According to the Complainant, the Respondent has not used the Disputed Domain Name in connection with a bona fide offering of goods or services. Finally, the Complainant claims that the Disputed Domain Name was registered and is being used in bad faith. According to the Complainant, by choosing and registering a domain name that is identical to the Complainant’s trademarks and domain names, the Respondent has clearly had a purpose of disrupting the business of the Complainant. The Complainant also claims that the Respondent has registered and has been using the Disputed Domain Name in the intentional attempt of attracting Internet users to the Respondent’s website for commercial gain by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.

B. Respondent

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

6. Discussion and Findings

6.1. Preliminary Procedural Issue: Language of proceedings

Pursuant to the Rules, Paragraph 11, in the absence of an agreement between the Parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise.

According to information received from the concerned registrar, the language of the registration agreement for the Disputed Domain Name is French. The Complaint has been submitted in English.

UDRP panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement. Such scenarios include:

- evidence showing that the respondent can understand the language of the complaint;
- potential unfairness or unwarranted delay in ordering the complainant to translate the complaint;
- other indicia tending to show that it would not be unfair to proceed in a language other than that of the registration agreement.

On UDRP panel appointment, both parties’ arguments are provided to the UDRP panel for its determination as to the language of the proceeding. This may include accepting the complaint as filed, and a response in the language of the registration agreement, thereby seeking to give both parties a fair opportunity to present their case (see section 4.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

In the present case, the Complainant requests that English be the language of the proceedings based on two arguments:

- the country of the registrant, as shown in the WHOIS record, is France, where the English language is widely understood; and
- all pre-complaint correspondence to the Respondent has been submitted in English.

According to the Panel, the above arguments do not suffice to prove that the Respondent understands English. With regard to pre-complaint correspondence specifically, the Panel observes that the Respondent did not reply to the Complainant’s cease and desist email.

However, the Panel observes that the Respondent was made aware of the present proceedings with a French communication from the Center and did not reply. By accepting the terms and conditions of the registration agreement in French and by the Center’s communication, the Respondent was sufficiently informed about the content of these administrative proceedings. The fact that the Respondent did not reply to any of the communications sent by the Center indicates that the Respondent deliberately opted not to take part in the proceedings and chose not to use its right to defend itself. In such circumstances, the Panel finds that it would be a disadvantage for the Complainant to be forced to translate the Complaint. As the Respondent had ample chance to defend itself but elected not to do so, the rights of the Respondent to defend itself and the right to equal treatment are guaranteed (see INTS IT IS NOT THE SAME, GmbH (dba DESIGUAL) v. Two B Seller, Estelle Belouzard, WIPO Case No. D2011-1978).

For these reasons and given the circumstances of this case, as further explained below, the Panel determines that the language of the proceedings is English.

6.2 Substantive elements of the Policy

Paragraph 15 of the Rules provides that the Panel is to decide the Complaint based on the statements and documents submitted in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

The onus is on the Complainant to make out his case, and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that the Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer the Disputed Domain Name. As the UDRP proceedings are administrative, the standard of proof is the balance of probabilities.

Thus, for the Complainant to succeed, he must prove, within the meaning of paragraph 4(a) of the Policy, that:

(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.

The Panel will therefore deal with each of these requirements.

A. Identical or Confusingly Similar

To prove this element, the Complainant must first establish that there is a trademark or service mark in which it has rights. The Complainant has clearly established that there are trademarks in which it has rights. The Complainant’s FONDIA trademark has been registered and used in the EU in connection to its provision of legal services.

The Disputed Domain Name is identical to the Complainant’s trademark. It is well established that the generic Top-Level Domain (“gTLD”), here “.net”, may be disregarded when considering whether the Disputed Domain Name is confusingly similar to a trademark in which the Complainant has rights.

In light of the above, the Panel considers the Disputed Domain Name to be identical to the Complainant’s FONDIA trademark.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

As established by previous UDRP panels, it is sufficient for the Complainant to make a prima facie showing that the Respondent has no rights or legitimate interests in the Disputed Domain Name in order to place the burden of production on the Respondent (see section 2.1 of the WIPO Overview 3.0).

The Panel notes that the Respondent has not apparently been commonly known by the Disputed Domain Name and that the Respondent does not seem to have acquired trademark or service mark rights. According to the information provided by the Registrar, the Respondent is “ozyurt hakan”. There are no indications that a connection between the Complainant and the Respondent exists or existed.

Where a domain name is identical to a complainant’s trademark, UDRP panels have largely held that it carries a high risk of implied affiliation (see section 2.5.1 of the WIPO Overview 3.0). The Disputed Domain Name incorporates the Complainant’s FONDIA trademark in its entirety without any addition but the “.net” gTLD. Therefore, the Panel finds that the Disputed Domain Name cannot constitute bona fide or even fair use.

Beyond looking at the domain name, UDRP panels assess whether the overall facts and circumstances of the case, such as the content of the website linked to the disputed domain name and the absence of a response, support a fair use or not (see sections 2.5.2 and 2.5.3 of the WIPO Overview 3.0).

The Complainant claims that the Disputed Domain Name redirected to the Complainant’s website. According to the Panel, this is not a legitimate noncommercial or fair use of the Disputed Domain Name.

The Respondent had the opportunity to demonstrate its rights or legitimate interests but did not do so. In the absence of a Response from the Respondent, the prima facie case established by the Complainant has not been rebutted.

Therefore, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the Disputed Domain Name. In light of the above, the Complainant succeeds on the second element of the Policy.

C. Registered and Used in Bad Faith

The Complainant must prove on the balance of probabilities both that the Disputed Domain Name was registered in bad faith and that it is being used in bad faith (see section 4.2 of the WIPO Overview 3.0 and, for example, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, and Control Techniques Limited v. Lektronix Ltd, WIPO Case No. D2006-1052).

Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad faith. Among these factors demonstrating bad faith registration and use is the use of a domain name to intentionally attempt to attract, for commercial gain, Internet users to a 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 website or location or of a product or service on the website or location.

In the present case, the Complainant claims that the Disputed Domain Name redirected to the Complainant’s website. In addition, the Complainant also provides evidence showing that a person used the name “Fondia” and an email address linked to the Disputed Domain Name to file a copyright complaint against a video posted on YouTube. The Panel observes that this person also mentioned an email address linked to the Complainant as secondary email address in the copyright complaint. In the Panel’s view, this shows that the person filing the copyright complaint was aware of the Complainant. The Panel finds it likely that this person is the Respondent or at least has a close link with the Respondent in order to be able to use an email address linked to the Disputed Domain Name. In these circumstances and given the fact that the Disputed Domain Name is identical to the Complainant’s trademark, the Panel finds that it is more likely than not that the Respondent was aware of the Complainant and its trademark rights when it registered the Disputed Domain Name. In the Panel’s view, the Respondent’s awareness of the Complainant’s trademark rights at the time of registration suggests bad faith (see Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz, WIPO Case No. D2011-2209; BellSouth Intellectual Property Corporation v. Serena, Axel, WIPO Case No. D2006‑0007).

Previous UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a widely known trademark by an unaffiliated entity can by itself create a presumption of bad faith.

Previous UDRP 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:

- seeking to cause confusion for the respondent’s commercial benefit, even if unsuccessful;
- the lack of a respondent’s own rights to or legitimate interests in a domain name;
- redirecting the domain name to the complainant’s website; and
- absence of any conceivable good faith use (seesection 3.1.4 of the WIPO Overview 3.0).

The Panel finds that the identity between the Disputed Domain Name and the Complainant’s mark, the alleged (and unrebutted) redirection of the Disputed Domain Name to the Complainant’s official website, and the abovementioned use of an email address linked to the Disputed Domain Name, suggest that the Respondent’s intention was to cause confusion or even to impersonate the Complainant. The lack of the Respondent’s own rights to or legitimate interests in the Disputed Domain Name has been confirmed above under section 6.2.B. In the circumstances of this case, the Panel does not find any conceivable good faith use of the Disputed Domain Name by the Respondent.

By failing to respond to the Complaint, the Respondent did not take any initiative to contest the foregoing. Pursuant to paragraph 14 of the Rules, the Panel may draw the conclusions it considers appropriate.

Therefore, the Panel finds that, on the balance of probabilities, it is sufficiently shown that the Disputed Domain Name was registered and is being used in bad faith. In light of the above, the Complainant also succeeds on the third and last element 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 <fondia.net> be transferred to the Complainant.

Flip Jan Claude Petillion
Sole Panelist
Date: July 26, 2021