WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fondation Paristech v. Domain Administrator d/b/a privacy.cloudns.net
Case No. D2021-2417
1. The Parties
The Complainant is Fondation Paristech, France, represented by Cabinet Boettcher, France.
The Respondent is Domain Administrator d/b/a privacy.cloudns.net, Bulgaria.
2. The Domain Name and Registrar
The disputed domain name <paristech.org> 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 July 23, 2021. On July 26, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 27, 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 August 9, 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 amendment to the Complaint on August 11, 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, and the proceedings commenced on August 13, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 2, 2021. An initial informal Response was filed with the Center on August 25, 2021, followed by other informal responses on August 27, 2021, and September 3, 2021. The Center sent to the Parties a Possible Settlement Communication on August 31, 2021, and on September 6, 2021, the Complainant requested the suspension of the proceeding. The case was suspended on that day. On September 30, 2021, the Center received a communication from the Complainant requesting the reinstitution of the proceeding, and on September 30, 2021, the Center sent to the Parties the communication of Commencement of the Panel Appointment process.
The Center appointed Luca Barbero as the sole panelist in this matter on October 6, 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.
On October 20, 2021, the Respondent filed a late Response.
4. Factual Background
The Complainant is a French consortium of higher education institutions, which collaborate on joint training, research and innovation projects in the fields of Science, Technology, and Management.
The Complainant works closely with education and research centers also outside France, and has entered into numerous partnership agreements, whilst providing students, researchers, and partners (both institutional and companies) with a cross-disciplinary offer of training and research with particular focus on two values: education based on the French Grande École model in France and abroad, and multi-disciplinarity in education and research for the benefit of business.
The Complainant is the owner of several trademark registrations consisting of, or comprising PARISTECH, including the following, as per trademark certificates submitted as Annex 6 to the Complaint:
- French trademark registration No. 99788029 for PARIS TECH (word mark), filed on April 19, 1999 and registered in 1999, in classes 9, 16, 35, 41, and 42;
- French trademark registration No. 3684086 for PARISTECH (word mark), filed on October 15, 2009 and registered on September 17, 2010, in classes 9, 16, 18, 25, 28, 35, 41, and 42; and
- International trademark registration n. 1050691 for PARIS INSTITUTE OF SCIENCE AND TECHNOLOGY PARISTECH (word mark), registered on August 12, 2010, in classes 9, 16, 35, 41, and 42.
The Complainant is also the owner of the domain name <paristech.fr>, which was registered on August 31, 2004 and is used by the Complainant to promote its services under the trademark PARISTECH.
The disputed domain name <paristech.org> was registered on February 14, 2017 and is currently pointed to a website in French language providing articles about different subjects, mainly related to the field of technology and innovation.
5. Parties’ Contentions
The Complainant contends that disputed domain name is identical and confusingly similar to its registered trademarks.
With reference to rights or legitimate interests in respect of the disputed domain name, the Complainant states that the Respondent is not commonly known by the disputed domain name, not does it have any prior rights in the Complainant’s trademarks.
The Complainant further underlines that the Respondent has never been licensed or otherwise authorized in any way to register the disputed domain name using the Complainant’s trademarks or making any alternative use of the same and states that there is no relationship between the Complainant and the Respondent that would ever justify such use.
The Complainant contends that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services as the disputed domain name redirects to a website publishing articles on different subject matters, and asserts that such behavior only shows that the Respondent attempted to ride on the Complainant’s goodwill and reputation, whilst creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the website at the disputed domain name.
With reference to the circumstances evidencing bad faith, the Complainant indicates that, the fact that the Respondent has hidden its contact details in the public Whois records, is per se sufficient to characterize a bad faith registration.
The Complainant emphasizes that, considering the distinctive nature of the PARISTECH trademark and services, the Respondent must have undoubtedly been aware of the Complainant when registering the disputed domain name and that such conduct suggests that the Respondent was acting in bad faith in order to benefit illegitimately from the Complainant’s world renown.
The Complainant underlines that the Respondent must have registered the disputed domain name with the purpose of attracting Internet users to its website by creating a likelihood of confusion with the Complainant.
The Complainant further points out that the Respondent’s publication, on the website to which the disputed domain name resolves, of an email address based on the disputed domain name which turned out to be invalid according to the Complainant’s verifications and of an alleged contact address in Paris, demonstrate the Respondent’s bad faith use of the disputed domain name.
On August 25, 2021, the Respondent sent an informal communication stating that it wished to explore settlement talks with the Complainant and asking for instructions on the procedure.
Proceedings were thus put on hold upon formal request of the Complainant but, since no settlement was reached, the Complainant requested the reinstitution of the proceedings.
On October 20, 2021, the Respondent filed a late Response, which the Panel has not deemed appropriate to admit to the proceeding. However, the Panel notes that, had the Respondent’s allegations been considered, the outcome of the case would have been the same.
6. Discussion and Findings
According to paragraph 15(a) of the Rules: “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 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent 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 has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has established rights over the trademark PARISTECH based on the trademark registrations cited under section 4 above and the related trademark certificates submitted as Annex 6 to the Complaint.
As highlighted in section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the first element functions primarily as a standing requirement, and the threshold test for confusing similarity typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.
In the case at hand, the Complainant’s trademark PARISTECH is entirely reproduced in the disputed domain name, with the mere addition of the generic Top-Level Domain “.org”, which is commonly disregarded under the first element confusing similarity test (section 1.11 of the WIPO Overview 3.0).
Therefore, the Panel finds that the Complainant has proven that the disputed domain name is identical to a trademark in which the Complainant has established rights according to paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
“(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Panel notes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademarks.
There is also no indication before the Panel that the Respondent might be commonly known by the disputed domain name.
The Panel notes that the Respondent has been pointing the disputed domain name to a website in the French language providing articles about different subjects, mainly related to the field of technology and innovation. The website features a logo including the wording “Paris Tech” at the top and at the bottom of the website as well as reference to the city of Paris and the related Zip Code.
Notwithstanding the following statement is published at the bottom of the website: “Paristech est géré par deux entrepreneurs parisien souhaitant recenser le principal de l'actualité technologique au sein d'un seul media” (“Paristech is managed by two Parisian entrepreneurs wishing to identify the main technological news within a single media”), the sole contact information displayed on the home page is an email address based on the disputed domain name – which, according to the delivery failure notice provided as Annex 8 to the Complaint resulted not working based on the Complainant’s verifications – whilst the “Contact” page displays only a contact form and the “Mentions légales” (“Legal notice”) section mentions the contact details of OVH SARL, which is identified as the service provider responsible for the data storage but appears not to be actually involved in this matter as website operator, also in light of the mismatching of the company’s contact information with the one provided in the Registrar-disclosed Whois records for the disputed domain name.
Nevertheless, the Panel was not provided with any evidence from which it can be inferred the Respondent, on balance of probabilities, intended to target the Complainant and its trademark in the education and research field. The logo “PARIS TECH” displayed on the website is indeed distinct from the figurative mark of the Complainant and the content and layout of the website differ from the ones of the Complainant’s official website at <paristech.fr>.
Moreover, based on the documents and statement submitted, there are not additional elements from which the Panel could infer that the Respondent intended to misleadingly divert the Complainant’s customers for commercial gain or to tarnish the Complainant’s trademark and the Panel notes that the wording “Paris Tech” could readily stand for the “Paris Technology”, thus recalling the content of the Respondent’s website as described above.
Therefore, independently from the conclusion that might be reached about the Respondent’s legitimate interest in the disputed domain name, the Panel finds that the Complainant has failed to prove the Respondent’s bad faith, as detailed under the next section.
C. Registered and Used in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent inter alia Manheim Auctions Inc’s 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 holder’s website or location or of a product or service on the holder’s website or location.
In view of the circumstances of the case, the Panel finds that the Respondent could have been aware of the Complainant’s prior trademark PARISTECH at the time of registration of the disputed domain name since the Complainant’s trademark appears to be known in France in connection with education and research services and, according to the information displayed on the website to which the disputed domain name resolves, the website is operated by two entrepreneurs based in Paris, where the Complainant is based.
However, as highlighted above, the disputed domain name has been pointed to a non-commercial website displaying news about technology and innovation, without making reference to the Complainant’s area of services (education) and using a different layout and logo from those of the Complainant.
Moreover, the Complainant has not provided any evidence showing that the Respondent might have offered the disputed domain name for sale to the Complainant prior to receiving notice of the dispute, that the Respondent attempted to obtain commercial gain via the use of the disputed domain name by causing confusion with the Complainant’s trademark, or that it engaged in a pattern of abusive domain name registrations corresponding to trademarks of the Complainant or third parties.
In view of the above and in light of the absence of additional elements from which the Panel could infer that the Complainant intended to trade off the Complainant’s trademark, the Panel notes that the fact that the Respondent opted to have its contact details masked in the public Whois records and provided on its website a contact email address which was not working is not sufficient to establish that the Respondent acted in bad faith according to paragraph 4(a)(iii) of the Policy.
Therefore, the Panel finds that the Complainant has not discharged its burden of proving that the Respondent registered and has been using the disputed domain name in bad faith according to paragraph 4(a)(iii) of the Policy.
The Panel would note that the present decision is based on the facts presented, but e.g., if the content of the Respondent’s site were to change to infringe on the Complainant’s rights, the Complainant would remain free to pursue such claims – as it is indeed generally free to do – as it may consider appropriate.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Complaint is denied.
Date: October 28, 2021