WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ESMOD v. Domains By Proxy, LLC, Registration Private / Carolina Rodrigues, Fundacion Comercio Electronico
Case No. D2021-2865
1. The Parties
The Complainant is ESMOD, France, represented by Novagraaf France, France.
The Respondent is Domains By Proxy, LLC, Registration Private, United States of America / Carolina Rodrigues, Fundacion Comercio Electronico, Panama.
2. The Domain Name and Registrar
The disputed domain name <studentdesmod.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 31, 2021. On August 31, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 31, 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 September 6, 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 September 13, 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 September 14, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 4, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 9, 2021. The Center sent an email regarding the Notification of Complaint to the Parties on October 13, 2021. The Respondent did not submit any Response again. Accordingly, the Center sent email on Commencement of Panel Appointment Process to the Parties,
The Center appointed Evan D. Brown as the sole panelist in this matter on October 26, 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 is a well-known fashion design and business school. It owns the trademark ESMOD which it has registered in a number of jurisdictions, including France (Reg. No. 1534654, registered on June 5, 1989 and International Trademark Reg. No.522602, registered on February 5, 1988. According to the WhoIs records, the disputed domain name < studentdesmod.com > was registered on October 1, 2020.
The Respondent has used the disputed domain name to display sponsored advertisements. Also, the Complainant has provided evidence that MX (mail exchange) records (“MX records”) have been established for the disputed domain name, indicating that the disputed domain name is being used to send email messages, perhaps of a fraudulent nature. The Respondent did not reply to cease and desist communications the Complainant sent concerning the disputed domain name.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s trademark; that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is 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 respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Panel finds that all three of these elements have been met in this case.
A. Identical or Confusingly Similar
This element requires the Panel to consider two issues: first, whether the Complainant has rights in a relevant mark; and, second, whether the disputed domain name is identical or confusingly similar to that mark. This element under the Policy functions primarily as a standing requirement. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. See, Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen, WIPO Case No. D2014-0657. The Complainant has demonstrated its rights in the ESMOD mark by providing evidence of its trademark registrations. The disputed domain name incorporates the ESMOD mark in its entirety. This is sufficient for showing confusing similarity under the Policy. The dictionary word “student” and the letter “d” preceding the mark within the disputed domain name do not eliminate the confusing similarity. The Panel finds that the Complainant has established this first element under the Policy.
B. Rights or Legitimate Interests
The Panel evaluates this element of the Policy by first looking to see whether the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. If the Complainant makes that showing, the burden of demonstrating rights or legitimate interests shifts to the Respondent.
On this point, the Complainant’s evidence is relatively scant, asserting merely that “it is obvious that the respondent has no rights nor legitimate interests in holding the [disputed] domain name . . . .” and that “the Complaint has never licensed or otherwise authorized registration of the [disputed] domain name nor use of its IP rights”. Other evidence in the record – particularly the configuration of MX records, and the use of the disputed domain name incorporating the Complainant’s mark to provide sponsored advertisements – indicates that the Respondent has not been using the disputed domain name in connection with a bona fide offering of goods or services.
Even though the assertions are light, the Panel nonetheless finds that the Complainant has made the required prima facie showing. The Respondent has not presented evidence to overcome this prima facie showing. And nothing in the record otherwise tilts the balance in the Respondent's favor. Accordingly, the Panel finds that the Complainant has established this second element under the Policy.
C. Registered and Used in Bad Faith
The Policy requires a complainant to establish that the disputed domain name was registered and is being used in bad faith. The Policy describes several non-exhaustive circumstances demonstrating a respondent’s bad faith registration and use. Under paragraph 4(b)(iv) of the Policy, a panel may find bad faith when a respondent “[uses] the domain name to intentionally attempt to attract, for commercial gain, Internet users to [respondent’s] website or other online location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] website or location or a product or service on [the respondent’s] website or location”.
It is clear that the Respondent targeted the Complainant when it registered the disputed domain name. The Complainant operates a school, and the disputed domain name adds the obviously school-related word “student” and the letter “d”. As the Complainant observes:
It should be noted that French students will read the disputed domain name like this “the students of ESMOD”. In fact, the “D” in the disputed domain name <studentdesmod> belongs, [sic.] is intrinsically linked to the word ESMOD. When French people read “student d’esmod”, English people read “student of ESMOD”. The [d’] is the equivalent of the [of] in English.
There is simply no good explanation for the Respondent’s registering a domain name containing the Complainant’s school-related trademark ESMOND along with the word “student” other than that the Respondent had the Complainant-school in mind when it did the registering. This targeting is sufficient to demonstrate bad faith registration of the disputed domain name.
Bad faith use is clear in this case from the Respondent’s activities of using the disputed domain name to establish a website displaying unauthorized pay-per-click links. And if the Respondent is using the disputed domain name to send fraudulent emails – which the MX records suggest is a possibility – then bad faith use is further obvious.
Additionally, the lack of response by the Respondent to the cease-and-desist letter sent by the Complainant supports a finding of bad faith. Past UDRP panels have held that failure to respond to a cease-and-desist letter may be considered a factor in finding bad faith registration and use of a domain name. See Encyclopaedia Britannica, Inc. v. John Zuccarini and The Cupcake Patrol a/ka Country Walk a/k/a Cupcake Party, WIPO Case No. D2000-0330.
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 <studentdesmod.com> be transferred to the Complainant.
Evan D. Brown
Date: November 9, 2021