WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Micromania Group v. Contact Privacy Inc. Customer 0162206257 / Victoria Oliveira, MicroMania Shop

Case No. D2021-3056

1. The Parties

The Complainant is Micromania Group, France, represented by AARPI Scan Avocats, France.

The Respondent is Contact Privacy Inc. Customer 0162206257, Canada / Victoria Oliveira, MicroMania Shop, Brazil.

2. The Domain Name and Registrar

The disputed domain name <micromaniabr.com> is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 16, 2021. On September 17, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 20, 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 20, 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 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 September 28, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 18, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 19, 2021.

The Center appointed Edoardo Fano 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.

The Panel has not received any requests from the Complainant or the Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the Parties.

Having reviewed the communication records in the case file provided by the Center, the Panel finds that the Center has discharged its responsibility under the Rules, paragraph 2(a), “to employ reasonably available means calculated to achieve actual notice to Respondent”. Therefore, the Panel shall issue its Decision based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of a response from the Respondent.

The language of the proceeding is English, being the language of the Registration Agreement, as per paragraph 11(a) of the Rules.

4. Factual Background

The Complainant is Micromania Group, a French company operating in the video games field and owning several trademark registrations for MICROMANIA, among which:

- French Trademark Registration No. 3452198 for MICROMANIA, registered on September 25, 2006;
- French Trademark Registration No. 3453569 for MICROMANIA, registered on September 29, 2006;
- International Trademark Registration No. 933880 for MICROMANIA, registered on March 16, 2007.

The Complainant operates also on the Internet at the main website “www.micromania.fr”, and owns several domain name registrations for MICROMANIA, including <micromania.com>, <micromania.eu> and <micromania.net>.

The Complainant provided evidence in support of the above.

According to the WhoIs records, the disputed domain name <micromaniabr.com> was registered on July 24, 2021 and it resolves to an error webpage since it has been suspended as a consequence of the Complainant’s takedown notices. The Complainant claims that the disputed domain name previously resolved to a website, mimicking the Complainant’s website, which offered for sale the same type of video games products sold on Complainant’s website under the MICROMANIA trademark.

5. Parties’ Contentions

A. Complainant

The Complainant states that the disputed domain name is confusingly similar to its trademark MICROMANIA, as the disputed domain name wholly incorporates the Complainant’s trademark, with the sole addition letters “br”, the country code identifying Brazil.

Moreover, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name since it has not been authorized by the Complainant to register the disputed domain name or to use its trademark within the disputed domain name, nor is the Respondent commonly known by the disputed domain name. The Complainant asserts that the Respondent is not making either a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name since the website at the disputed domain name was mimicking the Complainant’s website, very likely to carry out fraudulent activities.

The Complainant submits that the Respondent has registered the disputed domain name in bad faith, since the Complainant’s trademark MICROMANIA is distinctive and well known in the video games field. Therefore, the Respondent targeted the Complainant’s trademark at the time of registration of the disputed domain name. Additionally, the Complainant contends that the use of the disputed domain name, redirecting to a website mimicking the Complainant’s website and deceiving the public into believing that there is a connection to the Complainant, qualifies as bad faith registration and use. Furthermore, the Complainant suspects that the Respondent is intentionally attempting to generate profits by using the disputed domain name for fraudulent activities.

B. Respondent

The Respondent has made no reply to the Complainant’s contentions and is in default. In reference to paragraphs 5(e) and 14 of the Rules, no exceptional circumstances explaining the default have been put forward or are apparent from the record.

A respondent is not obliged to participate in a proceeding under the Policy, but if it fails to do so, reasonable facts asserted by a complainant may be taken as true, and appropriate inferences, in accordance with paragraph 14(b) of the Rules, may be drawn (see, e.g., Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441; Microsoft Corporation v. Freak Films Oy, WIPO Case No. D2003-0109; SSL International PLC v. Mark Freeman, WIPO Case No. D2000-1080; Altavista Company v. Grandtotal Finances Limited et. al., WIPO Case No. D2000-0848; Confédération Nationale du Crédit Mutuel, Caisse Fédérale du Crédit Mutuel Nord Europe v. Marketing Total S.A., WIPO Case No. D2007-0288).

6. Discussion and Findings

Paragraph 4(a) of the Policy lists three elements, which the Complainant must satisfy in order to succeed:

(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.

A. Identical or Confusingly Similar

The Panel finds that the Complainant is the owner of the trademark MICROMANIA both by registration and acquired reputation and that the disputed domain name is confusingly similar to the trademark MICROMANIA.

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 MICROMANIA is entirely reproduced in the disputed domain name, with the mere addition of the geographical code “br”, and the Panel notes that it is now well established that the addition of descriptive terms or letters to a domain name does not prevent a finding of confusing similarity between the domain name and the trademark (see WIPO Overview 3.0, section 1.8). The addition of the letters “br” does not therefore prevent the disputed domain name from being confusingly similar to the Complainant’s trademark.

It is also well accepted that a generic Top-Level Domain (“gTLD”), in this case “.com”, may be ignored when assessing the similarity between a trademark and a domain name (see WIPO Overview 3.0, section 1.11).

The Panel finds that the Complainant has therefore met its burden of proving that the disputed domain name is confusingly similar to the Complainant’s trademark, pursuant to the Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

The Respondent has failed to file a Response in accordance with the Rules, paragraph 5.

The Complainant in its Complaint and as set out above has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. It asserts that the Respondent, who is not currently associated with the Complainant in any way, is not using the disputed domain name for a legitimate noncommercial or fair use or in connection with a bona fide offering of goods or services, but instead the disputed domain name resolved to a website in which the Respondent was passing off as the Complainant, probably with the aim to carry out fraudulent activities.

According to the WIPO Overview 3.0, section 2.13:

“2.13.1 Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent […].”

The prima facie case presented by the Complainant is enough to shift the burden of production to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name. However, the Respondent has not presented any evidence of any rights or legitimate interests it may have in the disputed domain name, and the Panel is unable to establish any such rights or legitimate interests on the basis of the evidence in front of it.

Moreover, the Panel finds that the disputed domain name carries a risk of implied affiliation as it effectively impersonates or suggests sponsorship or endorsement by the Complainant in relation to the Brazilian market. See WIPO Overview 3.0., section 2.5.1.

Based on the facts of this case, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

The Panel therefore finds that paragraph 4(a)(ii) of the Policy has been satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that “for the purposes 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 a 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 the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or

(ii) that [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) that [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’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 respondent’s] website or location or of a product or service on [the respondent’s] website or location”.

Regarding the registration in bad faith of the disputed domain name, the reputation of the Complainant’s trademark MICROMANIA in the field of video games is clearly established and the Panel finds that the Respondent likely knew of the Complainant and deliberately registered the disputed domain name, especially because the website at the disputed domain name was offering for sale the same products as the Complainant.

As regards the previous use of the disputed domain name, the Panel finds that the Respondent’s attempt to pass off as the Complainant, with the purpose of intentionally attempting to create a likelihood of confusion with the Complainant’s trademark as to the disputed domain name’s source, sponsorship, affiliation or endorsement, consists of bad faith use of the disputed domain name.

As regards the current use of the disputed domain name, pointing to an error webpage, the Panel considers that bad faith may exist even in cases of so-called “passive holding”, as found in the landmark UDRP decision Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In the circumstances of this case, the Panel finds that such passive holding amounts to bad faith.

Furthermore, the Panel considers that the nature of the disputed domain name, which is almost identical to the Complainant’s trademark with the mere addition of a geographic code, further supports a finding of bad faith. See, WIPO Overview 3.0, section 3.2.1.

The Panel finds that the Complainant has presented evidence to satisfy its burden of proof with respect to the issue of whether the Respondent has registered and is using the disputed domain name in bad faith.

The Panel therefore finds that paragraph 4(a)(iii) of the Policy has been satisfied.

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 <micromaniabr.com> be transferred to the Complainant.

Edoardo Fano
Sole Panelist
Date: October 28, 2021