WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Etex N.V and ETEX Services N.V v. Patrick Etex; Julien Benini; Michel Jean; Name Redacted and Ryan Montell
Case No. D2021-3154
1. The Parties
Complainants are Etex N.V and ETEX Services N.V, Belgium (collectively hereinafter referred to as “Complainants”), represented by BrandIT GmbH, Switzerland.
Respondents are Patrick Etex, United Kingdom; Julien Benini, France; Michel Jean, Belgium; Name Redacted and Ryan Montell, France.
2. The Domain Names and Registrars
The disputed domain names <etexgroup-bp.com> and <etexgroupe.com> are registered with Namebay.
The disputed domain name <achat-etex.com> is registered with NameCheap, Inc.
The disputed domain name <etex-building.com> is registered with Register SPA.
The disputed domain name <etex-buildingperformance.com> is registered with Google LLC.
Namebay, NameCheap, Inc., Register SPA and Google LLC are collectively hereinafter referred to as the “Registrars”. Similarly, the above-listed domain names will be collectively hereinafter referred to as the “Domain Names”.
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on September 23, 2021. On September 24, 2021, the Center transmitted by email to the Registrars requests for registrar verification in connection with the Domain Names. On September 24 and 27, 2021, the Registrars transmitted by email to the Center its verification response disclosing registrants and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainants on September 30, 2021 providing the registrant and contact information disclosed by the Registrars, and inviting Complainants to submit an amendment to the Complaint. Complainants filed an amended Complaint on October 5, 2021.
The Registrar’s Registration Agreement for the Domain Names <achat-etex.com> and <etex-buildingperformance.com> is English, while for the Domain Names <etex-building.com>, <etexgroup-bp.com> and <etexgroupe.com> is French. The Complaint was filed in English. The Center sent an email communication to Complainants on October 14, 2021, inviting Complainants to provide sufficient evidence of an agreement between the Parties for English to be the language of proceeding, a Complaint translated into French, or a request for English to be the language of proceedings. The Center also invited Respondent to submit comments. Complainants filed a request for English to be the language of proceedings on October 15, 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 Respondents of the Complaint in both French and English, and the proceedings commenced on October 26, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 15, 2021. Respondents did not submit any response. Accordingly, the Center notified Respondents’ default on November 22, 2021.
The Center appointed Marina Perraki as the sole panelist in this matter on November 30, 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. Procedural issues:
A. Consolidation of Multiple Complainants
The Panel has considered the possible consolidation of the Complaint for the Domain Names. According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.1, paragraph 10(e) of the Rules grants a panel the power to consolidate multiple domain name disputes. At the same time, paragraph 3(c) of the Rules provides that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder.
In assessing whether a complaint filed by multiple complainants may be brought against a single respondent, panels look at whether (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation.
The Panel notes the following features of the Domain Names in favor of the consolidation:
- both Complainants are part of the same group of companies;
- per Complaint, second Complainant, ETEX Services N.V is a subsidiary of first Complainant, ETEX N.V. First Complainant has trademark rights on the word ETEX, while second Complainant manages the trademarks and domain names of the ETEX group;
- both Complainants have a common grievance against Respondent as the Domain Names target the trademarks of their group of companies;
- it would be equitable and procedurally efficient to permit the consolidation.
The Panel finds that this Complaint consists of multiple Complainants that should, for the reasons discussed above, be permitted to have their Complaints consolidated into a single Complaint for the purpose of the present proceeding under the Policy. Respondents have not objected to the consolidation. The Panel therefore finds that it would be equitable and fair to permit the consolidation.
B. Consolidation of Multiple Respondents
The Panel has considered the possible consolidation of the Complaint for the Domain Names. According to WIPO Overview 3.0, section 4.11.2, “Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario”.
The Panel notes the following features of the Domain Names and arguments submitted by Complainants in favor of the consolidation of the Domain Names:
- the Domain Names share the same structure and include the trademark ETEX along with the words or letters in English or French (“building”, “bp” possibly short for “building performance” or “building products”, “group”, “groupe” which in French means “group”, “performance” or “achat” which in French means “purchases”) which as Complainants demonstrated all relate to Complainants, namely their activity in the building sector and building products, their “building performance” division, their “purchases” division and their being part of a “group”);
- the Domain Names were registered at close dates between March to August 2021. Namely, the Domain Name <etexgroupe.com> was registered on March 18, 2021, the Domain Name <etex-building.com> was registered on April 19, 2021 and shortly after <etexgroup-bp.com> on April 23, 2021. Last, the Domain Name <etex-buildingperformance.com> was registered on May 26, 2021 and <achat-etex.com> on August 9, 2021;
- per Complaint, four of the Domain Names mimic Complainants’ domain names. The Domain Names <etex-building.com> and <etex-buildingperformance.com> are similar to Complainants’ <etexbuildingperformance.com> domain name. The Domain Name <etexgroupe.com> is almost identical to Complainants’ <etexgroup.com> domain name. The Domain Name <etexgroup-bp.com> is also similar to Complainants’ <etexgroup.com> and <etex-bp.com> domain names;
- the Domain Names <etexgroup-bp.com> and <etexgroupe.com> are both registered with the same Registrar (Namebay), share the same hosting provider (NET4ALL) and the same IP address;
- as Complainants demonstrated, the Domain Names were used in a fraud scheme using the same pattern of conduct, via email addresses created with the use of the Domain Names (the Fraud Scheme).
The Fraud Scheme involved impersonating two senior management employees of the ETEX group of Complainants by including their names in the email addresses composed of the Domain Names, as well as in the signature in the body of these emails. In the corresponding emails sent to third parties purportedly from Complainants, the sender expressed an interest in ordering products, pretended he wanted to establish a commercial relationship, accepted a subsequent offer made by the mislead third-party recipient and sent a false purchase order.
The email addresses incorporating the Domain Names in the Fraud Scheme are also highly similar in their structure. The Domain Names used in the Fraud Scheme (all except <achat-etex.com>) have been used in email addresses which included the full name or first name initials and family name of Complainants’ two employees.
There are also similarities in the signatures in the Fraud Scheme emails. In the signatures, the sender included false information regarding the respective position of Complainants’ employees within the ETEX group. The sender also included names of companies of the ETEX group, such as Etex Building Performance N.V. (emails using <etexgroup-bp.com>, <etex-building.com> and <etex-buildingperformance.com>) and First Complainant (emails using <achat-etex.com>). In the same signatures appear the city names of Zaventem and Tisselt, where respectively entities of Complainants’ group, namely first Complainant and Etex Building Performance N.V. are located. The registration numbers corresponding to each of these companies have been as well indistinctively and repeatedly used in signatures, while the ETEX figurative trademark has also been used in signatures of emails sent from addresses including the Domain Names <etex-building.com>, <etexgroup-bp.com> and <etexgroupe.com>. The ETEX figurative trademark was included in the three email signatures. Furthermore, the name of the company Etex Building Performance N.V. and its registration and TVA numbers appeared in the signatures of emails sent from the addresses including the Domain Names <etex building.com> and <etexgroup-bp.com>.
Moreover, the wording content and display in emails sent from the email addresses incorporating <etexgroup-bp.com>, <etex-building.com> and <etexgroupe.com> have the same pattern. The first fraudulent emails sent to third party companies, from the email addresses “[...]@etexgroup-bp.com”, “[...]@etex-building.com” and “[...]@etexgroupe.com”, (respectively on May 3, 10 and July 19, 2021) have an almost identical wording. The first emails sent from the email addresses incorporating <etex-building.com> or <etexgroupe.com> are the translation in English of the French version used in the previous email sent from the email address “[…]@etexgroup-bp.com”. In the three aforementioned emails the sender introduces in the exact same way the ETEX group and the impersonated employees. The three emails start with the introduction of the employees, presented as “purchasing director” at “Etex N.V” in the emails related <etexgroup-bp.com> and <etex-building.com> or at “Etex Group NV” in the email related to <etexgroupe.com>. The terms used to describe the ETEX group are identical. The ETEX group is presented as “an international specialist in building materials” and the key facts about the group provided are the same: “Based in Belgium since 1905, the family group operates 107 production sites in 42 countries and generates annual sales of around 3 billion euros”. The words used to describe the ETEX group’s scope of activity are also identical: “With the help of over 15,000 employees, we develop and produce a variety of technically and aesthetically superior building materials. These range from fiber cement and plaster siding and construction panels to roofing materials, high performance insulation and fire protection.” This description is directly followed by the sentence starting with the terms “We are approaching you to establish a B2B relationship …”.
Moreover, the three emails end with a similar pattern inviting the recipients to contact the sender if they need more information.
The whole Fraud Scheme is characterized by the use of the English and French languages in relation to the Domain Names: emails sent from the email address “[...]@etexgroup-bp.com” were in French, while emails sent from the other email addresses contain versions or expressions from English. Emails sent from the email address “[...]@etex-building.com” were in French and English. In the English version, the position of “Directeur des Achats” appears in the email signature. The emails sent in French from the email address “[...]@etex-buildingperformance.com” include the job position of “Purchase Director” in English. The emails sent in English from the email addresses “[…]@etexgroupe.com” or “contact@achat-etex,com” contain the French expressions “Responsable achats”, “Sincères salutations” or “Bâtiment des passports”.
- the registered Respondent information used in the WhoIs record regarding the Domain Name <etex-buildingpersformance.com> also impersonates the employee of Complainants, whose name appears as Respondent registered name and also in Respondent registered email address “[...]@gmail.com”.
The registered Respondent information related to <achat-etex.com> also impersonate the ETEX group. The postal address provided is mimicking ETEX N.V.’s address. Geographical terms such as “Brussel Nationaal” and “Zaventem” are misspelled in the address. Also, the registered name of Respondent is the same as the first name of Complainants’ employee.
- the registered postal addresses associated with both the domain names <etexgroup-bp.com> and <etexgroupe.com> are in France and appear to be false. Per Complainants, the street “rue de la macedoine” does not appear to exist in the city of Paris (75001) France, nor does the street “rue de Babylon” in Nanterre (92001) France.
In view of all the above, the Panel finds that the consolidation of the Domain Names is fair to the Parties, and Respondents have been given an opportunity to object to consolidation through the submission of pleadings to the Complaint (if indeed there is more than one Respondent for these Domain Names), but have chosen not to rebut the consolidation (see WIPO Overview 3.0, sections 4.11.1 and 4.11.2; Virgin Enterprises Limited v. LINYANXIAO aka lin yanxiao, WIPO Case No. D2016-2302). Based on the Complaint, the Panel finds that it is more likely than not that the Domain Names are in common control of one entity; hence, the Panel grants the consolidation for the Domain Names (and will refer to these Respondents as “Respondent”).
C. Language of the Proceedings
Paragraph 11(a) of the Rules provides that the language of the proceeding shall be the language of the Registration Agreement unless otherwise specified in that agreement or agreed by the parties. The paragraph also provides that the Panel has the authority to determine otherwise, having regard to the circumstances of the administrative proceeding. The Registrar’s Registration Agreement for the Domain Names <achat-etex.com> and <etex-buildingperformance.com> is English, while for the Domain Names <etex-building.com>, <etexgroup-bp.com> and <etexgroupe.com> is French.
Notwithstanding the Registration Agreement being in French for these three Domain Names, Complainants requested that English be adopted as the language of the present proceeding. The Panel considers the following assertions of Complainants:
- the Domain Name was used in relation to the Fraud Scheme, which involved text and communications in the English language;
Even though the language of the Registration Agreement regarding the Domain Name <etexgroupe.com> and the Domain Name <etex-buildingperformance.com> is French, Respondent used these Domain Names to create email addresses from which emails, also in English, were sent, comprising mentions, such as job positions, in English;
- Respondent agreed to and signed the Registration Agreements for the Domain Names <achat-etex.com> and <etex-buildingperformance.com> in English;
- the Domain Names <etex-building.com>, <etexgroup-bp.com> include English words. Furthermore, the English terms “building”, “performance” or “group” along with the acronym “bp”, possibly short for “building performance” or “building products”, are used in the Domain Names;
The Panel notes, that per Complainants, if they had to translate the Complaint, Amended Complaint and subsequent communications in French, such translation would entail significant additional costs for them and delay the proceedings.
Furthermore, Respondent has been given an opportunity to object to the language of the proceedings being English through the submission of pleadings to the Complaint but has chosen not to respond.
The Panel accepts Complainants’ request and determines that the language of this proceeding will be English (WIPO Overview 3.0, sections 4.5.1 and 4.5.2, Laverana GmbH & Co. KG v. Silkewang, Jiangsu Yun Lin Culture Communication Co., Ltd. / xia men yi ming wang luo you xian gong si, WIPO Case No. D2016-0721, eBay Inc. v. NicSoft, Antonio Francesco Tedesco, WIPO Case No. D2014-0812).
5. Factual Background
Complainants belong to the ETEX group, including also the entities ETEX BUILDING PERFORMANCE N.V., Etex France Building Performance S.A. and ETEX SERVICES N.V. Founded in 1905, ETEX is a global group offering interior and exterior building solutions. Complainants’ group employs over 11,000 people in over 110 sites around the world and has 4 sales divisions, including the division under the name “Building Performance”. It enjoys also a strong online presence via its official website at “www.etexgroup.com” and social media platforms.
Complainants’ group owns trademark registrations for ETEX, including:
- the International trademark registration No. 652141, ETEX (word), registered on February 1, 1996, for goods in international classes 11, 17, 19 and 25; and
- the European Union trademark registration No. 17910895, ETEX (figurative), filed on May 30, 2018 and registered on March 19, 2019, for goods and services in international classes 2, 6, 17, 19, 35, 37 and 42.
The Domain Name <etexgroupe.com> was registered on March 18, 2021, the Domain Name <etex-building.com> was registered on April 19, 2021, the Domain Name <etexgroup-bp.com> was registered on April 23, 2021, the Domain Name <etex-buildingperformance.com> was registered on May 26, 2021 and the Domain Name <achat-etex.com> was registered on August 9, 2021.
The Domain Names were used to create email addresses in the context of the Fraud Scheme described above. Per Complaint, when Complainant discovered the Fraud Scheme, it filed takedown actions before the relevant entities which confirmed to have taken appropriate actions regarding the Domain Names <etex-building.com>, <etexgroup-bp.com>, <etexgroupe.com> and <etex-buildingperformance.com>.
The Domain Name <etex-building.com> previously redirected to Complainants’ group’s website at “www.etexgroup.com”.
Currently, all the Domain Names, except for <achat-etex.com>, resolve to inactive webpages, while <etex-building.com> has been suspended. The Domain Name <achat-etex.com> resolves to a Pay-Per-Click page (“PPC page”), including also a sponsored link for “Promat”, which is the name of several companies of Complainants’ group (Promat Research and Technology Center N.V., Promat Service GmbH, Promat Ibérica S.A., Promat Glasgow Ltd. and Promat UK Ltd.).
6. Parties’ Contentions
Complainants assert that they have established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Names.
Respondent did not reply to Complainants’ contentions.
7. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements that Complainants must satisfy with respect to the Domain Names:
(i) the Domain Names are identical or confusingly similar to a trademark or service mark in which Complainants have rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) the Domain Names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Domain Names incorporate Complainant’s trademark ETEX in its entirety. This is sufficient to establish confusing similarity (WIPO Overview 3.0, section 1.7).
The addition of the dictionary words “building”, “group”, “groupe”, “performance” or “achat”, or the letters “bp” or hyphens, as the case may be, in the Domain Names, does not prevent a finding of confusing similarity, as the trademark ETEX remains clearly distinguishable (WIPO Overview 3.0, section 1.8).
The generic Top-Level Domain (“gTLD”) “.com” is disregarded, as gTLDs typically do not form part of the comparison as they are required for technical reasons (Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275; Hay & Robertson International Licensing AG v. C. J. Lovik, WIPO Case No. D2002-0122).
The Panel finds that the Domain Names are confusingly similar to the ETEX mark of Complainants.
Complainants have established Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Names, among other circumstances, by showing any of the following elements:
(i) before any notice to Respondent of the dispute, Respondent’s use of, or demonstrable preparations to use, the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business, or other organization) has been commonly known by the Domain Names, even if it has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Names.
Respondent has not submitted any response and has not claimed any such rights or legitimate interests with respect to the Domain Names. As per Complainants, Respondent was not authorized to register the Domain Names.
Prior to the notice of the dispute, Respondent did not demonstrate any use of the Domain Names or a trademark corresponding to the Domain Names in connection with a bona fide offering of goods or services.
On the contrary, as Complainants demonstrated, the Domain Names were used to create email addresses used in the Fraud Scheme. Use of a domain name for illegal activity can never confer rights or legitimate interests on a respondent (WIPO Overview 3.0, section 2.13.1).
Furthermore, the Domain Name <etex-building.com> previously redirected to Complainants’ group’s website at “www.etexgroup.com”. A respondent’s use of a complainant’s mark to redirect users to Complainant’s site would not support a claim to rights or legitimate interests (WIPO Overview 3.0, section 2.5.3). This also indicates that Respondent knew of Complainants and chose the Domain Name with such knowledge (Safepay Malta Limited v. ICS Inc, WIPO Case No. D2015-0403).
Currently all of the Domain Names are inactive apart from one, <achat-etex.com>, which resolves to a PPC page, including also a sponsored link for “Promat”, which is the name of several companies of Complainants’ group. Respondent has not provided a plausible explanation about the inclusion of these links. In the absence of such explanation, it appears not unlikely to the Panel that the inclusion of these links was intended to increase and monetize the traffic to the Domain Name, which would increase the attractiveness and price in the offer for sale (Sanofi v. Privacy Hero Inc. / Honey Salt ltd, pat honey salt, WIPO Case No. D2020-2836).
These circumstances, along with the fact that the Domain Names are registered with different privacy shield services, speak against any rights or legitimate interests held by Respondent (Ann Summers Limited v. Domains By Proxy, LLC / Mingchun Chen, WIPO Case No. D2018-0625).
Lastly, the nature of the Domain Names, carries a risk of implied affiliation (WIPO Overview 3.0, section 2.5.1).
The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Names.
Complainant has established Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Names in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Names primarily for the purpose of selling, renting, or otherwise transferring the Domain Names registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Names; or
(ii) that Respondent has registered the Domain Names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Names primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Names, Respondent has intentionally attempted 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 of a product or service on Respondent’s website or location.
The Panel concludes that Respondent has registered and used the Domain Names in bad faith.
Because the ETEX mark had been widely used and registered by Complainants before the Domain Names registrations, the Panel finds it more likely than not that Respondent had Complainants’ mark in mind when registering the Domain Names (Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc., WIPO Case No. D2014-1754; Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226). This also in view of the fact that ETEX is a made up name and of the structure of the Domain Names this made up word along with words or letters in English or French (“building”, “bp” possibly short for “building performance”, “group”, “groupe” which in French means “group”, “performance” or “achat” which in French means “purchases”) which as Complainants demonstrated all relate to Complainants, namely their activity in the building sector, their “building performance” division / group entity corporate names, their “purchases” division and their being part of a “group”.
Respondent should have known about Complainants’ rights, as such knowledge is readily obtainable through a simple browser search (see Caesars World, Inc. v. Forum LLC, WIPO Case No. D2005-0517; Compart AG v. Compart.com / Vertical Axis Inc., WIPO Case No. D2009-0462).
Furthermore, Respondent could have conducted a trademark search and would have found Complainants’ prior registrations in respect of ETEX (Citrix Online LLC v. Ramalinga Reddy Sanikommu Venkata, WIPO Case No. D2012-1338).
As regards bad faith use, the Panel considers the following factors:
(i) the use of the Domain Names in the Fraud Scheme which involved impersonating actual employees of Complainants and sending emails purportedly sent by Complainants’ which included Complainants’ trademarks and logos, information and company details;
(ii) the failure of Respondent to submit a response;
(iii) the use of false registered Respondent information in the WhoIs, including information of Complainants’ employees and a privacy shield to hide Respondent’s identity for one Domain Name;
(iv) the fact that one of the Domain Names redirected to Complainant’s own website; and
(v) the fact that one of the Domain Names leads to a PPC Page, which includes a link indicated as “Promat”, a name used for entities belonging to Complainants’ group of companies.
The Panel notes that all of the Domain Names apart from one currently do not resolve to active websites. The non-use of a domain name does not prevent a finding of bad faith (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; WIPO Overview 3.0, section 3.3).
Under these circumstances and on this record, the Panel finds that Respondent has registered and is using the Domain Names in bad faith.
Complainant has established Policy, paragraph 4(a)(iii).
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 names, <achat-etex.com>, <etex-building.com>, <etex--buildingperformance.com>, <etexgroup-bp.com>, <etexgroupe.com> be transferred to the second Complainant ETEX Services N.V.
Date: December 14, 2021