WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Thales and Thales Alenia Space v. Audrey Gabrielle Boua, BM Store Retail, and Thales alenia espace, Thales group

Case No. D2021-3999

1. The Parties

The Complainants are Thales and Thales Alenia Space, France, represented by Marks & Clerk Intellectual Property, France.

The Respondents are Audrey Gabrielle Boua, BM Store Retail, France, and Thales alenia espace, Thales group, France.

2. The Domain Names and Registrar

The disputed domain names <thalesalenaespace.com> and <thalesaleniaespace.com> are registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 30, 2021. On December 1, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 2, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrants and contact information for the disputed domain names, which differed from the named Respondents and contact information in the Complaint. The Center sent an email communication to the Complainants on December 17, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on December 28, 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 Respondents of the Complaint, and the proceedings commenced on January 7, 2022. In accordance with the Rules, paragraph 5, the due date for Response was January 27, 2022. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on January 28, 2022. An informal email communication from the Respondents was received later the same day.

The Center appointed Christiane Féral-Schuhl as the sole panelist in this matter on February 9, 2022. 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 Complaint is filed by two Complainants:

- Thales Alenia Space, a major satellite specialist, delivers cost-effective solutions for telecommunications, navigation, Earth observation, environmental management, exploration, science and orbital infrastructures; it is jointly owned by an Italian defense conglomerate named Leonardo and a French defense electronics specialist named Thales Group.

- Thales is a global leader in advanced technologies, connectivity, big data, artificial intelligence, cybersecurity and quantum computing. Thales is the parent company of the Thales Group.

For the purpose of their activities, the Complainants have registered several trademarks.

In particular, Thales Alenia Space has registered the following trademarks (hereafter the THALES ALENIA SPACE Trademarks):

- the Italian trademark THALES ALENIA SPACE No 302017000046467, registered on December 10, 2018, for products and services in classes 7, 9, 12, and 38;
- the Italian semi-figurative trademark THALES ALENIA SPACE No 302017000103037, registered on August 14, 2018, for products and services in classes 7, 9, 12, and 38.

Thales has also registered the following trademarks (hereafter the THALES Trademarks):

- the European Union (“EU”) trademark THALES No 002186088, registered on November 9, 2009, for products and services in classes 9, 13, 16, 35, 38, 41, and 42;
- the EU trademark THALES No 002028140, registered on November 9, 2006, for products and services in classes 9, 38, and 42;
- the French trademark THALES No 3062926, registered on November 7, 2000, for products and services in classes 9, 13, 16, 35, 37, 38, 41, and 42;
- the International trademark THALES No 762214, registered on April 24, 2001, for products and services in classes 9, 13, 38, and 42;
- the American trademark THALES No 3 087 138, registered on May 2, 2006, for products and services in classes 9, 13, 38, 42, and 45; and
-the American trademark THALES No 3 017 144, registered on November 22, 2005, for products and services in classes 9, 35, 38, and 42.

Thales has also registered several domain names containing the trademarks THALES and THALES ALENIA SPACE (including <thalesaleniaspace.com>, <thalesgroup.com>), and Thales Alenia Space owns the company name “Thales Alenia Space”.

The disputed domain names <thalesalenaespace.com> and <thalesaleniaespace.com> were both registered by the Respondents on July 31, 2021.

Both disputed domain names direct to parking pages and the Complainants have been informed by many companies that emails created from the disputed domain names were sent to them in view of opening trade accounts and obtaining payment facilities for ordering their products as part of a phishing scheme.

5. Parties’ Contentions

A. Complainant

First, the Complainants find that the Complaint against the two Respondents should be consolidated since the two disputed domain names owned by two different Respondents are deeply linked and are necessarily subject to common control. Then the Complainants argue that the two disputed domain names are under common control, even though the WhoIs information indicates three different registrants.

Second, the Complainants claims that the disputed domain name <thalesalenaespace.com> is confusingly similar to the THALES ALENIA SPACE Trademarks, given that it reproduces the two elements ‘thales’ and ‘space’ in their entirety and the deletion of the vowel “i” in ‘alenia’ and the addition of the vowel “e” for ‘espace’ (which means “space” in French) are not capable of dispelling the confusing similarity with the Complainants’ rights.

The Complainants also claim that the disputed domain name <thalesaleniaespace.com> is confusingly similar to the THALES ALENIA SPACE trademarks, given that it reproduces the three elements “thales”, “alenia”, and “space” in their entirety with the addition of the vowel “e” for “espace” (which is the French word for “space”), which is not capable of dispelling the confusing similarity with the Complainants’ rights.

Third, the Complainants claim that the Respondents have no rights or legitimate interests in respect of the disputed domain names as the Complainants has never given any authorization to make any use or apply for registration of the disputed domain names and have no affiliation at all with the Respondents. Moreover, the Complainants highlight that the Respondents cannot claim prior rights or legitimate interests in the disputed domain name as the THALES ALENIA SPACE trademarks and THALES trademarks predates the registration of the disputed domain names.

Furthermore, the disputed domain names direct to parking pages and the Complainants have been informed by many companies that have been contacted by emails from the disputed domain names in view of opening trade accounts and obtaining payment facilities for ordering their products, with a phishing purpose.

Lastly, the Complainants find that the disputed domain names were registered and are used in bad faith, considering that (i) they reproduce the THALES ALENIA SPACE Trademarks and THALES Trademarks, “Thales Alenia Space” company name which the Respondents could not ignore, and the Complainant Thales prior domain names; (ii) the disputed domain names were registered in order to activate MX email servers to send fraudulent emails to third parties in view of opening trade accounts and obtaining payment facilities for ordering products thus engaging in a phishing scheme; (iii) the Complainants have, in the recent past, filed complaints before WIPO for the same type of phishing scheme using the same technique; (iv) when typing the disputed domain names in a search engine the results links to the Complainants legitimate websites; (v) the disputed domain names use well-known typosquatting and cybersquatting practices aimed at diverting the Complainants’ clients due to typing errors; and, (vi) the disputed domain names have been used to create IP addresses for phishing purposes in order to impersonate the Complainants and obtain sensitive information from the Complainants’ clients or suppliers.

B. Respondents

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

6. Discussion and Findings

6.1. Procedural Matter: Consolidation of the Complaint

According to the Rules, paragraph 10(e), the Panel shall decide a request to consolidate multiple domain name disputes in accordance with the Policy and the Rules. The Panel notes that the Complainants are part of the same corporate group, both having rights to trademarks at issue and subject to common grievance against the Respondents, and as such consolidation of the multiple complainants appropriate. 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. According to prior UDRP panel decisions, criteria for consolidation scenarios include: (i) the registrants’ contact information, (ii) relevant IP addresses, name servers, or webhost(s), (iii) the content or layout of websites corresponding to the disputed domain names, (iv) the nature of the marks at issue (e.g., where a registrant targets a specific sector), (v) any naming patterns in the disputed domain names, (vi) any (prior) pattern of similar respondent behavior (see section 4.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

Regarding the disputed domain names, the Panel finds that:

- the two disputed domain names are fairly identical with only a one-letter difference and are strictly similar to the Complainants THALES ALENIA SPACE Trademarks;
- the two disputed domain names were registered on the same day;
- the two disputed domain names link to parking pages with the same layout;
- the Complainants have evidenced that the two disputed domain names were registered in order to activate MX email servers to send fraudulent emails to third parties;
- the Complainants have evidenced that the two disputed domain names use the same phishing pattern as they use the same alias ‘Sir Philippe Blettrie’ purporting to be the Complainant THALES ALENIA SPACE’s Purchase Manager to send emails asking for proposals on the provision of products.

Finally, the Panel finds that the Complainants have established prima facie that the disputed domain names are subject to common control and that the Respondents had the opportunity but did not respond to the Complaint.

The Panel therefore decides to consolidate the present domain name disputes and to refer collectively to the Respondents as the Respondent hereafter.

6.2. Substantive Matters

Paragraph 4(a) of the Policy provides that the Complainant shall prove the following three elements:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has right;

(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

According to the Policy, paragraph 4(a)(i), the Complainants shall prove that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainants have rights.

First of all, the Panel finds that the Complainants have provided evidence that they have rights in the THALES ALENIA SPACE Trademarks and the THALES Trademarks.

Then, the Panel wishes to remind that the first element of the UDRP serves essentially as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainants’ trademark and the disputed domain name.

This test 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 domain name. In cases where a domain name consists of a common, obvious, or intentional misspelling of a trademark, the domain name will be considered by panels to be confusingly similar to the relevant mark for purposes of the UDRP (see section 1.9 of the WIPO Overview 3.0).

Regarding the disputed domain name <thalesaleniaespace.com>, the Panel finds that it is composed of:

- the THALES ALENIA SPACE Trademarks
- the addition of the letter “e” in front of the word “space”, the ensemble constituting the word “espace” which means space in French, and
- the generic Top-Level Domain (“gTLD”) “.com”, it being specified that the gTLD in a domain name is viewed as a standard registration requirement and as such is disregarded for the purpose of determining whether a domain name is identical or confusingly similar to a trademark.

Regarding the disputed domain name <thalesalenaespace.com>, the Panel finds that it is composed of:

- the misspelled THALES ALENIA SPACE with the deletion of the letter “i” in the element “ALENIA”;
- the addition of the letter “e” in front of the word “space”, the ensemble constituting the word “espace” which means space in French, and
- the gTLD “.com”, which shall be disregarded for the purpose of determining whether a domain name is identical or confusingly similar to a trademark.

The two disputed domain names consist of a misspelling of the THALES ALENIA SPACE Trademarks. This conduct is commonly referred to as “typosquatting” and creates a virtually identical and/or confusingly similar mark to the Complainants’ trademarks (Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775, and section 1.9 of the WIPO Overview 3.0).

Therefore, the Panel holds that the Complainants have established the first element of paragraph 4(a) of the Policy and that the disputed domain names are confusingly similar to the Complainants trademarks.

B. Rights or Legitimate Interests

According to the Policy, paragraph 4(a)(ii), the Complainants shall demonstrate that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Policy, paragraph 4(c), outlines circumstances that if found by the Panel to be proved shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name.

These circumstances are:

- before any notice of the dispute, the respondent’s 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
- the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
- the respondent is making a legitimate noncommercial 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.

According to prior UDRP panel decisions, it is sufficient that the complainant shows prima facie that the respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production to the respondent (see Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

Indeed, while the overall burden of proof in UDRP proceedings is on the complainant, previous UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out prima facie that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element (see section 2.1 of the WIPO Overview 3.0).

According to the Panel, the Complainants have shown prima facie that the Respondent has no rights or legitimate interests in respect of the disputed domain names.

Indeed, it appears that the Respondent has no rights or affiliation with the Complainants and has not received any authorization, license, or consent, whether express or implied, to use the Complainants’ THALES ALENIA SPACE Trademarks in the disputed domain names or in any other manner.

Moreover, the Panel finds that there is no evidence that the Respondent is commonly known by the disputed domain names or that the Respondent has the intent to use the disputed domain names in connection with a bona fide offering of goods and services. Indeed, the disputed domain names are linked to a parking page with PPC links and were registered in order to activate MX records in order to send fraudulent emails as part of a phishing scheme. Panel have categorically held that the use of a domain name for illegal activity (e.g., impersonatin/passing off, or other types of fraud) can never confer rights or legitimate interests upon a respondent. See section 2.13 of the WIPO Overview 3.0.

Furthermore, the Respondent did not reply to the Complainants’ contentions.

Therefore, according to the Policy, paragraph 4(a)(ii) and 4(c), the Panel considers that the Respondent does not have rights or legitimate interests in the disputed domain names.

C. Registered and Used in Bad Faith

According to the Policy, paragraph 4(a)(iii), the Complainants shall prove that the disputed domain names have been registered and are being used in bad faith.

Thus, paragraph 4(b) provides that any one of the following non-exclusive scenarios constitutes evidence of a respondent’s bad faith:

(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name 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 respondent’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 its 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.

Moreover, the use of a domain name for purposes other than to host a website may constitute bad faith. Such purposes include sending email, phishing, identity theft, or malware distribution. (In some such cases, the respondent may host a copycat version of the complainant’s website.) Many such cases involve the respondent’s use of the domain name to send deceptive emails, e.g., to obtain sensitive or confidential personal information from prospective job applicants, or to solicit payment of fraudulent invoices by the complainant’s actual or prospective customers (see section 3.4 of the WIPO Overview 3.0).

First, the Panel considers that it is established that the THALES ALENIA SPACE Trademarks were registered before the registration of the disputed domain names. Therefore, there is a presumption of bad faith registration of the disputed domain names given the fact that the disputed domain names reproduce the THALES ALENIA SPACE Trademarks with minor typographical errors. In addition, the Panel considers that the Respondent clearly had knowledge of the Complainants’ trademarks at the time of registration of the disputed domain names, as the email addresses generated from the registration of the disputed domain names were used to send fraudulent emails from a person purporting to be the Complainants’ purchase manager and the emails were signed using the THALES ALENIA SPACE Trademarks. As a result, there is no doubt that at the time of registration of the disputed domain names, the Respondent was aware of the Complainants’ trademarks and registered the disputed domain names in bad faith.

Lastly, the Panel finds that the Respondent is obviously using the disputed domain names in bad faith in order to send fraudulent emails to third parties as part of a phishing scheme. Indeed, the disputed domain names were registered in order to create MX records in order to send fraudulent emails. The Complainants have evidenced that several third parties have received fraudulent emails, using the disputed domain names, from a person purporting to be Purchase Manager of the Complainants. This person is not an employee of the Complainants, and the Complainants have demonstrated that these fraudulent emails are part of a phishing scheme.

Therefore, in view of all the circumstances of this case, the Panel holds that the Respondent has registered and are using the disputed domain names in bad faith according to the Policy, paragraph 4(a)(iii) and 4(b).

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 names, <thalesalenaespace.com>, and <thalesaleniaespace.com> be transferred to the Complainant Thales.

Christiane Féral-Schuhl
Sole Panelist
Date: February 23, 2022