WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Odaseva Technologies SAS LLC v. Taku Taneka, The Feature Enterprises Pty Ltd

Case No. DAU2021-0032

1. The Parties

The Complainant is Odaseva Technologies SAS LLC, France, represented by Polsinelli PC, United States of America.

The Respondent is Taku Taneka, The Feature Enterprises Pty Ltd, Australia.

2. The Domain Name and Registrar

The disputed domain name <odaseva.com.au> is registered with Domain Directors Pty Ltd (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 13, 2021. On the same day, the Center transmitted by email to Domain Directors Pty Ltd. a request for registrar verification in connection with the disputed domain name. On August 27, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name that differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 27, 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 31, 2021.

The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 15, 2021. In accordance with the Rules, paragraph 5(a), the due date for Response was October 5, 2021. On September 15, 2021, the Respondent sent an email communication to the Complainant, copied to the Center, advising that it would vigorously defend these allegations. The Response was filed with the Center on October 4, 2021.

The Center appointed Matthew Kennedy as the sole panelist in this matter on December 8, 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 French company that provides a salesforce data management toolset known as “Odaseva”. The toolset supports over 60 million Salesforce users in many large enterprises in different countries. The Complainant holds trademark registrations for ODASEVA in multiple jurisdictions, including the following:

- French trademark registration number 3916347, registered on April 26, 2012;

- United States trademark registration number 5543930, registered on August 21, 2018 with a claim of first use in commerce on November 18, 2013; and

- International trademark registration number 1584322, registered on December 29, 2020, designating multiple jurisdictions including Australia, where protection was extended under trademark number 2168101 registered on August 6, 2021.

The above trademark registrations specify services in classes 9, 35, 38, 41, and 42 and they remain current. The Complainant has also registered the domain name <odaseva.com> that it uses in connection with its website where it provides information about itself and its products, including a case study on its Salesforce support for Transport for NSW, in New South Wales.

The Respondent is an individual and a company in Australia. The Respondent’s contact email address uses the domain name <thefeaturemagazine.com.au>, which redirects to the website of a real estate consultancy.

The disputed domain name was registered on November 10, 2020. It resolves to a parking page hosted by a company related to the Registrar.

5. Parties’ Contentions

A. Complainant

The disputed domain name is confusingly similar to the Complainant’s ODASEVA mark.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not affiliated with the Complainant, licensed to use the Complainant’s ODASEVA mark, or licensed to register or use domain names, or associated email accounts, incorporating the ODASEVA mark. The Respondent offers neither goods nor services under the disputed domain name, which does not resolve to an active website or other online presence. Such passive holding does not constitute a legitimate or fair use of the disputed domain name. The Respondent has not been commonly known by the disputed domain name.

The disputed domain name was registered and is being used in bad faith. It is clear from the relevant circumstances that the Respondent was well aware of the Complainant and had the Complainant’s ODASEVA mark firmly in mind when registering the disputed domain name. ODASEVA is a coined and distinctive word that is well known throughout the world. The disputed domain name incorporates the entirety of the Complainant’s trademark. There is no doubt that many Internet users attempting to visit the Complainant’s website have ended up on the webpage set up by the Respondent. Not only does the disputed domain name incorporate the ODASEVA mark, but it also mimics the domain name of the Complainant’s official website.

B. Respondent

The word “odaseva” means “reflections” when translated from Bosnian to English. Australia has one of the largest global expat communities of Bosnians. According to the Australian Bureau of Statistics, there are over 40,000 Bosnian-born Australian residents. In light of this information, the disputed domain name was bought to create a digital community for Bosnians in Australia. The purpose is to create a platform for Bosnians in Australia to reminisce about their motherland, share information about where they can get products (e.g., imported foods) locally and to stay connected to their homeland. Due to COVID-19, these plans have been delayed, hence why the domain has yet to be built out and currently sits on a holding page.

The date of registration of the disputed domain name precedes the date of registration of the ODASEVA trademark in Australia as the Complainant only filed with IP Australia on December 29, 2020 and only obtained registration on April 29, 2021. The Respondent has never communicated with the Complainant, nor its legal representatives, regarding the disputed domain name. This highlights the Respondent’s plans for the disputed domain name as explained above, thus dismissing any bad faith claims.

6. Discussion and Findings

Paragraph 4(a) of the auDRP provides that a complainant must prove each of the following elements:

(i) the disputed domain name is identical or confusingly similar to a name, 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 or subsequently used in bad faith.

A. Identical or Confusingly Similar

Based on the evidence presented, the Panel finds that the Complainant has rights in the ODASEVA mark.

The disputed domain name wholly incorporates the ODASEVA mark. Its only additional element is the open suffix “.com.au”. This element may be disregarded in an assessment of confusing similarity between the disputed domain name and the trademark for the purposes of the auDRP. See BT Financial Group Pty Limited v. Basketball Times Pty Ltd, WIPO Case No. DAU2004-0001.

Therefore, the Panel finds that the disputed domain name is identical to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the auDRP.

B. Rights or Legitimate Interests

Paragraph 4(c) of the auDRP sets out circumstances which, without limitation, if found by the Panel to be proven based on its evaluation of all evidence presented, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the auDRP:

(i) before any notice to [the respondent] of the subject matter of the dispute, [the respondent’s] bona fide use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with an offering of goods or services (not being the offering of domain names that [the respondent has] acquired for the purpose of selling, renting or otherwise transferring); or

(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or

(iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

As regards the first circumstance set out above, the disputed domain name resolves to a parking page that advertises the host company’s website hosting packages. The disputed domain name wholly incorporates only the Complainant’s ODASEVA trademark, adding only a “.com.au” suffix, which prima facie carries a high risk of implied affiliation with the Complainant. However, the Complainant submits that the Respondent is not affiliated with the Complainant or licensed to register or use domain names incorporating the ODASEVA mark. Accordingly, the Complainant has made a prima facie case that the Respondent is not making a bona fide use of the disputed domain name in connection with an offering of goods or services within the terms of paragraph 4(c)(i) of the auDRP.

As regards the second circumstance set out above, the Respondent individual is named “Taku Taneka” and the Respondent company is named “The Feature Enterprises Pty Ltd”. Nothing indicates that the Respondent has been commonly known by the disputed domain name within the terms of paragraph 4(c)(ii) of the auDRP.

As regards the third circumstance set out above, the disputed domain name resolves to a parking page where commercial services are advertised. This does not appear to be a use in connection with a legitimate noncommercial or fair use of the disputed domain name within the terms of paragraph 4(c)(iii) of the auDRP.

Based on the above, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

Turning to the Respondent’s arguments, it claims that the disputed domain name is intended for use with a digital platform for the Bosnian community in Australia. It alleges that the word “odaseva” in the disputed domain name means “reflections” when translated from Bosnian to English and it offers a single data point regarding the number of Bosnian-born Australian residents. The Panel notes that this information can be obtained by simply (i) typing “odaseva” into Google Translate and selecting the “detect language” function; and then (ii) checking the Wikipedia entry for “Bosnian Australians”. Nothing in the Response lends additional credibility to the Respondent’s proposed use for the disputed domain name. The Response does not cite any source for the translation, such as a dictionary.

In any case, the Response does not use the disputed domain name in connection with that alleged meaning and it does not provide any evidence of any preparations to do so, despite having registered the disputed domain name a year ago.

It attributes the delay to the pandemic, without indicating how that has disrupted its plans so comprehensively that it cannot demonstrate any preparations at all for the claimed digital community platform.

Accordingly, the Panel finds that the Respondent has not rebutted the Complainant’s prima facie case.

Therefore, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the auDRP.

C. Registered or Subsequently Used in Bad Faith

Paragraph 4(b) of the auDRP provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith, although it is not an exhaustive list of such circumstances. The fourth circumstance is as follows:

(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with the complainant’s name or mark as to the source, sponsorship, affiliation, or endorsement of that website or location or of a product or service on that website or location.

With respect to registration, the disputed domain name was registered on November 10, 2020, years after the registrations of the ODASEVA trademark in France and the United States and the establishment of the Complainant’s global website associated with the domain name <odaseva.com>. Although the disputed domain name was registered before the ODASEVA trademark was protected in Australia, where the Respondent is established, the ODASEVA mark had already acquired a considerable reputation online through promotion and use in connection with the Complainant’s website for a Salesforce data management toolset, which supports 60 million Salesforce users in many large enterprises in different countries. A case study on the Complainant’s website shows that it has a major client in Australia (Transport for NSW), at least as of 2021 and, even if the Complainant had not entered the Australian market by 2020, it was clearly possible that the Respondent knew of the mark at that time through the Complainant’s online presence. The ODASEVA mark appears to be a coined word. Even though at least one machine translation attributes a meaning to “odaseva” in the Bosnian language, the Respondent’s claim to have registered the disputed domain name based on that meaning lacks credibility, for the reasons given in Section 6.B. above. Accordingly, the Panel finds that, on balance, the more plausible explanation for the registration of the disputed domain name is that the Respondent had the Complainant’s trademark in mind.

With respect to use, the disputed domain name resolves to a parking page. Internet users seeking an Australian website for the Complainant may be diverted to that parking page. The parking page operates for the commercial gain of the hosting company because it displays details of various website hosting packages offered by that company. In view of these circumstances, the Panel finds that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the parking page associated with the disputed domain name, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of that parking page or of a service on that parking page, within the terms of paragraph 4(b)(iv) of the auDRP.

The Respondent submits that it has never communicated with the Complainant, nor its legal representatives, regarding the disputed domain name. However, this does not alter the Panel’s conclusions due to the circumstances of the registration and use of the disputed domain name, as explained above.

Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the auDRP .

D. Reverse Domain Name Hijacking

The Respondent submits that the Complaint is an attempt to acquire the disputed domain name via reverse domain name hijacking.

The Panel does not find that the Complaint constitutes an attempt at reverse domain name hijacking; on the contrary, the Panel has upheld the Complaint.

7. Decision

For all 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 <odaseva.com.au> be transferred to the Complainant.

Matthew Kennedy
Sole Panelist
Date: December 22, 2021