WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Charabot SA v. Bill Bollas
Case No. DEU2018-0002
1. The Parties
The Complainant is Charabot SA of Grasse, France, represented by Novagraaf France, France.
The Respondent is Bill Bollas of Esquelbecq, France.
2. The Domain Name, Registry and Registrar
The Registry of the disputed domain name <charabot-sa.eu> is the European Registry for Internet Domains (“EURid” or the “Registry”). The Registrar of the disputed domain name is Ligne Web Services.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 31, 2018. On January 31, 2018, the Center transmitted by email to the Registry a request for registrar verification in connection with the disputed domain name. On February 5, 2018, the Registry 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on February 23, 2018.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the .eu Alternative Dispute Resolution Rules (the “ADR Rules”) and the World Intellectual Property Organization Supplemental Rules for .eu Alternative Dispute Resolution Rules (the “Supplemental Rules”).
In accordance with the ADR Rules, Paragraph B(2), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 27, 2018. In accordance with the ADR Rules, Paragraph B(3), the due date for Response was April 10, 2018.
The Center was unable to reach the Respondent by fax, by email or by postal mail (the mail service provider’s tracking sheet shows that the Respondent refused the delivery on March 2, 2018). Due to the Respondent’s failure to submit any response, the Center notified the Respondent’s default on April 11, 2018.
The Center appointed Isabelle Leroux as the sole panelist in this matter on April 19, 2018. 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 ADR Rules, Paragraph B(5).
4. Factual Background
The Complainant is a French corporation, founded in 1956. It is a supplier of fragrances and raw materials for the perfume industry in France and a subsidiary of Robertet SA, which is listed on Euronext Paris.
In addition to owning rights on its company name, the Complainant owns the following trademarks:
- French Trademarks CHARABOT No. 1371747, registered on September 23, 1986 duly renewed, covering products in class 3;
- International Trademark CHARABOT No. 1221794 registered on July 18, 2014 covering products in class 3 and designating notably the European Union (together, “the Marks”).
The Complainant has also registered a number of domain names featuring the Marks including <charabot.fr> and <charabot.de>.
The disputed domain name <charabot-sa.eu> was anonymously registered on January 24, 2018 and is inactive. The Complainant shows that the disputed domain name was used to create an email address, “[…]@charabot-sa.eu”, inspired from the Complainant’s President name. Several equipment requests have been sent from this email address to IT companies.
5. Parties’ Contentions
(i) The Complainant submits that the disputed domain name <charabot-sa.eu> reproduces entirely and identically the Marks. It argues that the mere addition of the element “SA”, which refers to the legal form of the company, is not enough to avoid a likelihood of confusion.
(ii) The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. According to the Complainant, the Respondent does not hold any CHARABOT trademark and its name does not correspond with the Respondent’s name.
(iii) The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith as it is using the disputed domain name in email addresses with the fraudulent intent to lure Internet users into the mistaken belief that the Respondent is, or is associated with, the Complainant, in effect faking the identity of the Complainant’s President.
(iv) The Complainant requests that the disputed domain name be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order for the Complaint to succeed, the Complainants must show, in accordance with Article 21(1) of Commission Regulation (EC) No. 874/2004 and Paragraph B11(d)(1) of the ADR Rules, that:
(a) the disputed domain name is identical with or confusingly similar to a name in respect of which a right is recognized or established by the national law of a Member State and/or Community law;
and either that
(b) the domain name has been registered by the Respondent without rights or legitimate interest in the name; or
(c) the domain name has been registered or is being used in bad faith.
A. Identical or Confusingly Similar to a name in respect of which a right or rights are recognized or established by national law of a Member State and/or Community law
The Complainant has provided sufficient evidence that it owns the CHARABOT trademark registrations No. 1371747 and No. 1221794.
In comparing the disputed domain name <charabot-sa.eu> with the Marks, the Panel finds that the Marks are replicated in their entirety in the disputed domain name, the latter simply differing by the addition of an hyphen and the letters “SA”.
The Panel does not consider that the mere addition of an hyphen and the letters “SA” is sufficient to remove the likelihood of confusion with the Complainant’s Marks (Prada S.A. v. Chen Mingjie, WIPO Case No. D2015-1466; Carrefour v. Milen Radumilo / United Privacy Corp, WIPO Case No. D2015-1851; Sopra Group v. Boris Gazoil, WIPO Case No. D2014-0900)1 . All the more as the acronym “SA” usually refers to the French “Société Anonyme”, which is the legal form of the Complainant’s company.
Lastly, previous UDRP panels have regularly ruled that the generic Top-Level Domain (“gTLD”), such as “.eu”, is not to be taken into consideration when examining the identity or similarity between the Complainant’s trademarks and the disputed domain names (CBS Broadcasting Inc. c. Worldwide Webs, Inc., WIPO Case No. D2000-0834).
Therefore the Panel finds that the disputed domain name is confusingly similar to the Marks and thus, the Complainant has satisfied the requirement of paragraph B(11)(d)(1) of the ADR Rules.
B. Rights or Legitimate Interests
The Panel notes that Article 22 (10) of Commission Regulation (EC) No. 874/2004 provides that “[f]ailure of any of the parties involved in an ADR procedure to respond within the given deadlines or appear to a panel hearing may be considered as grounds to accept the claims of the counterparty. Furthermore, numerous UDRP panels have found that, even though the Complainant bears the general burden of proof under paragraph 4(a)(ii) of the UDRP, the burden shifts to the Respondent once the Complainant makes a prima facie showing that the Respondent lacks rights or legitimate interests (Croatia Airlines d.d. c. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
Hence after the Complainant has made a prima facie showing that Respondent has no rights or legitimate interests in the mark, it will be deemed to have satisfied Paragraph 4(a)ii of the UDRP when the Respondent fails to submit a response.
In this case, the Complainant brings forward the following elements:
- It has no relationship whatsoever with the Respondent and the disputed domain name was registered without its consent;
- There is no indication that the Respondent is known under the disputed domain name;
- The website associated with the disputed domain name is inactive.
In the light of this, the Panel finds that the Complainant has made a prima facie showing that the Respondent does not have rights or legitimate interests in the disputed domain name, which was not challenged by the Respondent who did not respond to the Complainants’ arguments.
Given these circumstances the Panel finds that the second element of Paragraph B(11)(d)(1) of the ADR Rules has been satisfied.
C. Registered or Used in Bad Faith
The Complainant has argued and provided evidence that the disputed domain name has been fraudulently used to create an email address, “[…]@charabot-sa.eu” featuring the name of the Complainant’s President. Several emails were sent from this email address to order IT equipment through a scam consisting in using the actual postal address as well as the incorporation number of the Complainant and in passing off in email communications as the President of the Complainant. The Panel finds this is clear evidence of registration and use in bad faith in line with Paragraph B(11)(f)(4) of the ADR Rules.
The Panel also notes that previous UDRP panels have regularly ruled that bad faith may be established when a phishing scheme was set up with the help of a domain name containing the trademark of a company, since the recipients are being misled and deceived into believing that they are dealing with the owner of the trademark (The Royal Bank of Scotland Group plc v. Secret Registration Customer ID 232883 / Lauren Terrado, WIPO Case No. D2012-2093 and OLX, Inc. v. J D Mason Singh, WIPO Case No. D2014-1037).
Furthermore, the disputed domain name <charabot-sa.eu> used to redirect to the parking page of the Registrar. It has been recognized that inaction (e.g., passive holding) in relation to a domain name registration can, in certain circumstances, constitute a domain name being used in bad faith (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
In the present case, the Panel finds that:
- Respondent may have provided, or failed to correct, false contact details, and refused the delivery of the Center’s mail;
- Respondent has provided no evidence whatsoever of any actual or contemplated good faith use of the disputed domain name, moreover, it is demonstrated that the Respondent has used in bad faith the disputed domain name;
- Respondent has taken active steps to conceal its true identity, in particular by operating under a name that is not a registered business name.
Taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off on one hand and/or on another hand infringement of the Complainant’s rights under trademark law.
Consequently, the Panel finds that the disputed domain name <charabot-sa.eu> has been registered and is being used in bad faith, so that the third requirement under paragraph B(11)(d)(1) of the ADR Rules is met.
For the foregoing reasons, in accordance with Paragraph B(11) of the ADR Rules, the Panel orders that the disputed domain name <charabot-sa.eu> be transferred to the Complainant.2
Date: May 10, 2018
1 Given the similarities between the ADR Rules and the Uniform Domain Name Dispute Resolution Policy (“UDRP”) the Panel will refer to UDRP jurisprudence, where instructive.
2 The remedy sought by the Complainant is transfer, as the Complainant is located in France, within the European Union, it satisfies the general eligibility criteria for registration of the disputed domain name set out in Paragraph 4(2)(b) of Regulation (EC) No. 733/2002.