WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Agirc, Arrco v. Tiltshift

Case No. DME2017-0006

1. The Parties

The Complainants are Agirc and Arrco, of Paris, France, represented by SCAN Avocats, France.

The Respondent is Tiltshift of New York, New York, United States of America, self-represented.

2. The Domain Name and Registrar

The disputed domain name <arcco.me> is registered with Network Solutions, LLC (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 14, 2017. On September 15, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 15, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to an invitation to amend the Complaint by the Center, the Complainants filed an amended Complaint on September 28, 2017.

The Center verified that 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 October 5, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 25, 2017. An email was received from the Respondent on October 16, 2017. No further communication was received from the Respondent during the proceedings. The Center accordingly proceeded with the panel appointment process on October 30, 2017.

The Center appointed Luca Barbero as the sole panelist in this matter on November 15, 2017. 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 Complainants are the French federations Agirc and Arrco, providing compulsory complementary pension schemes for private sector employees in France; precisely, Agirc covers managerial and executive staff while Arrco covers non-executives.

The Complainants are the owners of the French trademark registration Nos. 4213686 for RETRAITE COMPLEMENTAIRE AGIRC ET ARRCO (figurative mark), filed on September 29, 2015 in classes 16, 35, 36, 38, 41, 42, 43, 44 and 45; 3648315 for RETRAITE COMPLEMENTAIRE AGIRC ET ARRCO (figurative mark), filed on May 4th 2009 in classes 35, 36, 38 and 43; and 3648314 for A ARRCO RETRAITE COMPLEMENTAIRE DES SALARIES (figurative mark), filed on May 4, 2009 in classes 35, 36, 38 and 43.

The Complainants promote their activities at the website "www.agirc-arrco.fr", where they provide information relating to their complementary pension schemes.

The Complainants are also the owner of numerous domain names encompassing the term "arrco" including <agirc-arrco.fr> registered on July 25, 2002; <arrco.fr>, registered on June 2, 1997; <agircarrco-actionsociale.fr>, registered on June 8, 2010; and <agircarrco-actionsociale.eu>, registered on June 8, 2010.

The disputed domain name <arcco.me> was registered on August 8, 2012 and is pointed to a parking page displaying sponsored links written in French relating to complementary pension schemes services, including links referring to the Complainants (Annex H of the Complaint).

5. Parties' Contentions

A. Complainant

The Complainants state that, since more than 30 million people rely on their complementary retirement regime (of which 18.2 million are active and 12,4 million retired), the Complainants' services are well-known in France and at the very least in the European Union.

The Complainants contend that the disputed domain name is confusingly similar to their ARRCO trademarks, domain names and company name since it incorporates the term "arco" in its entirety, merely replacing the letter "r" with the letter "c", which is highly likely to cause confusion among Internet users as to whether the Complainants are affiliated with the disputed domain name, because substituting one letter is not sufficient to change the overall impression and similarity between the disputed domain name and the Complainants' trademarks.

The Complainants claim that the Respondent has no rights nor legitimate interests in respect of the disputed domain name because i) to the Complainants' best knowledge, the Respondent is not currently and has never been known under the name "Arcco"; ii) the Complainants conducted a trademark search before the French and European Union Intellectual Property Offices over "arco" and noticed that the Respondent never filed any trademark identical or remotely similar to the disputed domain name; iii) the Respondent is not in any way related to the Complainants' activities and does not carry out any activity for or has any business with them; iv) the Complainants have never given any authorization or permission to the Respondent to register or to use the dispute domain name; and v) the Respondent has no rights or legitimate interests arising from a bona fide offering of goods and services or from a legitimate noncommercial or fair use of the disputed domain name as it redirects the visitor to a parking page containing pay-per-click links written in French and related to the Complainants' field of activity.

The Complainants assert that, in light of the strong and widespread reputation they have in France regarding their activities, it is highly likely that the Respondent knew of the existence of the Complainants' prior intellectual property rights at the time the disputed domain name was registered for at least the six following reasons: i) the Federation Arrco (Association for Employees' Supplementary pension schemes) was created in 1961, many years before the domain name at issue was registered; ii) the domain name <arrco.fr> was registered on February 6, 1996, sixteen years before the disputed domain name was registered; iii) the trademark ARRCO was registered on May 4, 2009, three years before the disputed domain name was registered; iv) the disputed domain name is confusingly similar to the Complainants' trademark; v) "Arrco" is not an ordinary English, Montenegrin or French word but has been used by the Complainants ever since its creation as an acronym for "Association pour le Régime de Retraite Complémentaire des salaries". Thus, numerous Google search engines would display "Agirc Arrco" as a result of a search conducted on the keywords "Arrco" and "Arcco"; and vi) the disputed domain name resolves to a parking page displaying sponsored links related to the Complainants' main activity.

In view of the above, the Complainants conclude that it is highly likely that the Respondent would not have chosen to register the disputed domain name as a domain name amounting to a slight misspelling of the trademark ARRCO unless it had an intention to create a likelihood of confusion between said domain name and the Complainants' trademark. Thus, the Complainants submit that, by taking advantage of a common mistake made by Internet users, the Respondent has engaged into an act of typosquatting.

The Complainants state that the Respondent is using the disputed domain name in bad faith as it redirects visitors to a parking page displaying sponsored links written in French language relating to the Complainants' main activity, i.e. complementary pensions schemes. The Complainants state that use of the French language clearly indicates that the Respondent is targeting the Complainants' audience and misleading them into thinking that the Complainants are connected with the disputed domain name.

Thus, the Complainants assert that the Respondent is taking advantage of the Complainants' trademarks to attract traffic to its website, namely to attract the Complainant's clients, in order to obtain revenue from clicks made by Internet users who are looking for the Complainants' services.

The Complainants also point out that the Respondent's website does not link to any of the Complainants' websites but, indeed, it directs the public, including potential customers, to websites of the Complainants' competitors' that are apparently used for phishing personal data or distribution of malware.

Therefore, the Complainants state that the Respondent is creating confusion amongst Internet users, who could perceivably believe that those websites are endorsed by the Complainants, and that such use is damaging the image of both the ARRCO prior intellectual property rights and the Complainants.

B. Respondent

The Respondent states that it registered the disputed domain name few years ago in anticipation of naming an app that it is working on, "Arco". The Respondent also claims that it opted for the disputed domain name, since the domain name <arco.me> was already taken.

The Respondent contends that both "Arco" and "Arcco" have nothing to do with a retirement solution or supplementary pension services that the Complainants provide in France, and cites the definition of the Italian word "arco" taken from the Wikipedia website, reading: "A note in string instrument musical notation indicating that the bow is to be used in the usual way, usually following a passage that is played pizzicato".

6. Discussion and Findings

According to paragraph 15(a) of the Rules: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable". Paragraph 4(a) of the Policy directs that the Complainants must prove each of the following:

(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainants have rights;

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainants have provided evidence of ownership of French trademark registrations consisting of the term ARRCO with other word and device elements. Amongst others, the Complainants have proved ownership of the French figurative trademark A ARRCO RETRAITE COMPLEMENTAIRE DES SALARIES, in which the denominative element "Arrco" is clearly the dominant portion, as highlighted by the reproduction of the mark herein:

The disputed domain name is constituted of the term "arcco" with the addition of the country code Top-Level Domain ".me", which is generally disregarded, being a mere technical requirement of registration and insufficient to exclude the confusing similarity.

Comparing the disputed domain name with the above-cited trademark, the Panel notes that the dominant portion of the latter, "arrco", is visually similar to the word "arcco" encompassed in the disputed domain name, as the two terms differ only for the third letter, namely "r" in the mark and "c" in the disputed domain name.

The Panel finds that the replacement of one letter is not sufficient to prevent a finding of confusing similarity between the Complainants' trademark and the disputed domain name.

Therefore, the Panel finds that the Complainants have proven that the disputed domain name is confusingly similar to a trademark in which they have established rights according to paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainants are required to make a prima facie case that the Respondent lacks rights or legitimate interests and, once such prima facie case is made, the burden of production shifts to the Respondent to submit appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainants are deemed to have satisfied paragraph 4(a)(ii) of the Policy. See Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110; Banco Itau S.A. v. Laercio Teixeira, WIPO Case No. D2007-0912; Wal-Mart Stores, Inc. v. WalMart Careers, Inc., WIPO Case No. D2012-0285.

The Panel finds that the Complainants have made a prima facie case and that the Respondent has failed to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy for the following reasons.

According to the records, there is no evidence of an authorization granted by the Complainants to the Respondent to use the trademark ARRCO and/or to register and use the disputed domain name.

Moreover, there is no element from which the Panel could infer a Respondent's right over the disputed domain name, or that the Respondent might be commonly known by the disputed domain name.

The Respondent claims that it did not intend to target the Complainants as it registered the disputed domain name because it is working on an app named "Arco" and the domain name <arco.me> had already been taken. However, beyond mere conclusory and self-serving allegations, it has not provided any evidence whatsoever of such ongoing project. Indeed, the Respondent says in conclusion "If you would have just sent me a nice email I would have given this domain name with a ʻNo Worriesʼ."

Moreover, the records show that the disputed domain name has been pointed to a web page displaying sponsored links, in French language, mainly related to the Complainants and their services.

Therefore, the Panel concludes that the Respondent has not used the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use.

In view of the above, the Panel finds that the Complainants have proven the requirement prescribed by paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel notes that the disputed domain name was registered several years after the Complainants were established and their trademarks were first used in connection with the Complainants' complementary pension services.

As highlighted above, the Respondent has failed to demonstrate that it has rights or legitimate interests in the disputed domain name. Moreover, a search on Google for the term "arrco" returns results related only to the Complainants in the first page and the Complainants and the related services have been clearly referenced on the website to which the disputed domain name resolves, which, furthermore, is written in French (Annex F of the Complaint).

Hence, the Panel finds that the Respondent was more likely than not aware of the Complainants and their trademarks at the time of the registration of the disputed domain name, with which it is confusingly similar.

In addition, in view of the current use of the disputed domain name made by the Respondent in connection with a pay-per-click website displaying links explicitly referring to the Complainants, the Panel finds that the Respondent intentionally attempted to attract users to its website for commercial gain, by causing a likelihood of confusion with the Complainants' marks as to the source, sponsorship, affiliation or endorsement of the website and/or the websites linked thereto, according to paragraph 4(b)(iv).

In view of the above, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith.

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 <arcco.me> be transferred to the Complainants.

Luca Barbero
Sole Panelist
Date: November 29, 2017