WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

État Français représenté par le Ministre de la Transition Écologique et Solidaire, Direction générale de l’aviation civile (DGAC) v. David Chan

Case No. D2019-0752

1. The Parties

The Complainant is État Français représenté par le Ministre de la Transition Écologique et Solidaire, Direction générale de l’aviation civile (DGAC) of Paris, France, represented by Alain Bensoussan SELAS, France.

The Respondent is David Chan of Almaty, Kazakhstan.

2. The Domain Name and Registrar

The disputed domain name <exploratm.com> is registered with TurnCommerce, Inc. DBA NameBright.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 3, 2019. On April 5, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 5, 2019, 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 and contact information for the disputed domain name.

The Center verified that the 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 April 12, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 2, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 3, 2019.

The Center appointed Cherise Valles as the sole panelist in this matter on May 10, 2019. 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’s “EXPLOR’ATM” service is a European-wide platform offering interoperable services and visual applications in the aeronautical field.

The Complainant owns a number of trademarks in jurisdictions around the world for the term EXPLOR’ATM, including French trademark No. 4428572 for a logo consisting of the word EXPLOR’ATM and several graphic elements, filed on February 14, 2018, in classes 9, 16, 38, 39, and 42, published on March 9, 2018 and registered on June 29, 2018.

The disputed domain name <exploratm.com> was registered on March 15, 2018, and currently resolves to a web page informing Internet users of its suspension.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that each of the elements enumerated in paragraph 4(a) of the Policy and the corresponding provisions in the Rules have been satisfied. In particular, the Complainant asserts that:

The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.

- The disputed domain name is wholly identical to the Complainant’s registered trademark, EXPLOR’ATM, in light of the fact that it wholly incorporates the Complainant’s mark.

The Respondent lacks rights or legitimate interests in the disputed domain name.

- The Complainant states that the Respondent should be considered as having no rights or legitimate interests in the disputed domain name. The Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name that includes its trademarks.

The disputed domain name has been registered and is being used in bad faith.

- The Complainant asserts that the disputed domain name was registered only a few days after the publication of the Complainant’s trademark application. The Complainant asserts that the non-use of the disputed domain name can support a finding of bad faith.

The Complainant requests the Panel to issue a decision finding that the disputed domain name be transferred to the Complainant, in accordance with paragraph 4(i) of the Policy.

B. Respondent

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

6. Discussion and Findings

The Policy provides specific remedies to trademark owners against registrants of domain names where the owner of the mark (a complainant) establishes each of the following elements:

(i) the domain name is identical or confusingly similar to a trademark in which the complainant has rights;

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

(iii) the domain name was registered and is being used in bad faith.

The Complainant has the burden of proof in establishing each of these elements.

The Respondent has failed to file a Response in this proceeding. The Panel may draw appropriate inferences from the available evidence submitted by the Complainant.

A. Identical or Confusingly Similar

To prove this element, the Complainant must have trademark rights and the disputed domain name must be identical or confusingly similar to the Complainant’s trademark.

The disputed domain name differs only from the verbal element of the Complainant’s EXPLOR’ATM trademark in its use of a stylised apostrophe and the addition of the Top-Level Domain (“TLD”) “.com”. Previous UDRP panels have held that where certain punctuation had been added to a protected trademark in a disputed domain name, the disputed domain name would nevertheless be considered to consist of the same verbal elements as the trademark. See, EFG Bank European Financial Groupe SA v. Jacob Foundation, WIPO Case No. D2000-036. Moreover, the Complainant’s EXPLOR’ATM trademark is pronounced in the exact same way as the disputed domain name <exploratm.com>. Previous panels have established that phonetic comparison can be used to ascertain similarity. See Government Employees Insurance Company v. Domain Administrator, Fundacion Privacy Services Ltd, WIPO Case No. D2018-2312; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.

Previous panels have held that the TLD “.com” is not to be taken into account when assessing whether a domain name is identical or confusingly similar to a trademark. See, e.g., Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D.2000-0429. The TLD “.com” cannot be used as an element of distinction between the disputed domain name and the registered trademark.

Although the Complainant’s trademark contains figurative elements that have not been reproduced, including a stylised apostrophe, a drawing of an airplane, colourful squares, and a globe, these are graphic elements inserted in the logotype which cannot be reproduced in a domain name. Previous panel decisions have held that whether a domain name is identical (or confusingly similar) to a mark is to be judged objectively, against the dominant textual elements of a complainant’s mark, rather than graphic or stylised elements. See, Hero v. The Heroic Sandwich, WIPO Case No. D2008-0779. These graphic elements are therefore to be disregarded for the purposes of assessing whether the disputed domain name is identical to the Complainant’s EXPLOR’ATM trademark.

In the light of the foregoing, the Panel finds that the disputed domain name <exploratm.com> is confusingly similar to the Complainant’s registered trademark and that paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

The burden of proof is on the Complainant to establish that the Respondent lacks rights or legitimate interests in the disputed domain name. Under the UDRP, if a prima facie case is established by the Complainant, then the burden of production of evidence shifts to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name.

Paragraph 4(c) of the Policy enumerates three non-exclusive ways in which a respondent may demonstrate rights or legitimate interests in a domain name (with “you” referring to the respondent):

“[a]ny of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your 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

(ii) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are 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.”

The Respondent did not submit a response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws adverse inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b).

According to section 2.1 of the WIPO Overview 3.0, where a complainant makes out a prima facie case 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. The Respondent has not satisfied this burden.

The Respondent is not a licensee of the Complainant and has not been authorised to use the Complainant’s EXPLOR’ATM trademark or to register any domain name incorporating this mark. There is no commercial relationship between the Complainant and the Respondent. There is no record that suggests that the Respondent is commonly known by the disputed domain name.

There is no evidence of the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. The disputed domain name is not currently being used and has not been used since it was registered. A Google search with the keywords “David Chan exploratm” gives no information about an eventual offering of goods or services, or a company owned by the Respondent making use of the term EXPLOR’ATM.

In addition, the Panel notes that the nature of the disputed domain name, which is almost identical to the Complainant’s trademark, carries a risk of implied affiliation. See section 2.5.1 of the WIPO Overview 3.0.

In the light of the foregoing, the Panel finds that the Complainant has established an unrebutted prima facie case and concludes that paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:

“(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;

(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;

(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 on-line 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 its website or location.”

The registration of the disputed domain name <exploratm.com> appears to have been done in bad faith. The uniqueness of the Complainant’s mark and in particular, the fact that EXPLOR’ATM does not have a meaning in and of by itself leads to a high degree of distinctiveness of the mark. The Panel notes that the disputed domain name is almost identical to the Complainant’s trademark. Moreover, the Respondent registered the disputed domain name immediately following the publication of the Complainant’s trademark application. This suggests that the Respondent registered the disputed domain name in bad faith to create a likelihood of confusion between the disputed domain name and the Complainant’s EXPLOR’ATM mark.

Previous panels have held that a clear absence of rights or legitimate interests coupled with no credible explanation for the respondent’s choice of the domain name is a significant factor to consider that the domain name was registered in bad faith. See BHP Billiton Iru’iovation Pty Ltd v. Joe Kreg, WIPO Case No. D2018-2712.

The Respondent is not making any use of the disputed domain name and is not making any bona fide offering of goods or services in connection with the disputed domain name. It has been established by previous UDRP panels that passive holding does not as such confer any rights or legitimate interests in the domain name. See, e.g., Dr. Martens and Dr. Martens, WIPO Case No. D2017-0246.

Accordingly, the Panel concludes that the Complainant has satisfied its burden of showing bad faith registration and use of the disputed domain name under paragraph 4(a)(iii) of the Policy.

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 <exploratm.com> be transferred to the Complainant.

Cherise Valles
Sole Panelist
Date: May 22, 2019