The Complainant is WILO Salmson France of Chatou, France, represented by Hirsch & Associés, France (the “Complainant”).
The Respondent is Super Privacy Service LTD c/o Dynadot of San Mateo, California, United States of America (the “Respondent”).
The disputed domain name <erp-salmson.com> (the “Domain Name”) is registered with Dynadot, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 12, 2019. On February 12, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 13, 2019, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
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 Respondent of the Complaint, and the proceedings commenced on February 18, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 10, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 11, 2019.
The Center appointed Gregor Vos as the sole panelist in this matter on March 19, 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.
Complainant is a French company, formerly known as Pompes Salmson. Complainant is engaged in the field of pumps.
Complainant is the owner of the following trademark registrations (the “Trademarks”):
- International Trademark registration no. 429368 for the below depicted figurative mark, registered on December 22, 1976;
- International Trademark registration no. 810881 for the below depicted figurative mark, registered on July 3, 2003;
- French Trademark registration no. 3603159 for the wordmark SALMSON, registered on October 7, 2008;
- International Trademark registration no. 1009167 for the wordmark SALMSON, registered on March 30, 2009;
- International Trademark registration no. 1019484 for the below depicted figurative mark, registered on July 15, 2009;
- European Union Trademark registration no. 009800608 for the wordmark ERP ENERGY RELATED PRODUCTS CERTIFIED BY SALMSON, registered on October 7, 2011;
- European Union Trademark registration no. 009830506, for the below depicted figurative mark, registered on October 14, 2011;
- International Trademark registration no. 1220658 for the below depicted figurative mark, registered on June 4, 2014;
Complainant owns the domain names <salmson.com>, <salmson.fr>, and <salmson-erp.com>. From September 16, 2011 to September 16, 2018 Complainant also owned the domain name <erp-salmson.com>, which is the Domain Name here in dispute. The Domain Name was used to promote the development and implementation of the legal regulation for “energy related products”, also shortened as ERP.
The Domain Name was registered by Respondent on December 2, 2018. The Domain Name used to redirect to a pornographic webpage and is currently inactive.
Complainant asserts that the Domain Name is confusingly similar to its trademarks. The Domain Name reproduces the two distinctive terms “erp” and “salmson” of its trademark ERP ENERGY RELATED PRODUCTS CERTIFIED BY SALMSON. The first term “erp” would have no meaning by itself but would only refer to “energy related products”. In this regard, Complainant refers to the European Union directive 2009/125 of October 21, 2009 establishing a framework for the setting of ecodesign requirements for energy-related products, also known as the “ERP Directive”. Complainant further states that the second distinctive term “salmson” in the Domain Name is identical to its trademark SALMSON. Complainant concludes that the Domain Name is confusingly similar to the Trademarks as the Domain Name fully incorporates its trademark SALMSON and the term “erp” serves to further associate the Domain Name with Complainant’s products, as this would indicate that Respondent complies with the ERP Directive.
Furthermore, Complainant asserts that Respondent has no rights to or legitimate interests in respect of the Domain Name. Complainant states that Respondent is not commonly known by the Domain Name, affiliated with Complainant, authorized by Complainant to use the Domain Name nor making a bona fide use of the Domain Name. According to Complainant, there would also be no evidence that Respondent has registered the Domain Name for a legitimate noncommercial or fair purpose. Complainant states that Respondent is using the Domain Name to redirect to a pornographic website.
Finally, Complainant asserts that the Domain Name has been registered and used in bad faith. According to Complainant, registration and use of bad faith is evidenced by the fact that Respondent is using the Domain Name to redirect to a website containing pornographic content. This would tarnish Complainant, its reputation and the Trademarks.
Respondent did not reply to Complainant’s contentions.
Based on paragraph 4(a) of the UDRP, a request to transfer a domain name must meet three cumulative conditions:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) the registrant of the domain name has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
In the administrative proceedings, Complainant must prove that each of these three elements is present.
Only if all three elements are fulfilled can the Panel grants the remedy requested by Complainant.
Paragraph 4(a)(i) of the UDRP requires two elements to be proved. A disputed domain name should be (i) identical or confusingly similar to a trademark or service mark, (ii) in which a complainant has rights.
With respect to having rights pursuant to paragraph 4(a)(i) of the UDRP, it is noted that Complainant is registered as the owner of the Trademarks, as can be seen from the submitted copies of the registrations of the Trademarks. Consequently, the Panel finds that Complainant has proven that it has rights in the Trademarks.
With regard to the assessment of identity or confusing similarity of the Domain Name with the Trademarks, it is generally accepted that this test involves a reasoned but relatively straightforward comparison between a complainant’s trademark and the disputed domain name (see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
For the purpose of assessing confusing similarity under the Policy, the generic Top-Level Domain (“gTLD”) suffix (in the present case“.com”) is generally ignored in the comparison between the disputed domain name and a complainant’s trademark (see Bialetti Industrie S.p.A. v. Onno Brantjes, Stichting Taxaceae, WIPO Case No. D2016-1450; Canyon Bicycles GmbH v. Domains By Proxy, LLC / Rob van Eck, WIPO Case No. D2014-0206; Zions Bancorporation v. Mohammed Akik Miah, WIPO Case No. D2014-0269). This case does not contain any indications to the contrary.
The Domain Name incorporates Complainant’s trademark SALMSON entirely. Additionally, the Domain Name contains the term “erp” which does nothing to avoid a finding of confusing similarity. (Complainant has provided evidence that this term stands for “energy related products”. Both the term “erp” as well as the term “energy related products” are commonly used by Complainant.) Complainant inter alia owns the domain name <salmson-erp.com>. Considering the fact that the Domain Name consists of a trademark and of a sign commonly used by Complainant, the Panel finds that it is likely that Internet users when confronted with the Domain Name will associate the Domain Name with Complainant and could be confused. Therefore, the Panel finds that the Domain Name is confusingly similar to the Trademarks.
Consequently, the Panel finds that the requirement under paragraph 4(a)(i) of the UDRP has been fulfilled.
In order to fulfil the requirement of paragraph 4(a)(ii) of the UDRP, a complainant has to prove that the respondent lacks rights or legitimate interests in the disputed domain name. As this may result in the often impossible task of “proving a negative”, a complainant bears the burden of prima facie showing that the respondent has no rights or legitimate interests in the disputed domain name. If a complainant succeeds in making its prima facie case, the burden of production shifts to the respondent, which will then have to come forward with appropriate allegations or evidence demonstrating a right or legitimate interest in the disputed domain name (see section 2.1of the WIPO Overview 3.0).
In the present matter, Complainant argues that Respondent is not affiliated with Complainant, nor has it ever been authorized by Complainant to use the Trademarks. Complainant also submits that Respondent is not commonly known by the Domain Name or is making a bona fide use of the Domain Name. In addition, Complainant argues that there is no evidence that Respondent has registered the Domain Name for a legitimate noncommercial or fair purpose. On the contrary, Complainant has submitted evidence that Respondent is using the Domain Name to redirect to a pornographic website.
Based on the above, the Panel finds that Complainant has sufficiently set out its prima facie case. The burden of production therefore shifts to Respondent.
As Respondent has not replied to Complainant’s allegations, the Panel finds that the requirement under paragraph 4(a)(ii) of the UDRP is fulfilled.
Bad faith under paragraph 4(a)(iii) of the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark.
The Domain Name resolves to a website containing pornographic content. Numerous panels have previously held that pornographic content on a respondent’s website is in itself sufficient to support a finding of bad faith, irrespective of the respondent’s motivation (see, e.g., CHRISTIAN DIOR COUTURE v. Paul Farley, WIPO Case No. D2008-0008, and further cases cited there). In particular because the linking of the Domain Name with a pornographic website could result in tarnishing the Complainant’s trademark.
In this case, the Panel finds that the confusing similarity between the Domain Name and the Trademarks and the pornographic nature of the website are sufficient to conclude that the Domain Name was registered and used in bad faith.
Therefore, the Panel finds that the requirement under paragraph 4(a)(iii) of the UDRP is fulfilled.
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, <erp-salmson.com> be transferred to Complainant.
Gregor Vos
Sole Panelist
Date: April 2, 2019