The Complainant is DALKIA, France, represented by IP Twins S.A.S., France.
The Respondent is Jau Khan, Malaysia.
The disputed domain name <dalkiasmartbuilding.com> is registered with TurnCommerce, Inc. DBA NameBright.com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 3, 2019. On July 5, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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.
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 July 9, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 29, 2019. The Center received an email communication from the Respondent’s offering to sell the disputed domain name to the Complainant on July 11, 2019. The offer was rejected by the Complainant on July 12, 2019. The Respondent did not submit any formal response, accordingly, the Center informed the Parties it will proceed to panel appointment on July 30, 2019.
The Center appointed Tobias Malte Müller as the sole panelist in this matter on August 13, 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.
The Complainant is the registered owner of numerous trademark registrations for DALKIA, such as French verbal trademark no. 98717437, registered on February 11, 1998, for services in classes 35, 36, 37, 38, 40, 41, 42, 43, 44, and 45, which has duly been renewed and is in force.
Furthermore, the Complainant filed, on July 24, 2018, the French trademark DALKIA SMART BUILDING no. 4471578 (verbal) for goods and services in classes 4, 9, 11, 17, 19, 35, 36, 37, 39, 40, 42, and 45, which has been published on August 17, 2018 and is now registered.
In addition, the Complainant has a subsidiary named “Dalkia Smart Building” and the Complainant is the owner of the domain name <dalkiasmartbuilding.net>.
The Respondent registered the disputed domain name on August 23, 2018. It results from the evidence submitted by the Complainant that the disputed domain name resolves to a standard “coming soon” page from the Registrar.
The Complainant is part of the French EDF Group and offers customers expertise in developing, building and managing energy solutions to enable the sustainable growth of cities and companies. According to the Complainant’s undisputed allegations, it employs 16,000 collaborators and provides services to more than 2,300 industrial sites, 19,900 commercial and service-sector facilities as well as 3,400 healthcare facilities. In 2019, the Complainant generated EUR 4,2 billion in revenue.
First, the Complainant contends that the disputed domain name is confusingly similar to its trademark DALKIA and identical to its further trademark DALKIA SMART BUILDING, which have both been filed and published before the disputed domain name has been registered.
The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name. In particular, there is no business relationship between the Parties and the Complainant has never granted the Respondent any license, partnership or authorization. Furthermore, nothing in the record or WhoIs information shows that the Respondent is commonly known by the disputed domain name. In addition, it results from the Complainant’s undisputed and documented allegations that the Respondent does not dispose of any registered trademark DALKIA and that DALKIA does not have any meaning in English or Malay language or any other language. According to the Complainant’s non-contested allegations, the disputed domain name is currently resolving to a standard “coming soon” page from the Registrar. Finally, the disputed domain name has only been registered a few days after the publication of the trademark application for DALKIA SMART BUILDING. In the light of the above, the Complainant therefore concludes that there is no bona fide offer of products or services from the Complainant as well as no other legitimate, noncommercial or fair use.
Finally, the Complainant contends that the Respondent registered and uses the disputed domain name in bad faith. According to the Complainant’s allegations, the Respondent must have had knowledge of the Complainant’s trademarks at the time of the disputed domain name’s registration. The Complainant further contends that there is no plausible explanation for the Respondent’s registration of the disputed domain name other than targeting the Complainant’s trademark. In addition, the Complainant contends and provides evidence that the Respondent is engaged in a pattern of conduct since he registered further domain names which are identical or very similar to recent trademark applications.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements in order to obtain an order that the disputed domain name should be transferred or cancelled:
(i) the disputed domain name is identical or confusingly similar to a 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 and is being used in bad faith.
The Panel is satisfied that the registrant of record for the disputed domain name is the Respondent and will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied.
Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must first of all establish rights in a trademark or service mark and secondly establish that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
It results from the evidence provided that the Complainant is the registered owner of various trademark registrations for the verbal element DALKIA. Reference is made in particular to French verbal trademark DALKIA, no. 98717437, registered on February 11, 1998, for services in classes 35, 36, 37, 38, 40, 41, 42, 43, 44, and 45, which has duly been renewed and is in force. In addition, the Complainant owns a further French trademark DALKIA SMART BUILDING, no. 4471578 (verbal) for goods and services in classes 4, 9, 11, 17, 19, 35, 36, 37, 39, 40, 42, and 45, granting protection from July 24, 2018.
Many UDRP panels have found that a disputed domain name is confusingly similar to a complainant’s trademark where the disputed domain name incorporates the complainant’s trademark in its entirety (e.g., F. Hoffmann-La Roche AG v. Jason Barnes, ecnopt, WIPO Case No. D2015-1305; Compagnie Générale des Etablissements Michelin v. Christian Viola, WIPO Case No. D2012-2102; Volkswagen AG v. Nowack Auto und Sport - Oliver Nowack, WIPO Case No. D2015-0070; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies, WIPO Case No. D2015-0812; Rhino Entertainment Company v. DomainSource.com, Inc., WIPO Case No. D2006-0968; SurePayroll, Inc. v. Texas International Property Associates, WIPO Case No. D2007-0464). This Panel shares this view and notes that the Complainant’s registered trademarks DALKIA and DALKIA SMART BUILDING are fully included in the disputed domain name.
Furthermore, and according to UDRP panel consensus, the applicable generic Top-Level Domain (“gTLD”) suffix “.com” in the disputed domain name is to be disregarded under the confusing similarity/identity test.
Hence, this Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks pursuant to the Policy, paragraph 4(a)(i).
Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must secondly establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interests to the disputed domain name. In the Panel’s view, based on the undisputed allegations stated above, the Complainant has made a prima facie case that none of these circumstances are found in the case at hand and, therefore, that the Respondent lacks rights or legitimate interests in the disputed domain name.
First, it results from the Complainant’s non-contested evidence that the disputed domain name resolves to a standard “coming soon” page from the Registrar. Such (non-)use cannot in this Panel’s view be qualified a bona fide offering of goods or services in accordance with paragraph 4(c)(i) of the Policy. In addition, the Respondent did not submit any contemporaneous evidence of bona fide pre-complaint preparations to use the disputed domain name. In particular, it results from the Complainant’s uncontested allegations that it has not authorized the Respondent’s use of the trademarks DALKIA and DALKIA SMART BUILDING for registering the disputed domain name comprising said trademarks entirely.
Furthermore, the Panel notes that there is no evidence in the record or WhoIs information showing that the Respondent might be commonly known by the disputed domain name in the sense of paragraph 4(c)(ii) of the Policy.
Finally, the Panel notes that there is no evidence in the record either showing that the Respondent might target a 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 pursuant to paragraph 4(c)(iii) of the Policy. In particular, the Panel is satisfied that the registered trademark DALKIA is distinctive and the combination with the further terms “smart building” is so striking that it is unlikely that the Respondent wanted to fairly use the disputed domain name. In fact, previous UDRP panels have found that domain names identical to a complainant’s trademark carry a high risk of implied affiliation (see section 2.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). Furthermore, the Respondent did not provide any explanations for his choice of domain name and did not add any note, information or disclaimer on the website pointing out that it has actually no relationship with the Complainant.
It is acknowledged that once the Panel finds such prima facie case is made, the burden of production shifts to the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. Since the Respondent in the case at hand failed to come forward with any allegations or evidence, this Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant is therefore deemed to have satisfied paragraph 4(a)(ii) of the Policy.
According to paragraph 4(a)(iii) of the Policy, the Complainant must thirdly establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, in particular but without limitation, be evidence of the disputed domain name’s registration and use in bad faith.
In the present case, the disputed domain name has been used to resolve to a standard “coming soon” page from the Registrar. Previous UDRP panels have found that the non-use of a domain name (including a blank or “coming soon” page) does not prevent a finding of bad faith under the doctrine of passive holding. UDRP panels rather will look at the totality of the circumstances in each case. Factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put (see section 3.3, WIPO Overview 3.0.).
In light of the above, the Panel is satisfied that there is evidence of the disputed domain name’s registration and use in bad faith. First, the Panel notes that the disputed domain name contains two of the Complainant’s trademarks in their entirety. In addition, the disputed domain name was registered only a few days after the Complainant’s trademark application DALKIA SMART BUILDING had been published. Therefore, this Panel has no doubt that the Respondent positively knew or should have known that the disputed domain name consisted of the Complainant’s DALKIA SMART BULDING and DALKIA trademarks when it registered the disputed domain name, and did it precisely in anticipation of the Complainant’s nascent trademark rights in DALKIA SMART BUILDING (see section 3.8.2, WIPO Overview 3.0). Registration of the disputed domain name in awareness of a complainant’s mark and in the absence of rights or legitimate interests in this case amounts to registration in bad faith (see e.g. “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH v. Petra Wirth, WIPO Case No. D2018-0246; KOC Holding A.S. v. VistaPrint Technologies Ltd, WIPO Case No. D2015-1910; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies, WIPO Case No. D2015-0812 and The Chancellor, Masters and Scholars of the University of Oxford v. Almutasem Alshaikhissa, WIPO Case No. D2014-2100; Deutsche Lufthansa AG v. Mustermann Max, Muster AG, WIPO Case No. D2015-1320).
In addition, this finding of bad faith registration and use is supported by the further circumstances resulting from the case at hand which are the following:
(i) the Respondent’s failure to submit a response or to provide any evidence of actual or contemplated good faith use;
(ii) the implausibility of any good faith use to which the disputed domain name may be put;
(iii) the Respondent’s proposal (dated July 11, 2019) to transfer the disputed domain name for USD 800 which clearly exceeds the out-of-pocket expenses for registering a domain name under the gTLD “.com”;
(iv) the Respondent’s further domain name registrations, which are identical or very similar to third party trademark applications (pattern of conduct) of registering domain names in anticipation of nascent trademark rights;
(v) two further UDRP cases where the respective domain names had been registered within a short period after the complainants applied for the respective trademarks and subsequently offered for sale by the Respondent.
In the light of the above the Panel finds that the disputed domain name has been registered and is being used in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
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 <dalkiasmartbuilding.com> be transferred to the Complainant.
Tobias Malte Müller
Sole Panelist
Date: August 27, 2019