The Complainant is Amundi Asset Management, France, represented by Nameshield, France.
The Respondent is Jean René, Netherlands.
The disputed domain name <amundi-invest.com> is registered with Gandi SAS (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 9, 2019. On August 9, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 13, 2019, the Registrar 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. The Center sent an email communication to the Complainant on August 13, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On that same day, the Center sent an email communication to the parties in English and French indicating the language of the registration agreement is French, and inviting them to submit their comments as to the language of the proceeding. The Complainant filed an amended Complaint on August 14, 2019, and also requested English to be the language of the proceeding. The Respondent did not submit any comments.
The Center verified that the Complaint together with 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 August 19, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 8, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 9, 2019.
The Center appointed Peter Wild as the sole panelist in this matter on September 18, 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.
Language of the Proceeding
Complainant filed the Complaint in English. According to the Registrar, the language of the Registration Agreement for the Disputed Domain Name is French. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the Parties, or unless specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement. On August 13, 2019 the Center invited the Parties, in an email in English and French, to comment on the requested procedural language being English. Complainant, by email of August 14, 2019, requested English to be the language of the proceeding for the following reasons:
- that the English language is the language most widely used in international relations and is one of the working languages of the Center;
- that Respondent is located in Netherlands and not France. Complainant contends that the Respondent should have a better knowledge of the English language than the French language.
The Disputed Domain Name includes the English term “Invest”;
The Complaint is written in English but the Center informed Respondent in French and in English and afforded Respondent the opportunity to comment on the language of proceedings.
The Center has issued all communications with the Parties in English and French, with which Respondent was notified of the commencement of the administrative proceedings with a deadline of 20 days to file a Response. Respondent didn’t file a response.
The Panel finds that a translation of the Complaint would unfairly disadvantage and burden Complainant and delay the proceedings and adjudication of this matter. The Disputed Domain Name is comprised of Latin characters and using the English word “invest” and the Disputed Domain Name is offered for sale on a website in English.
Conducting the proceedings in English will not result in unfairness to Respondent given its presumed competence in English, see Zappos.com, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191; and Fissler GmbH v. Chin Jang Ho, WIPO Case No. D2008-1002. In such circumstances previous UDRP panels have found that the proceeding should be conducted in English but that respondent may submit any documents or assertions in the language of the registration agreement. See Deutsche Messe AG v. Kim Hyungho, WIPO Case No. D2003-0679.
The Panel concludes based on the record that Respondent more likely than not is familiar with English. In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, the opportunity for Respondent to request French as the procedural language and time and costs. Under all these aspects, the Panel exercises its discretion, according to paragraph 11(a) of the Rules and allows the proceedings to be conducted in English.
Complainant, also operating under “www.amundi.com” is Europe’s number one asset manager by assets and has offices in 37 countries, including France and the Netherlands. With €1,425 billion in assets under management and over 100 million retail, institutional and corporate clients, Complainant ranks in the top 10 globally.
Complainant is the owner of the international trademark AMUNDI registration No. 1024160 registered on September 24, 2009. Complainant is also the owner of domain names including the trademark AMUNDI, such as “amundi.com” registered and used since August 26, 2004.
The Disputed Domain Name <amundi-invest.com> was registered on August 5, 2019 and points to a Registrar parking page offering the disputed domain name for sale, stating:
“This domain is for sale
For only $2500.-”
According to Complainant, the Disputed Domain Name is confusingly similar to Complainant’s trademark AMUNDI as it is included in its entirety.
The addition of the generic term “invest” is not sufficient to escape the finding that the Disputed Domain Name is confusingly similar to the trademark AMUNDI, which does not change the overall impression of the designation. It does not prevent the likelihood of confusion between the Disputed Domain Name and Complainant’s trademark. On the contrary, the addition of the term “invest” increases the likelihood of confusion with Complainant’s denomination and activity, as Complainant is specialized in asset management and investment.
Complainant furthermore claims that Respondent has no own rights or legitimate interest in the term AMUNDI and that the Disputed Domain Name has been filed and used in bad faith.
Respondent did not reply to Complainant’s contentions.
The Disputed Domain Name contains, in its entirety and prominently, Complainant’s trademark AMUNDI. The added term “invest” is purely descriptive for the services for which Complainant is well known.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) Section 1.8 provides that “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.”
In addition, a number of previous panels confirmed Complainant’s rights. See Amundi Asset Management v. Whois Privacy Protection Foundation / daniel, clark, WIPO Case No. D2019-1335.
In line with this, the Panel decides that the Disputed Domain Name <amundi-invest.com> is confusingly similar to Complainant’s trademark AMUNDI.
Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests, see Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. Once such prima facie case is made, the Respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.
There is no reason to believe that Respondent’s name somehow corresponds with the Disputed Domain Name and Respondent does not appear to have any trademark rights associated with the terms “Amundi” and “Invest”. See VUR Village Trading No. 1 Limited t/a Village Hotels v. Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2019-1596.
Respondent is not identified in the WHOIS database as “Amundi-Invest”. Previous UDRP panels have held that a respondent was not commonly known by a disputed domain name if the WHOIS information was not similar to the disputed domain name. The Panel therefore finds under paragraph 4(a)(ii) of the Policy that Respondent is not commonly known by the Disputed Domain Name.
According to Complainant, Respondent is not affiliated with nor authorized by Complainant in any way to use the trademark. Furthermore, the Disputed Domain Name <amundi-invest.com> points to a Registrar parking page which indicates that Respondent did not make any use of Disputed Domain Name since its registration.
Based on these facts, the Panel holds that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Complainant’s trademark AMUNDI has been found to be well known by previous panels.
Given the distinctiveness of Complainant’s trademarks and reputation at the time of the registration for the Disputed Domain Name, it is reasonable to infer that Respondent has registered the Disputed Domain Name with full knowledge of Complainant’s trademarks, constituting opportunistic bad faith, especially as Respondent added the term “invest” which refers to Complainant’s business. The Panel finds it hard to see any other explanation that Respondent knew Complainant’s well-known trademark. See Ferrari S.p.A v. American Entertainment Group Inc, WIPO Case No. D2004-0673 and Revlon Consumer Products Corporation v. Terry Baumer, WIPO Case No. D2011-1051.
Furthermore, the Disputed Domain Name points to a Registrar parking page. Complainant contends that Respondent has not demonstrated any activity in respect of the Disputed Domain Name, and it is not possible to conceive of any plausible actual or contemplated active use of the Disputed Domain Name by Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of Complainant’s rights under trademark law. SeeTelstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
At the time of writing this decision, the Disputed Domain Name also pointed to a page on which it was offered for sale for USD 2,500 - which is clearly beyond the cost which Respondent had to register the Disputed Domain Name. Such offers have repeatedly been held to be an indication of bad faith use, see for example Pepperdine University v. BDC Partners, Inc., WIPO Case No. D2006-1003.
For these reasons, the Panel concludes that Respondent has registered and is using the Disputed Domain Name <amundi-invest.com> in bad faith.
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 <amundi-invest.com> be transferred to Complainant.
Peter Wild
Sole Panelist
Date: September 20, 2019