Complainants are Nexans, France and Liban Cables, Lebanon, represented by Cabinet Lhermet & Lefranc-Bozmarov, France.
Respondent is Super Privacy Service LTD c/o Dynadot, United States of America.
The disputed domain names <libancable.com>, <libancable.net>, <nexanscables.com> (the “Domain Names”) are registered with Dynadot, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 12, 2019. On December 13, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On December 16, 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 December 23, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 12, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 17, 2020. The Center extended the Response due date until January 28, 2020.
The Center appointed Marina Perraki as the sole panelist in this matter on February 7, 2020. 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.
Complaint filed by Multiple Complainants / Consolidation
The Panel has considered the possible consolidation of the Complaint for the Domain Names at issue. According to WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.1, Paragraph 10(e) of the UDRP Rules grants a panel the power to consolidate multiple domain name disputes. At the same time, paragraph 3(c) of the UDRP Rules provides that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder.
In assessing whether a complaint filed by multiple complainants may be brought against a single respondent, panels look at whether (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation.
The Panel notes the following features of the Domain Names and arguments submitted by Complainants in favor of the consolidation:
- the two Complainants, Nexans and Liban Cables are both part of the same group – Nexans Group.
According to Complainants, Nexans manages the domain names of the Nexans Group and its members (including Liban Cables);
- both Complainants have a common grievance against the Respondent as all Domain Names target the trademarks of their group of companies – Nexans Group;
- all Domain Names were offered for sale in the same domain name market place, as Complainants demonstrated; and
- it would be equitable and procedurally efficient to permit the consolidation.
The Panel finds that this Complaint consists of multiple Complainants that should, for the reasons discussed above, be permitted to have their complaints consolidated into a single Complaint for the purpose of the present proceedings under the Policy. Respondent has not submitted a Response and consequently there are no submissions to be taken into account on the procedural issues. The Panel therefore finds that it would be equitable and fair to permit consolidation.
Complaint filed against Multiple Respondents / Consolidation
According to WIPO Overview 3.0, section 4.11.2, “Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario”.
The Panel notes the following features of the Domain Names and arguments submitted by Complainants in favor of the consolidation:
- all Domain Names are now registered with the same proxy provider Super Privacy Service LTD c/o Dynadot;
- all Domain Names are registered with the same Registrar Dynadot and are using the same DNS servers;
- all Domain Names are pointing to the identical domain names marketplace “dan.com” where the Domain Names are offered for sale by what appears to be the same “private seller”; and
- all Domain Names target the trademarks of Complainants’ group.
Furthermore, as Complainants demonstrated, before Respondent’s information became masked by a proxy service in April 2019, the Domain Names were owned by what appeared to be the same individual / registrant entity. Per Complaint, second Complainant had contacted this individual in 2015-2017 by phone at the number appearing as registrant’s phone number on the WhoIs database, regarding the Domain Name <libancable.com>. Per Complaint, the individual requested USD 15,000 for the transfer of the Domain Name <libancable.com>. Then the individual / Oueida Trading were contacted, per Complaint, several times by Complainants’ attorneys. Complainants sent a cease and desist letter regarding the Domain Names <nexanscables.com> and <libancable.com> to said individual, on March 1, 2019, by a court usher.
The recipient never replied to this cease and desist letter. Per Complaint, soon after the notification of the said letter, the Registrant’s information became masked by a proxy service, namely on April 4, 2019 for <libancable.com>, April 13, 2019 for <libancable.net>, and not later than April 25, 2019 for <nexanscables.com>.
Considering all the above, the Panel notes that, as Complainant has argued, there appears prima facie to be one single Respondent. Furthermore, the named Respondent did not submit any arguments to rebut this inference.
The Panel finds therefore that consolidation is fair to all Parties, as Respondent has been given an opportunity to object to consolidation through the submission of a Response to the Complaint but has chosen not to respond (see WIPO Overview 3.0, sections 4.11.1 and 4.11.2; Virgin Enterprises Limited v. LINYANXIAO aka lin yanxiao, WIPO Case No. D2016-2302).
Complainants are members of the same group of companies. First Complainant is a French company and one of the world leaders in the cable industry, present in sectors such as energy, transport and telecom, shipbuilding, oil and gas, nuclear power, automotive, electronics, aeronautics, material handling and automation. The origin of first Complainant dates back to 1897 when Société Française des Câbles was created. After several changes in the form of the company and its ownership, as well as acquisitions of other companies, including second Complainant, first Complainant is currently listed in Paris Euronext Exchange. Second Complainant is a Lebanese company active in the field of cable systems in construction, infrastructure and industry. It was founded in 1967 and it was one of the first cable factories in the region. It has a domestic market share of 75-80 percent, while its total sales for the last five years are: 2014 – USD 135 million, 2015 – USD 131 million, 2016 – USD 125 million, 2017 – USD 156 million, and 2018 – USD 131 million.
Complainants’ group employs more than 27,000 people in 34 countries and has been operating in Lebanon through second Complainant.
Second Complainant maintains a website at <libancables.com> where extensive information about second Complainant and its activities can be found.
Complainants holds trademark registrations consisting of or including NEXANS and LIBAN CABLES, such as:
- the International trademark registration No. 748932, NEXANS (word) registered on December 8, 2000, for goods in international classes 6 and 9; and
- the Lebanese trademark registration No. 122270 LIBANCABLE (word) registered on May 26, 2009 for services in international class 35.
Second Complainant is also the owner of several “libancable” and “libancables” domain names including <libancables.com> registered on January 17, 2003, <libancable.com.lb> registered on August 21, 2014, and <libancables.com.lb> registered on August 21, 2014.
The Domain Name <libancable.com> was registered on November 24, 2014, the Domain Name <libancable.net> was registered on April 4, 2018 and the Domain Name <nexanscables.com> was registered on May 1, 2018.
On October 2, 2019 Complainants sent a cease-and-desist letter to Respondent to which Respondent did not reply.
The Domain Names are offered for sale at “dan.com”.
Complainants assert that they have established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Names.
Respondent did not reply to Complainants’ contentions.
Paragraph 4(a) of the Policy lists the three elements which Complainants must satisfy with respect to the Domain Names:
(i) the Domain Names are identical or confusingly similar to a trademark or service mark in which Complainants have rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) the Domain Names have been registered and are being used in bad faith.
Complainants have demonstrated rights through registration and use on the LIBAN CABLE and NEXANS trademarks.
The Panel finds that the Domain Names <libancable.com>, <libancable.net> and, <nexanscables.com> are confusingly similar to the LIBAN CABLE and NEXANS trademarks of Complainants respectively.
The Domain Names incorporate the trademarks of Complainants in their entirety. This is sufficient to establish confusing similarity (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525).
The word “cables”, which is added in the Domain Name <nexanscables.com>, does not avoid a finding of confusing similarity as it is a dictionary, non-distinctive term (see Accenture Global Services Limited v. Jean Jacque / Luck Loic, WIPO Case No. D2016-1315; Wragge Lawrence Graham & Co LLP v. Registration Private, Domains by Proxy LLC / Ian Piggin, WIPO Case No. D2015-0135; WIPO Overview 3.0, section 1.8).
The generic Top-Level Domains (“gTLDs”) “.com” and “.net” respectively are also disregarded, as gTLDs typically do not form part of the comparison on the grounds that they are required for technical reasons only (see Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275; Hay & Robertson International Licensing AG v. C. J. Lovik, WIPO Case No. D2002-0122).
The Panel finds that the Domain Names <libancable.com>, <libancable.net>, and <nexanscables.com> are confusingly similar to the LIBAN CABLE and NEXANS trademarks of Complainants respectively.
Complainants have established Policy, paragraph 4(a)(i).
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Names, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Names, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Names.
Respondent has not submitted any Response and has not claimed any such rights or legitimate interests with respect to the Domain Names. As per Complainants, Respondent was not authorized to register the Domain Names.
Respondent did not demonstrate any bona fide use of the Domain Names prior to the notice of the dispute.
On the contrary, as Complainants demonstrated, Respondent put the Domain Names for sale at domain names marketplace “dan.com” (Viceroy Cayman Ltd. v. Anthony Syrowatka, WIPO Case No. D2011-2118).
The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Names.
Complainants have established Policy, paragraph 4(a)(ii).
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Names in bad faith:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Names primarily for the purpose of selling, renting, or otherwise transferring the Domain Names registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Names; or
(ii) that Respondent has registered the Domain Names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Names primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Respondent has registered and used the Domain Names in bad faith.
Because the LIBAN CABLE and NEXANS marks are well-known for cables and had been widely used and registered at the time of the Domain Names’ registrations, the Panel finds it more likely than not that Respondent had Complainants’ marks in mind when registering the Domain Names (see Dell Inc. v. ASTDomains, WIPO Case No. D2007-1819, Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc., WIPO Case No. D2014-1754; Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226).
Furthermore, the Domain Names incorporate in whole Complainants’ marks plus, in the case of <nexanscables.com>, an additional dictionary term, therefore creating a likelihood of confusion with Complainants’ marks as to the source, sponsorship, affiliation or endorsement of the Domain Names.
Lastly, it is apparent that Respondent was aware of Complainants and Complainants’ marks LIBAN CABLE and NEXANS when registering the Domain Names, also because of the online presence of Complainants at, inter alia, “www.libancables.com” and “www.nexans.com”.
The Panel considers the following factors: (i) the reputation of LIBAN CABLE and NEXANS in the field of cables, (ii) the failure of Respondent to submit a Response, (iii) the fact that the Domain Names are registered with a privacy shield service to hide the registrant’s identity (WIPO Overview 3.0, section 3.6), (iv) the implausibility of any good faith use to which the Domain Names may conceivably be put, given that as Complainants have demonstrated they were offered for sale at the domain name market place “dan.com”, and that (v), as Complainants demonstrated, the Domain Names are offered for sale by the same “private seller”. By clicking on the “private seller”, one can see several domain names put on sale by the same seller that incorporate third party registered trademarks, such as <shopadidas.net>, <aljazeerabank.net>, <amazonhublocker.com>. This constitutes a pattern of abusive registration and is further evidence of bad faith (WIPO Overview 3.0, section 3.1.1, Compagnie Générale des Etablissements Michelin v. Cameron Jackson, WIPO Case No. D2016-2392).
Under these circumstances and on this record, the Panel finds that Respondent registered and was using the Domain Names in bad faith.
Complainants have established Policy paragraph 4(a)(iii).
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, <libancable.com>, <libancable.net>, and <nexanscables.com>, be transferred to the first Complainant.
Marina Perraki
Sole Panelist
Date: February 21, 2020