WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Marlink SAS v. Super Privacy Service LTD c/o Dynadot / domain admin

Case No. D2021-1299

1. The Parties

Complainant is Marlink SAS, France, represented by Inlex IP Expertise, France.

Respondent is Super Privacy Service LTD c/o Dynadot, United States of America (“United States”) / domain admin, Hong Kong, China.

2. The Domain Name and Registrar

The disputed domain name <itlinkbymarlink.com> is registered with Dynadot, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 27, 2021. On April 28, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 29, 2021, 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 Complainant on April 30, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on May 3, 2021.

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 Respondent of the Complaint, and the proceedings commenced on May 6, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 26, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 27, 2021.

The Center appointed Lynda J. Zadra-Symes as the sole panelist in this matter on June 14, 2021. 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

Complainant belongs to a Belgian company MARLINK SA specialized in providing telecommunication services and particularly involved in cybersecurity in the maritime industry. MARLINK SA operates internationally through its related companies, including Complainant MARLINK SAS in France, MARLINK INC in the United States, and MARLINK AS in the Netherlands, among others.

Complainant is the owner of several registered trademarks for the marks MARLINK and ITLINK for use in connection with telecommunication services, satellite communication services and related services, including the following:

Complainant also operates its official website at “www.marlink.com” which was registered on May 10, 1996.

The disputed domain name was registered on April 13, 2021. The disputed domain name redirects to a webpage where the disputed domain name is offered for sale.

5. Parties’ Contentions

A. Complainant

Complainant contends that the disputed domain name is identical or confusingly similar to Complainant’s trademarks, that Respondent has no rights or legitimate interests in the disputed domain name and that Respondent has registered and used the disputed domain name in bad faith.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

In order to succeed in its claim, Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests with respect to the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

Paragraph 15(a) of the Rules instructs the 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”.

A. Identical or Confusingly Similar

Complainant has demonstrated that it has rights in the registered trademarks MARLINK and ITLINK. The disputed domain name incorporates Complainant’s registered marks in their entirety, and so the marks are clearly recognizable in the disputed domain name.

Accordingly, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademarks.

B. Rights or Legitimate Interests

Complainant contends that Respondent is not affiliated with or connected to Complainant in any way. There is no legal or business relationship between Complainant and Respondent. At no time has Complainant licensed or otherwise endorsed, sponsored or authorized Respondent to use Complainant’s marks or to register the disputed domain name. The record is devoid of any facts that establish any rights or legitimate interests of Respondent in the disputed domain name. There is no evidence that Respondent has been commonly known by the disputed domain name or that it has any rights that might predate Complainant’s adoption and use of its marks.

The disputed domain name points to the page of a registrar that offers the disputed domain name for sale, which further demonstrates that Respondent is not using the disputed domain name in connection with any bona fide offering of goods or services.

Furthermore, the nature of the disputed domain name, incorporating Complainant’s registered MARLINK and ITLINK marks and being identical to Complainant’s trademark application for ITLINK BY MARLINK, carries a risk of implied affiliation and cannot constitute fair use as it effectively impersonates or suggests sponsorship or endorsement by Complainant. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.5.1.

The Complainant has put forward a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, which has not been rebutted by the Respondent. Accordingly, the Panel finds that Complainant has satisfied the requirement of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

In a previous UDRP decision, the panel considered Complainant’s mark to be a well-known trademark, noting that “a quick Internet search shows that the top search results returned for the keyword ‘marlink’ are the Complainant’s official website and affiliated social media pages”. See Marlink SA v. Contact Privacy, Inc., Customer 1245005519 / Roberts Matthew, marl Link LLC, WIPO Case No. D2019-1653. This Panel agrees that the record indicates Complainant’s mark is well-known and that Respondent likely had knowledge of Complainant’s trademark rights when registering the disputed domain name and allowing it to be offered for sale. The fact that the disputed domain name was registered mere days after Complainant filed an application for the mark ITLINK BY MARLINK in the United States and the disputed domain name wholly incorporates such mark (in addition to Complainant’s well-known registered marks) further supports a finding of bad faith in that the Respondent clearly registered the disputed domain name with knowledge of the Complainant and its marks in order to sell the disputed domain name to Complainant (or its competitor) for valuable consideration in excess of Respondent’s costs related to the disputed domain name.
In addition, Respondent employed a privacy service in order to hide its identity. This additional fact adds to the inference of bad faith in these circumstances.

Accordingly, the Panel finds that Respondent has registered and used the disputed domain name in bad faith.

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, <itlinkbymarlink.com>, be transferred to Complainant.

Lynda J. Zadra-Symes
Sole Panelist
Date: June 28, 2021