The Complainant is MIROVA, France, represented by Inlex IP Expertise, France.
The Respondent is Privacy service provided by Withheld for Privacy ehf, Iceland /Gaulard Didier, MIROVA, France.
The disputed domain name <mirova-am.com> is registered with NameCheap, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 12, 2021. On May 12, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 12, 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 the Complainant on May 17, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 19, 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 the Respondent of the Complaint, and the proceedings commenced on May 25, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 14, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 21, 2021.
The Center appointed Benjamin Fontaine as the sole panelist in this matter on June 29, 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.
The Complainant is a French corporation which is active in the management of investments, particularly focused at the “sustainable” market. It manages over 20 billions EUR of assets.
The Complainant offers its services under several domain names, including <mirova.com>.
The Complainant is the owner in particular of the European Union Trade Mark registration No. 10787307 over the word mark MIROVA, filed on April 4, 2012, and registered on September 10, 2012.
The disputed domain name was registered on May 4, 2021. In the course of this proceeding the Registrar disclosed the identity of the Respondent, who appears to be an individual domiciled in France.
The disputed domain name has been used to offer pay-per-click (“PPC”) links, in different sectors not necessarily linked to finances. Besides, the Complainant has argued and submitted evidence that an email server was configured on the disputed domain name.
The arguments of the Complainant can be summarized as follows:
On the first element of the Policy, the Complainant argues that the disputed domain name <mirova-am.com> is “identical and highly similar to the prior rights of the complainant”. It highlights in particular that the word “mirova” is inherently highly distinctive, and that the initials “am” of the disputed domain name stand for “asset management” and therefore describe the Complainant’s activities.
On the second element of the Policy, the Complainant indicates that the Respondent does not appear to own any rights over the sign “mirova” (the result of a trade markclearance search was even attached), is not known under this name, and has not been authorized in any manner to use the trade mark “MIROVA”.
On the third element of the Policy, the Complainant highlights a number of elements: first, the trade mark “MIROVA” is well-known, particularly in France, as it is a key player in asset management. Actually, any Google search on “MIROVA” solely display results linked to the Complainant. Second, the Respondent used the services of a privacy shield, to hide its identity. Third, the Respondent uses the disputed domain name for a PPC scheme. Fourth, the configuration of MX records tends to indicate that the Respondent is conducting, or planning, phishing activities. Finally, the Complainant notes that the Respondent is already involved in a parallel pending proceeding.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 4(a) of the Policy sets forth the following three requirements, which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:
i. the disputed domain name is identical or confusingly similar to a trade mark 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 Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present so as to have the disputed domain name transferred to it, according to paragraph 4(i) of the Policy.
The Complainant has established rights over the trade mark MIROVA.
This trade mark is reproduced identically and clearly perceivable in the disputed domain name.
The addition of the initials “am” does not influence this finding. Indeed, as stated in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7, “in cases where a domain name incorporates the entirety of a trade mark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”.
For the reasons above, the Panel finds that the disputed domain name is confusingly similar to the trade mark of the Complainant.
The Complainant has therefore satisfied the first requirement of the Policy, under article 4(a)(i).
Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a 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 Policy.
In that sense, the Panel finds that the Complainant has made a prima facie case against the Respondent, who has not been commonly known by the disputed domain name and is not affiliated with the Complainant nor has it been licensed or otherwise permitted to use any of the Complainant’s trade marks or to register domain names incorporating the Complainant’s trade mark “MIROVA”.
Furthermore, the nature of the disputed domain name, comprising the Complainant’s well-known trade mark, carries a risk of implied affiliation and cannot constitute fair use as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. See WIPO Overview 3.0, section 2.5.1.
Accordingly, and absent specific allegations by the Respondent, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
In order to prevail under the third element of paragraph 4(a)(iii) of the Policy, a complainant must demonstrate that the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. These are:
(i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the disputed domain name; or
(ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant’s trade mark or service mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.
Indisputably, the disputed domain name was specifically designed and registered to target the Complainant. Indeed, it combines the trade mark “MIROVA”, which is both inherently distinctive with the initials am that describe the Complainant’s activities. It is very customary to use the abbreviated form “am” to refer to “asset management”.
Besides, and as recognized in a prior decision MIROVA v. Redacted for Privacy / Tod Francis, Francis Trucking Inc, WIPO Case No. D2020-2148), the trade mark MIROVA is well-known in the financial sector, at least in the French market.
Therefore, the Panel finds that the disputed domain names was registered in bad faith.
Besides, the Panel also finds that the disputed domain name has been used in bad faith.
First, in this matter a finding of bad faith passive holding is perfectly in order, and probably more appropriate than the reference to the operation of a PPC scheme. Indeed, the Panel cannot foresee any use in good faith of a domain name which targets the Complainant and its well-known trade mark. The connection with the Complainant’s reputed trade mark is too obvious. Besides, the behavior of the Respondent confirms this presumption. Indeed, this individual used a privacy shield, provided incorrect contact details, and chose not to intervene in this proceeding.
Second, the confusion created with the Complainant and its activities is likely to serve the objective of operating a phishing scheme. This is not mere speculation as MX records have been configurated regarding the disputed domain name. Moreover, this threat is particularly relevant in the financial industry. Diverting Internet users for fraudulent purposes of this nature amounts to use in bad faith. See WIPO Overview 3.0, section 3.4.
Third, and finally, it is apparent that the Respondent has engaged in a pattern of registering domain names that infringe the rights of the Complainant. As indicated above, another proceeding against the same individual is also pending. This is additional evidence of bad faith registration and use.
Accordingly, a finding of registration and use in bad faith is clearly in order, and the third criteria element set out in paragraph 4(a) of the Policy is also satisfied.
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, <mirova-am.com> be transferred to the Complainant.
Benjamin Fontaine
Sole Panelist
Date: July 8, 2021