n°011123726, filed on August 16, 2012, and registered on January 14, 2013, in classes 16, 35 and 36;The Complainant is MIROVA, France, represented by Inlex IP Expertise, France.
The Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf., Iceland / Gaulard Didier, MIROVA, France.
The disputed domain name <mirova-gestion.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 14, 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 17, 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 18, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 7, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 10, 2021.
The Center appointed Elise Dufour as the sole panelist in this matter on June 17, 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 financial company, affiliated to NATIXIS, active in the field of sustainable financial and investment solutions. It enables its customers to collect funds and transfer cash to third-party accounts for remote and proximity payments and to easily integrate payments.
In this respect, the Complainant owns the following trademark registrations:
- European Union trademark registration MIROVA n°010787307, filed on April 4, 2012, and registered on September 10, 2012, in classes 16, 35 and 36;
- European Union trademark registration n°011123726, filed on August 16, 2012, and registered on January 14, 2013, in classes 16, 35 and 36;
- International trademark registration MIROVA n 1146522 registered on August 14, 2012, in classes 35 and 36.
The Complainant also owns domain names reflecting its marks (e.g., <mirova.com> registered on October 14, 2009, and <mirova.fr> registered on March 7, 2012).
The disputed domain name <mirova-gestion.com> was registered on May 3, 2021. At the time of filing of the Complaint, it was not resolving to an active website.
For the Complainant, the disputed domain name is identical and confusingly similar to its prior rights as composed of its trademark MIROVA placed in leading position associated with the word “gestion” (“management” in French). The Complainant underlines that the sign MIROVA has no meaning and is highly distinctive whereas the word “gestion” is purely descriptive.
The Complainant argues that the Respondent has no rights including trademark rights in respect of the name MIROVA and has never been authorized by the Complainant to use its trademarks in any way so that it has no rights or legitimate interests in respect of the disputed domain name. In addition, the Complainant stresses that the disputed domain name resolves to an error page and that when it registered the disputed domain name, the Respondent indicated a fake address.
Finally, the Complainant submits that the Respondent has registered the disputed domain name in bad faith, with the aim of taking advantage of the reputation of the trademark MIROVA which is a well-known trademark and highly distinctive. The Complainant argues also that the bad faith of the Respondent is established by the fact that, when registering the disputed domain name, the Respondent employed a privacy service in order to hide its identity. The Complainant adds that the disputed domain name is used in bad faith inasmuch MX Records attached to the disputed domain name have been activated while the disputed domain name directs to an error page, which leads the Complainant to suspect that the Respondent is attempting to take advantage of the Complainant’s trademarks through an email service that would likely be used for phishing activities especially considering the Complainant’s area of expertise.
Considering all the above, the Complainant requests from the Panel to order that the disputed domain name be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
The disputed domain name <mirova-gestion.com> wholly incorporates the Complainant’s trademarks MIROVA, which, as it has been long established by previous UDRP panels, may be sufficient to determine that a disputed domain name is identical or confusingly similar to the Complainant’s trademarks.
In addition, the trademark MIROVA is placed in leading position and it is clear that the inclusion of an additional term as “gestion”, meaning “management” in French, does not prevent the disputed domain name from being identical or confusingly similar to the Complainant’s trademark (See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0)).
Finally, it is well established that the addition of the gTLD “.com” should be disregarded when assessing similarity as it is a standard registration requirement (See section 1.11, WIPO Overview 3.0, SAP SE v. Mohammed Aziz Sheikh, Sapteq Global Consulting Services, WIPO Case No. D2015-0565).
Thus, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks.
The Panel finds that the requirement of paragraph 4(a)(i) of the Policy is met.
On the basis of the evidence and arguments submitted, the Panel considers that the Complainant has successfully established the Respondent is not commonly known under the disputed domain name, nor does it own registered rights on the disputed domain name or has been authorized by the Complainant to use the prior trademarks in any way.
As such, the Panel finds that the burden of production regarding this element shifts to the Respondent (see section 2, WIPO Overview 3.0).
However, the Respondent did not provide any Response or evidence in this administrative proceeding.
The Panel considers that if the Respondent had rights or legitimate interests in respect with the disputed domain name, the Respondent would have probably produced its arguments.
On the basis of the foregoing, the Panel considers that none of the circumstances of rights or legitimate interests envisaged by paragraph 4(c) of the Policy apply, and that the Complainant has satisfied the requirements of the second element under the Policy.
With regards to the registration of the disputed domain name, the Panel finds that at the time of the registration of the disputed domain name, the Respondent knew or should have been aware of the existence of the Complainant’s trademarks and activities. Indeed, given the fact that the Complainant’s trademarks are well-known in the financial sector and highly distinctive, the Respondent cannot credibly claim to have been unaware of the existence of the previous trademarks.
In addition, the fact that, when registering the disputed domain name, the Respondent employed a privacy service in order to hide its identity is also an indication of bad faith.
The Panel hence finds that the disputed domain name was registered in bad faith.
As to use of the disputed domain name in bad faith, the disputed domain name is inactive and links to an “error page”. In this regard, section 3.3 of the WIPO Overview 3.0 provides: “From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or ‘coming soon’ page) would not prevent a finding of bad faith under the doctrine of passive holding”.
The Panel has hence reviewed all elements of this case, and attaches particular relevance to the following elements to assert use in bad faith:
Firstly, the Panel notes that when it registered the disputed domain name, the Respondent used a privacy service, which may constitute a factor indicating bad faith (see section 3.6, WIPO Overview 3.0).
In addition, the disputed domain name incorporates the Complainant’s distinctive and well-known trademark in its entirety, to which is added the descriptive term “gestion”, belonging in French to the financial vocabulary, which together creates a likelihood of confusion with the Complainant’s mark.
Finally, the Complainant has provided clear evidence that the Respondent has set up MX Records for the disputed domain name. This means that the disputed domain name may currently be used or could be used or has been used in the past for email communication and in particular fraudulent emails such as messages containing spam or used for phishing attempts. Considering the Complainant’s financial activities, the Panel deems that there is a high risk that the disputed domain name may be used for such fraudulent activities which suggests bad faith (see MIROVA v. Redacted for Privacy / Tod Francis, Francis Trucking Inc. WIPO Case No. D2020-2148).
Therefore, the Panel finds that the requirement of registration and use in bad faith is satisfied, according to the 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 disputed domain name <mirova-gestion.com> be transferred to the Complainant.
Elise Dufour
Sole Panelist
Date: July 9, 2021