The Complainants are Synergie, France, and Synergie Belgium NV, Belgium, both represented by Tmark Conseils, France.
The Respondent is Withheld for Privacy Purposes, Privacy Service Provided by Withheld for Privacy ehf, Iceland / Li Chin, CHINLI, United States of America.
The disputed domain name <synergiejobs-be.com> is registered with NameCheap, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 9, 2021. On November 10, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 10, 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 Complainants on November 11, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on November 12, 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 November 22, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 12, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 13, 2021.
The Center appointed Andrew Brown Q.C. as the sole panelist in this matter on January 5, 2022. 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 Complainants are the parent company, Synergie (the “First Complainant”), and its Belgian affiliate company, Synergie Belgium NV (the “Second Complainant”).
The First Complainant is the owner of the following trademarks:
|
Trademark |
Jurisdiction |
Registration Number |
Registration Date |
IC Class(es) |
|
SYNERGIE (fig.) |
European Union |
001822014 |
May 13, 2005 |
9, 35, 36, 38, 41, 42 |
|
SYNERGIE |
International |
1180842 |
June 10, 2013 |
9, 35, 41 |
These are collectively referred to as the “SYNERGIE Marks”.
The Synergie Marks are used in the domain name <synergiejobs.be> registered by the Second Complainant on September 7, 2006.
The First Complainant states that it has used and promoted its word mark SYNERGIE in relation to human resources for decades and that the trademark is well known in accordance with Article 6 bis of the Paris Convention in Convention countries. The First Complainant employs 4,200 people in 17 countries and in 2020 had a turnover of over EUR 2 million.
The disputed domain name was registered on August 4, 2021, and the Complainants have provided evidence that the disputed domain name has been used in connection with a fraudulent scheme impersonating the Second Complainant.
The Complainants assert their rights in the SYNERGIE Marks. The Complainants contend that the disputed domain name reproduces their well-known trademark SYNERGIE in combination with the word “jobs” and “be” as a suffix. They contend that these are completely descriptive and can only refer to the business of SYNERGIE human resources and to the country code of Belgium. The complaint is that the disputed domain name is confusingly similar to the SYNERGIE Marks in which the First Complainant has rights.
The Complainants also contend that the Respondent has no rights or legitimate interest in the disputed domain name. In this respect, the Complainants also contend that they have not authorised any third party (including the Respondent) to identify itself to the public as SYNERGIE in a domain name. Further, the Complainants say that there is no legitimate reason why the Respondent would incorporate the Complainants’ well-known mark SYNERGIE in the disputed domain name in combination with the word “jobs”. These words refer directly to the area of activities where the Complainants’ trademark is registered and well-known.
Finally, the Complainants contend that the disputed domain name was registered and has been used in bad faith.
As to registration in bad faith, given the protection and consistent use of the SYNERGIE marks by the Complainants, they assert that there is no chance of the disputed domain name having been registered by simple coincidence. The Complainants assert this is particularly so, having regard to the evidence provided in the Complaint that the SYNERGIE trademark is very well known around the world. If the Respondent had done any searches prior to registration, it could not have ignored the existence of the Complainants’ prior rights and “high notoriety”.
As additional evidence of bad faith, the Complainants point to the fact of the Respondent’s registration of the disputed domain name, using SYNERGIE in combination with the word “jobs”, being the area which where the Complainants are strongly active and well known.
As to use in bad faith, the Complainants submit that the Respondent obviously knew of their rights and reputation. The registration, it is claimed, was to benefit from the wide use and reputation of the SYNERGIE Marks. The Complainants contend that:
(a) The Respondent’s intent was to seek unfair benefit from the notoriety of the Complainants’ trademark SYNERGIE and for commercial gain. References on the parking page at the disputed domain name to “synergie”, “emploi”, “interim”, and “formation” are clear references to the Complainants and their area of activity. Links on the website located at the disputed domain name redirect to competitors of the Complainant. The Complainants claim that the parking pages provide revenue to the Respondent.
(b) The Respondent registered the disputed domain name in an attempt to mislead internet users and to prevent the Complainants from using their trademarks in this domain name. The disputed domain name creates the likelihood that website visitors will be led to that site believing that the Complainants are the source or that the Complainants have endorsed the website located there.
(c) Registration of the disputed domain name has been through a proxy registration service and this constitutes evidence of bad faith.
(d) Email services have been configured at the website located at the disputed domain name and the email address has been used for phishing activities.
The Respondent did not reply to the Complainant’s contentions.
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following elements with respect to the disputed domain name in order to succeed in this proceeding:
(i) that the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
The Complainants have provided evidence of the First Complainant’s registrations in relation to the SYNERGIE Marks in a European Union Trade Mark and via an International registration. The Complainants have also provided evidence of use of the SYNERGIE trademark in some 17 countries.
It is the Panel’s view that the Complainants have clearly and sufficiently demonstrated their rights in the SYNERGIE Marks. The Panel is also satisfied that the Complainants are well known by the SYNERGIE Marks as a provider of human resources services given their offices in 17 countries.
The Panel accepts that the disputed domain name is confusingly similar to the First Complainant’s SYNERGIE Marks. The Panel finds that the disputed domain name contains, as a dominant element, the SYNERGIE Mark followed by the terms “jobs” and “be”, separated by a hyphen. The use of these terms does not prevent a finding of confusing similarity (see section 1.8 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). The Panel also notes that it is well established that the addition of the generic Top-Level Domain (“gTLD”) “.com” may be disregarded for the purposes of comparison under the first element.
The Panel therefore finds that the disputed domain name is confusingly similar to the Complainants’ SYNERGIE Marks.
Therefore, the Panel finds that paragraph 4(a)(i) of the policy is satisfied in favor of the Complainants.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish that it has rights or legitimate interests in the disputed domain name, among other circumstances, by showing any one of the following elements:
(i) that before notice of the dispute, the Respondent used or made demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) that the Respondent has been commonly known by the disputed domain name, even if it had acquired no trademark or service rights; or
(iii) that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The overall burden of proof for establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name lies with the Complainants.
The Complainants have stated, and the Panel accepts, that the Respondent has no rights or legitimate interests in the disputed domain name. In this respect, the Panel accepts that the Respondent is not commonly known by the disputed domain name and there is no evidence before the Panel suggesting that the Respondent has any rights (registered or otherwise) or legitimate interests in the SYNERGIE Marks or name.
The Panel is also entitled to have regard to the lack of any substantive response on this point from the Respondent in the absence of any claim to rights or legitimate interests in the disputed domain name.
The Panel finds that the Complainants have met the burden of establishing a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, which has not been rebutted by the Respondent, and accordingly finds that paragraph 4(a)(ii) of the policy is satisfied in favor of the Complainant.
The Panel is satisfied that the disputed domain name has been registered in bad faith for the following reasons:
(i) The Panel is satisfied that the Complainants’ trademark SYNERGIE is well known amongst the relevant public in relation to services for human resources and jobs. The Panel is also satisfied that at the time of registration of the disputed domain name, the Respondent was aware of the Complainants, their SYNERGIE Marks, and the Second Complainant’s registered domain name <synergiejobs.be>. The Respondent’s registration of the confusingly similar disputed domain name, which not only wholly incorporates the Complainants’ SYNERGIE trademark, but also is very similar to a domain name actively operated by the Second Complainant, shows a deliberate targeting of the Complainants and the SYNERGIE trademark in bad faith.
(ii) The Panel further finds that the Respondent registered the domain name with the intention of diverting internet traffic from the Complainant’s website to its own website for the purposes of phishing activities.
(iii) The Respondent’s use of privacy service combined with the Respondent’s failure to submit a response is added evidence of bad faith. See WIPO Overview 3.0 section 3.6.
(iv) Without any rights or legitimate interests, the Respondent’s registration of the disputed domain name incorporating the Complainants’ well-known trademark is itself indicative of bad faith in this case.
The Panel is also satisfied that the disputed domain name has been used in bad faith for the following reasons:
(i) The Complainants have provided evidence showing the use of disputed domain name in an email address engaging in phishing activities. Annex 7.2 to the Complaint shows a party using the disputed domain name and impersonating an employee of the Second Complainant via email. It is the Panel’s view that such impersonation was for financial gain and constitutes use of the disputed domain name for fraudulent activity and clearly constitutes use in bad faith.
(ii) The Panel further finds that the Respondent’s interest was to seek to benefit from the well-known reputation of the Complainants’ SYNERGIE Marks and to generate revenue and income from a parking page at the disputed domain name. Web users would be led to believe that the disputed domain name is operated by the Complainants or is connected or endorsed by them.
(iii) Further, the Respondent has made no submission in these proceedings and so (on all the facts in this case) the Panel infers that the Respondent has intentionally used the disputed domain name with an intent to confuse people into thinking that it is controlled by the Complainants or an entity affiliated with the Complainants.
Accordingly, the Panel finds that paragraph 4(a)(iii) of the policy is satisfied in favor of the Complainants.
For the foregoing reasons, in accordance with paragraph 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <synergiejobs-be.com> be transferred to the Complainant.
Andrew Brown Q.C.
Sole Panelist
Date: January 19, 2021