The Complainant is Compagnie française d’assurance pour le commerce extérieur (Coface), France, represented by Cabinet Regimbeau, France.
The Respondent is Redacted for Privacy / Jurgen Neeme, hello@thedomain.io, Estonia.
The disputed domain name <coface.co> is registered with Dynadot, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 25, 2020. On November 25, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 25, 2020, 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 December 3, 2020, 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 December 7, 2020.
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 December 17, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 6, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 12, 2021.
The Center appointed Christian Gassauer-Fleissner as the sole panelist in this matter on February 9, 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 was established in France over 70 years ago and is specialized in credit insurance protection and credit management services. The Complainant began to diversify internationally in 1992 and now has 4,300 employees worldwide and is present directly or via strategic partnerships in 100 countries with the ability to provide cover for its clients in approximately 200 countries.
The Complainant is the owner, among others, of the following trademark registrations:
- French trademark COFACE No. 96656978, registered on December 24, 1996, and covering services in classes 35, 36 and 41;
- European Union trade mark COFACE No. 500793, registered on January 25, 1999, and covering services in classes 35 and 36;
- International trademark COFACE No. 678577, registered on June 10, 1997, designating in numerous countries, and covering services in classes 35 and 36.
In addition, the Complainant is the owner of the following domain name, which reflects its trademark:
- <coface.com> registered on December 16, 1996.
The disputed domain name <coface.co> was registered on January 19, 2020. The disputed domain name resolves to a parking page containing pay-per-click (“PPC”) advertisement. As provided in the Complaint, the disputed domain name was also offered for sale for USD 4,330 on a third party website.
The Complainant asserts that the disputed domain name is identical to its COFACE trademark.
The Complainant further asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name since the Respondent is not commonly known by the disputed domain name and the Respondent is not licensed, authorized or permitted to register domain names incorporating the Complainant’s trademarks.
The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith in view of that the disputed domain name is clearly designed to attract Internet user looking for the mark of the Complaint by using a domain name containing a sign identical to the Complainant’s trademarks.
The Complainant requests transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 15(a) of the Rules requires that the Panel’s decision be made “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”.
It has been a consensus view in previous UDRP decisions that a respondent’s default (i.e., failure to submit a response) would not by itself mean that the Complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true (See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
A complainant must evidence each of the three elements required by paragraph 4(a) of the Policy in order to succeed on the complaint, namely that;
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(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 Panel finds that the disputed domain name is identical to the Complainant’s COFACE mark, in which the Complainant has established rights through registration.
The disputed domain name consists of the COFACE mark and the country code Top-Level Domain (“ccTLD”) “.co”. ccTLDs are generally disregarded when evaluating the identity or similarity of the Complainant’s mark to the disputed domain name under paragraph 4(a)(i) of the Policy, irrespective of any ordinary meaning that might be ascribed to the ccTLD (see section 1.11 of the WIPO Overview 3.0).
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
While the overall burden of proof in UDRP proceedings is on the Complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (see section 2.1 of the WIPO Overview 3.0).
Based on the evidence provided by the Complainant, the Panel concludes that the Respondent was aware of the Complainant and had the Complainant’s COFACE mark in mind when registering the disputed domain name. The disputed domain name is identical to the Complainant’s distinctive COFACE mark, therefore most likely aims to attract Internet users searching for the Complainant’s domain name.
The disputed domain name hosts a parked page comprising PPC links, which, as numerous previous UDRP panels have found, does not represent a bona fide offering where such links capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users, which is the case here (see section 2.9 of the WIPO Overview 3.0).
The Complainant therefore made a prima facie case that the Respondent lacks rights or legitimate interests to which the Respondent failed to respond.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
The Panel notes that the Complainant’s services are prominently displayed on the Internet. The fact that the disputed domain name is identical to the Complainant’s COFACE mark and was registered several years after the registration of the Complainant’s trademark demonstrates in view of the Panel that the Respondent knew of the Complainant’s COFACE trademark when registering the disputed domain name in 2020.
Moreover, the disputed domain name varies from the Complainant’s domain name <coface.com> by only one letter. Specifically, in registering the disputed domain name, the Respondent has omitted the letter “m” of the generic Top-Level Domain (“gTLD”) “.com” of the Complainant’s domain name. The disputed domain name therefore consists out of an obvious misspelling of the Complaint’s domain name and is a typical case of typosquatting. This fact demonstrates in view of the Panel that the Respondent knew of the Complainant’s COFACE trademark and its domain name <coface.com> when registering the disputed domain name.
Previous UDRP panels have found that employing a misspelling in this way signals intention on the part of the Respondent to confuse Internet users seeking or expecting the Complainant (see section 1.9 of the WIPO Overview 3.0.).
The current use of the disputed domain name as a parked page comprising automatically generated PPC links, which in part also redirect Internet users to commercial websites offering services competing with the Complainant further proves to the Panel that the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as described under paragraph 4(b)(iv) of the Policy.
Previous UDRP panels have found that employing an identical or confusingly similar domain name in this way generally supports a finding of bad faith (see Merck Sharp & Dohme Corp. v. Domain Administrator, PrivacyGuardian.org / George Ring, DN Capital Inc., WIPO Case No. D2017-0302; Serta Inc. v. Charles Dawson, WIPO Case No. D2008-1474; Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415).
Furthermore, the Complainant also demonstrated that an email server has been configured on the disputed domain name with a real risk that the Respondent may be engaged in a phishing scheme, aiming to deceive Internet users into believing they were dealing with the Complainant.
Previous UDRP panels have held that the use of a domain name for purposes other than to host a website may constitute bad faith. Such purposes include phishing and identity theft (see section 3.4 of the WIPO Overview 3.0.).
In addition, the Complainant has provided evidence that the disputed domain name has been offered for sale on a third party website for valuable consideration in excess of the out-of-pocket costs directly related to the disputed domain name, which supports the inference of bad faith (see Bayer AG v. Whois Agent, Whois Privacy Protection Service, Inc. / Syed Hussain, IBN7 Media Group, WIPO Case No. D2016-2354; ZV Holding v. Zhang Wei, WIPO Case No. DCO2020-0015).
Also, in multiple previous decisions under the Policy, the Respondent, Jurgen Neeme, has been found to have made bad faith registrations and use of domain names that were identical or confusingly similar to known trademarks (see, e.g., Facebook, Inc., Instagram, LLC, WhatsApp Inc., Facebook Technologies, LLC v. Jurgen Neeme, hello@thedomain.io and Jay Neeme, WIPO Case No. D2019-1582; Verizon Trademark Services LLC v. Juergen Neeme, TheDomain.io, WIPO Case No. D2018-1125).
Previous UDRP panels have concluded that evidence of prior panel UDRP decisions in which domain names have been transferred away from the Respondent to complaining parties supports a finding that Respondent has engaged in a bad faith pattern of “cybersquatting”. (See Arai Helmet Americas, Inc. v. Goldmark, WIPO Case No. D2004-1028).
Lastly, the Complainant has provided evidence that the Respondent also holds registrations for other domain names, which are obvious misspellings of well-known marks, which provides further evidence of the pattern of cybersquatting in which the Respondent is engaging.
For these reasons, the Panel considers that the Respondent registered and is using the disputed domain name in bad faith.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
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 <coface.co> be transferred to the Complainant.
Christian Gassauer-Fleissner
Sole Panelist
Date: February 18, 2021